The Reformed Design Law in Ukraine: What is Right with EU Trade Agreements?

European Commission, ‘Strategy for the Enforcement of Intellectual Property Rights in Third Countries’ 2005/C 129/03; European Commission, ‘Global Europe: Competing in the World—A Contribution to the EU’s Growth and Jobs Strategy’ (Communication) COM(2006) 567 final.

2005/C 129/03, 5–6.

European Commission, ‘Trade, Growth and Intellectual Property—Strategy for the Protection and Enforcement of Intellectual Property Rights in Third Countries’ (Communication) COM(2014) 389 final, para 3.5.

COM(2006) 567 final, para 4.2.

E.g. the US or Canada.

For instance, Trade Agreement between the European Union and its Member States, of the one part, and Colombia and Peru, of the other part and the accession of Ecuador, art 223 regulates the resale right for the benefit of the author of an original work of art.

See Agreement between the European Union and Japan for Economic Partnership (EU–Japan Economic Partnership Agreement), arts 14.36–14.37; EU–Vietnam Trade Agreement, art 12.41.

Leading publications on the matter include contributions to Josef Drexl et al. (eds), EU Bilateral Trade Agreements and Intellectual Property: For Better or Worse? (Springer 2014); Anselm Kamperman Sanders, ‘The EU and Its IP Policies’ in Pedro Roffe and Xavier Seuba (eds), The ACTA and the Plurilateral Enforcement Agenda (Cambridge University Press 2014) 259; Thomas Jaeger, ‘The EU Approach to IP Protection in Partnership Agreements’ in Christoph Antons and Reto M Hilty (eds), Intellectual Property and Free Trade Agreements in the Asia–Pacific Region (Springer 2015) 171(171–210); Anke Moerland, ‘Do Developing Countries Have a Say? Bilateral and Regional Intellectual Property Negotiations with the EU’ (2017) 48 International Review of Intellectual Property and Competition Law 760(760–783); Xavier Seuba and Elena Dan, ‘The European Foreign Policy for Intellectual Property Enforcement’ in Josef Drexl and Anselm Kamperman Sanders (eds), The Innovation Society and Intellectual Property (Edward Elgar Publishing 2019) 160(160–187).

Henning Grosse Ruse-Khan, ‘Principles for Intellectual Property Provisions in Bilateral and Regional Agreements’ (2013) 44 International Review of Intellectual Property and Competition Law 878(882); Xavier Seuba, ‘The Relevance of the Principles for Intellectual Property Provisions in Bilateral and Regional Agreements vis-à-vis European Preferential Trade Agreements’ (2013) 44 International Review of Intellectual Property and Competition Law 943(944); Souheir Nadde-Phlix, ‘IP Protection in EU Free Trade Agreements vis-à-vis IP Negotiations in the WTO’ in Josef Drexl et al. (eds), EU Bilateral Trade Agreements and Intellectual Property: For Better or Worse? (Springer 2014) 133(136); Xavier Seuba, The Global Regime for the Enforcement of Intellectual Property Rights (Cambridge University Press 2017) 170.

Ruse-Khan, ‘Principles for Intellectual Property Provisions’ (n 10) 878(881); Moerland, ‘Do Developing Countries Have a Say?’ (n 9) 760(773–774).

Roffe, ‘Intellectual Property Chapters in Free Trade Agreements’ in Drexl et al. (n 11) 17(24–26); Seuba, ‘The Relevance of the Principles’ (n 10) 122–126 and 192–193.

Grosse Ruse-Khan, ‘Principles for Intellectual Property Provisions’ (n 10) 878(878–883).

Seuba and Dan, ‘The European foreign Policy for Intellectual Property Enforcement’ in Drexl and Kamperman Sanders (n 9) 160(160–187).

European Commission, ‘Wider Europe—Neighbourhood: A New Framework for Relations with our Eastern and Southern Neighbours’ (Communication) COM(2003) 104 final. For a legal and policy background to the ENP, see contributions to Dieter Mahncke and Sieglinde Gstöhl (eds), Europe's Near Abroad: Promises and Prospects of the EU's Neighbourhood Policy (P.I.E. Peter Lang 2008); Roman Petrov and Peter Van Esluwege (eds), Legislative Approximation and Application of EU Law in the Eastern Neighbourhood of the European Union (Routledge 2014); Sieglinde Gstöhl (eds), The European Neighbourhood Policy in a Comparative Perspective: Models, challenges, lessons (Routledge 2016); Tobias Schumacher et al. (eds), The Routledge Handbook on the European Neighbourhood Policy (Routledge 2018); Stefan Lorenzmeier et al. (eds), EU External Relations Law: Shared Competences and Shared Values in Agreements Between the EU and its Eastern Neighbourhood (Springer 2021).

Algeria, Egypt, Israel, Jordan, Lebanon, Libya, Morocco, Palestine, Syria, and Tunisia.

Armenia, Azerbaijan, Belarus, Georgia, Moldova, and Ukraine.

Together with preferential treatment for trade. COM (2003) 104 final, para 2.

EU–Ukraine AA, art 1, also the “progressive approximation” of Ukrainian legislation to that of the EU as one of the Agreement’s main objectives.

See also Yuriy Kapitsa, ‘Association Agreements and Problems Approximating Intellectual Property Legislation of Third Countries with the EU Acquis: The Case of Ukraine’ in this Volume.

