Industrial design patent

Industrial Design Registration in Ukraine

An industrial design is used for legal protection of the appearance of a product or part of a product.

Such features may be determined by:

• lines;
• contours;
• color;
• shape;
• texture;
• material;
• ornamentation;
• a combination of these features.

For example, an industrial design may protect the design of:

• a bottle or packaging;
• furniture;
• a lighting fixture;
• an element of household equipment;
• clothing or footwear;
• an automotive part;
• other products with a distinctive appearance.

An important clarification: under current Ukrainian legislation, it is more accurate to refer not to a “patent for an industrial design,” but to state registration of an industrial design and a certificate. The relevant right is certified by the certificate.

An industrial design primarily protects the appearance of a product rather than its technical operating principle. If the value of the development lies in the technical solution itself, patent protection for an invention or utility model should be assessed separately.

What Does an Industrial Design Protect?

The scope of legal protection of an industrial design is determined primarily by its images.

Therefore, before filing an application, it is important to determine correctly:

• which views should be shown;
• which design elements are key;
• whether the entire product or only part of it should be protected;
• whether several design variants should be filed;
• which details should remain outside the scope of protection.

Improperly prepared images may significantly reduce the practical value of the registration.

Requirements for Industrial Design Protection

Novelty and the individual character of the design are particularly important.

Before filing, it is advisable to check:

• whether a similar design has already been disclosed;
• whether earlier registered industrial designs exist;
• how the overall impression of the new design differs from known designs;
• whether the applicant previously published the design.

Publication of a design before filing may affect novelty, although the law provides certain grace-period situations for disclosure. Therefore, the patent/IP strategy should ideally be determined before a mass product launch.

What Should Not Be Protected as an Industrial Design

An industrial design is not intended to monopolize the technical function of a product itself.

Therefore, it is necessary to distinguish between:

• appearance — potentially an industrial design;
• technical principle — potentially an invention or utility model;
• name or logo — a trademark;
• graphic or artistic work — may additionally be protected by copyright.

A single product may require several types of IP protection at the same time.

Examples of Industrial Designs

In practice, it is possible to register the appearance of:

• an electronic device casing;
• furniture;
• sanitary equipment;
• jewelry;
• footwear;
• clothing;
• tableware;
• packaging;
• vehicle parts;
• decorative elements;
• other goods.

Where Is the Application Filed?

An application for state registration of an industrial design is filed with the Ukrainian National Office for Intellectual Property and Innovations — UANIPIO (IP Office).

The old wording referring to the state enterprise “Ukrpatent” as the current authority for new applications is no longer up to date.

Applicants can also submit documents electronically through the UANIPIO system.

Documents for Industrial Design Registration

Depending on the specific design, the application includes:

• an application for state registration;
• information about the applicant;
• a set of industrial design images;
• other required materials and information;
• priority documents — if priority is claimed.

Particular attention should be paid to the images because they determine the scope of future legal protection.

How to Prepare Industrial Design Images

The images must provide a clear and unambiguous representation of the design.

Depending on the product, the following may be required:

• front view;
• rear view;
• side view;
• top view;
• bottom view;
• perspective view;
• additional views.

The lawyer works with the designer or applicant to determine which views are required for the specific object.

Is a Description of the Industrial Design Required?

The images form the basis of protection.

Therefore, the old approach in which a “detailed description” is presented as the main document should be reconsidered.

When preparing the application, it is particularly important to:

• correctly identify the product;
• prepare high-quality images;
• identify the designer and applicant;
• properly prepare the materials in accordance with current rules.

Examination of the Application

After filing, UANIPIO conducts the examination required by law.

The review covers, in particular:

• formal requirements for the materials;
• whether the object qualifies as an industrial design;
• correctness of the documents;
• classification and other required information.

If deficiencies are identified, the applicant may receive a corresponding notification and must respond properly within the established period.

Does UANIPIO Check Novelty Before Registration?

The industrial design registration procedure differs from substantive examination of an invention.

Therefore, obtaining a certificate does not provide an absolute guarantee that the right cannot later be challenged.

For this reason, before filing it is advisable to:

• conduct a preliminary search;
• review the market;
• analyze known competitor designs;
• assess novelty and individual character.

How Long Does Industrial Design Registration Take?

The actual timeline depends on:

• correctness of the application;
• the number of industrial designs;
• the need for additional correspondence;
• payment of fees;
• the workload of the procedure.

According to current UANIPIO materials, the approximate period for obtaining a certificate may be around 3–4 months if the procedure proceeds without complications.

Term of Industrial Design Rights

The initial term of exclusive proprietary rights to a registered industrial design is 5 years from the filing date.

After that, the term may be renewed:

• for another 5 years;
• and subsequently for further five-year periods;
• up to a maximum total term of 25 years from the filing date.

Therefore, the old statement that the certificate “is valid for only 5 years” is incomplete.

