Since 2013, Ukraine has chosen a pro-European direction of development and, as a result, signed and implemented the Association Agreement with the EU. As a result, in 2020, the legislation on industrial designs was amended, namely:
- was added a new criterion of designs protectability - individual character;
- the approach to understanding the "novelty" criterion has been changed.
Previously, the law provided for a mandatory requirement of the worldwide novelty of the design. However, with the introduction of amendments to the law, this approach has changed. For a design to be recognized as not new, earlier identical designs must be disclosed:
- in a certain way, for example by state registration, display at an exhibition, use in trade, etc.
- but under the condition that such events could become known specifically on the territory of Ukraine for persons or companies working in the field related to specific design.
Our client received a CD letter regarding the illegal use of the competitor's industrial designs. After conducting deep research, the IPSTYLE team found that the designs registered by the competitor are not new. In the interests of the client, IPSTYLE filed a lawsuit on the disputed industrial designs invalidation due to their non-compliance with the conditions of protection.
When considering the case, the courts of the first two instances applied the law incorrectly, stating that earlier identical designs must be protected in Ukraine. If they were registered or published abroad, they should not be taken into account when invalidating the novelty of the disputed designs. This led to an incorrect evaluation of the evidence and rejection of the plaintiff’s claims.
And even worse, it could lead to incorrect judicial practice in the future. IPSTYLE filed a cassation appeal.
On November 24, the Supreme Court established the incorrect application of the law by the courts of previous instances, annulled their decisions, and returned the case for reconsideration. In its decision, the Supreme Court formulated several important legal positions, which must now be applied in all similar disputes. Here are a few of them:
- State registration is not the only way to disclose a registered industrial design;
- [...] novelty is primarily related to the public availability of the information to be evaluated. At the same time, the Law does not limit the sources of design disclosure, in particular, the presence of relevant registrations of industrial designs in other countries;
- [...] the courts of previous instances mistakenly identified the territorial principle of the legal protection of industrial designs in Ukraine as the novelty of industrial designs, which is extraterritorial [...].
Well, now IPSTYLE team is waiting for a new exciting consideration of the case.