Currently, there is the only court case in the Unified State Register of Court Decisions on invalidation of designs according to updated Ukrainian laws in line with the European Union–Ukraine Association Agreement. Our team of attorneys-at-law has successfully defended the interests of client in this way.
The fact is that neither Ukrainian laws nor judicial practice contain a clear interpretation of the rules implemented to harmonize with EU law. In particular, the stumbling block is proving that the earlier design has been made available to the public (namely, 'disclosure of earlier design'), which is a prerequisite for establishing or refuting the novelty and individual character of a design. Oksana Padokh analyzed this concept based on the EU Guidelines on registered Community designs and case law of the Court of justice of the European Union.
As a result, The Supreme Court in Ukraine took into account several important aspects of making design available to the public. In particular, an earlier design may be made public in several alternative ways anywhere in the world, as the novelty and individual character of a design is extraterritorial. At the same time, disclosure of earlier design as a result of state registration is not limited to such registration in Ukraine, but may also be confirmed by the existence of design registrations in other countries.
In addition, when proving the event of disclosure, it is important to establish that such information may have become known in the normal course of business to the specialised circles in the sector concerned in Ukraine.
This case is very relevant in the context of combating patent trolls. The new court practice, based on the EU approaches, will help to resist unscrupulous market participants and cease abuse of rights to designs lacked of novelty and individual character.