To maintain the rights, the relevant renewal requests must be filed and fees paid on time.

Unregistered Industrial Design

Ukrainian legislation also provides protection for an unregistered industrial design under conditions established by law.

The term of such protection is significantly shorter — 3 years from the date on which the industrial design was made available to the public in Ukraine.

However, a registered industrial design provides a much more predictable and longer-lasting protection mechanism.

Who Can Own the Rights?

The designer of an industrial design is the individual whose creative work resulted in the design.

However, the right to registration and proprietary rights may belong to:

• the designer;
• the employer — in appropriate cases;
• the customer;
• a company;
• another successor in title.

Therefore, before filing, businesses should review agreements with designers, employees, and contractors.

Industrial Design Created by an Employee or Designer

If the appearance of the product was created by:

• an in-house designer;
• an individual entrepreneur contractor;
• a design studio;
• a foreign contractor,

the ownership of proprietary rights and the right to file the application should be checked.

Paying a designer by itself should not replace proper IP provisions in the agreement.

Can Several Designs Be Registered in One Application?

In certain cases, legislation allows several industrial designs to be included in one application, subject to compliance with the applicable rules.

This may be useful for:

• a furniture line;
• a packaging series;
• variants of one product;
• a collection of related designs.

Before filing, it is necessary to check whether the objects meet the requirements for inclusion in one application.

Can a Registered Industrial Design Be Challenged?

Yes.

The existence of a certificate does not prevent the rights from being challenged where there are legal grounds to do so.

For example, a dispute may concern:

• novelty;
• individual character;
• ownership of rights;
• use of another person’s design;
• other statutory requirements.

Therefore, a preliminary search and proper documentation of the designer’s rights remain important even after registration is completed.

Protection Against Design Copying

If a competitor uses a similar design, the lawyer analyzes:

• the registered images;
• the overall impression created by both products;
• the dates of creation and publication;
• the legal status of the industrial design;
• the nature of the infringer’s use.

The following measures may then be used:

• documenting the infringement;
• a formal claim;
• negotiations;
• a demand to stop the use;
• court protection;
• other mechanisms provided by law.

International Industrial Design Registration

Industrial design rights are territorial.

Ukrainian registration by itself does not create automatic protection in the EU, United States, or other countries.

International protection may be obtained through:

• national procedures in individual countries;
• regional systems;
• the Hague System for the International Registration of Industrial Designs.

The WIPO Hague System allows protection for industrial designs to be requested in selected countries and regions through a single international application.

What Does the Hague System Provide?

A single international application may include up to 100 industrial designs, subject to compliance with the system’s rules.

Advantages include:

• one international application;
• one administrative system;
• the ability to designate the required countries and regions;
• centralized subsequent management of the international registration.

At the same time, each designated jurisdiction may apply its own substantive requirements for design protection.

Do You Need to Register the Design in Ukraine First to Use the Hague System?

Not necessarily.

The Hague System does not impose a general requirement to first file a national application in Ukraine.

However, choosing the correct filing sequence may be important for:

• priority;
• publication date;
• international strategy;
• costs;
• target markets.

Industrial Design and Copyright

One design may simultaneously have several layers of legal protection.

Subject to the applicable conditions, the appearance of a product may:

• be protected as an industrial design;
• also receive copyright protection.

These are not identical legal regimes, so the scope and grounds of protection should be assessed separately.

Stages of Industrial Design Registration

1. Consultation. We analyze the design and the business objective.
2. Preliminary search. We review relevant known designs.
3. Determining the object of protection. The entire product or selected elements.
4. Preparing images. We create the optimal set of views.
5. Preparing the application. We prepare the required materials.
6. Filing with UANIPIO.
7. Examination support. We respond to notices and comments.
8. State registration. We support completion of the procedure and issuance of the certificate.
9. International protection. Where necessary, we develop a strategy using the Hague System or national procedures.

Cost of Industrial Design Registration

The cost depends on:

• the number of industrial designs;
• the number of images;
• the need for a preliminary search;
• the complexity of the design;
• the need to revise the materials;
• government fees;
• the number of international jurisdictions;
• the scope of legal support.

Outdated universal statements such as “one tax-free minimum” or “USD 100 for a foreign applicant” should not be used as the current cost of the entire procedure — fees depend on the specific application and applicable rates.

Common Situations

Conclusion

State registration of an industrial design makes it possible to legally protect the appearance of a product and use the design as a separate IP asset of the business. The correct selection of the protected subject matter, quality of the images, preliminary review of known designs, and timely extension of protection internationally are particularly important when the product is intended for markets outside Ukraine.

Have you developed a new design for packaging, furniture, equipment, clothing, or another product and want to protect it from copying? Submit a request on the Prikhodko & Partners Law Firm website. We will assess the possibility of registration, prepare the application and images, support issuance of the certificate in Ukraine, and, where necessary, assist with international registration.