See Olena Kadetova, EU–Ukraine Association Agreement in the System of Sources of Intellectual Property Law (Yurinkom Inter 2019) 110–143; Olena Kadetova, ‘To the Questionnaire of Characteristics and Ways of Development of Legislation in the Field of Intellectual Property in Ukraine’ (2018) 1 Theory and Practice of Intellectual Property 88(88–97); Volodymyr Kryvolapchuk, Svitlana Ful, ‘Legal Protection of Geographical Indications in the Context of the Association Agreement between Ukraine and the EU’ (2018) 3 Theory and Practice of Intellectual Property 51(51–59); Yuriy Dehtiarenko, ‘Current and Problem Issues of Ukrainian Legislation in the Field of Protection of a Variety of Plants in the Context of the Agreement on Association with the EU’ (2018) 5 Theory and Practice of Intellectual Property 75(75–82). See also Yuriy Kapitsa, European Union Intellectual Property Law: Formation, Institutes, Directions of Development (Akademperiodyka, 2nd ed. 2020) 465–466, discussing how the EU–Ukraine Association Agreement fails to provide a mechanism for updating Ukraine’s obligations where new IP acquis acts are adopted in the EU. See also, in this volume, Roman Petrov, ‘The EU–Ukraine Association Agreement as a General Framework of Contemporary EU–Ukraine Relations’ and Yuriy Kapitsa, ‘Association Agreements and Problems Approximating Intellectual Property Legislation of Third Countries with the EU Acquis: The Case of Ukraine’ in this Volume.

Yuriy Kapitsa, ‘Reform of National Legislation for the Protection of Intellectual Property under the Association Agreement between Ukraine and the European Union’ (2016) 11 Law of Ukraine 118 (118–123).

Decree of the Cabinet of Ministers of Ukraine on the approval of the conceptual foundation for reforming the state system of intellectual property protection of Ukraine 2016, 402-p. Implementation of the EU–Ukraine Association Agreement is referred to as one of the reform’s main priorities.

See the analysis in Natalia Kapyrina, ‘Design Rights in EU PTAs: Where Does Such Internalization Lead?’ (2019) 53(4) Journal of World Trade 647 (647–677).

“Patent trolling” is used to refer to situations of abusive registrations, where commonly known objects (e.g. clothes hangers or matches) are registered as designs and then used to block importations of such goods at the Ukrainian border. See Oleksandr Chernadchuk, ‘Patent Trolling as a Type of Infringement of Intellectual Property Rights’ (2019) 41(2) Scientific Journal of the International Humanitarian University 38 (38–41).

Council Regulation (EC) 6/2002 of 12 December 2001 on Community Designs (2001) OJ L3/1 (Design Regulation); Parliament and Council Directive 98/71/EC of 13 October 1998 on the legal protection of designs (1998) OJ L289/28 (Design Directive) includes provisions similar to those of the Design Regulation. The Design Directive is not chosen as the point of reference because it does not include norms on unregistered designs, unlike the EU–Ukraine Association Agreement.

Kapyrina, ‘Design Rights in EU PTAs’ (n 26) 647 (657).

See EU–Armenia CEPA, art 242(1); EU–Georgia AA art 181(1); EU–Moldova AA art 308(1).

EU–Ukraine AA, art 213(2).

EU–Ukraine AA, art 217(3–4).

Kapyrina, ‘Design Rights in EU PTAs’ (n 26) 647 (662).

Dinwoodie and Schovsbo, ‘Design Protection for Products That are “Dictated by Function”’ in Kur et al. (n 33) 142 (145, 154).

EU–Ukraine AA, art 309.

EU–Ukraine AA, art 243.

EU–Ukraine AA, art 214(1).

EU–Ukraine AA, art 215.

EU–Ukraine AA, art 217(1).

EU–Ukraine AA, art 217(5).

This is, for instance, the case of Chapter 5 “Customs and Trade Facilitation” and Chapter 6 “Establishment, Trade in Services and Electronic Commerce” of Title IV, EU–Ukraine AA.

ECJ Joined Cases C-397/16 and C-435/16 Acacia (2017) EU:C:2017:992, para 50. See also Dana Beldiman et al., ‘Spare Parts and Design Protection—Different Approaches to a Common Problem: Recent Developments from the EU and US Perspective’ (2020) 69(7) GRUR International 673(678/680); EGC T-525/13 H&M Hennes & Mauritz v. OHMI—Yves Saint Laurent (Sacs à main) (2015) EU:T:2015:617, para 21.

Dinwoodie and Schovsbo, ‘Design Approach for Products That are “Dictated by Function”’ in Kur et al. (n 33) 142 (154).

See EU–Armenia CEPA, art 242(3); EU–Georgia AA, art 181(3); EU–Moldova AA, art 308(3).

ECJ C-395/16 DOCERAM (2018) EU:C:2018:172, Opinion of Advocate General Saugmandsgaard, paras 25–27. Before the adoption of the Design Directive, certain EU MS (e.g. UK) did require designs to have ornamental or aesthetic value. A design feature was considered functional if it did not have ornamental or aesthetic value. This approach lies at the base of the causative theory in the examination of functional features. See also Lavinia Brancusi, ‘Designs Dictated by their Technical Function’ in Gordian Hasselblatt (ed), Community Design Regulation (Hart Publishing 2015) 125 (138–139).

Under EU–Ukraine AA, art 6 to Annex XVII to Chapter 6 “Establishment, Trade in Services and Electronic Commerce”, where relevant provisions of Chapter 6 are identical in substance to corresponding rules of the Treaty on the Functioning of the European Union and to acts adopted pursuant thereto (e.g. Directive 2000/31/EC), “those provisions shall, in their implementation and application, be interpreted in conformity with the relevant rulings of the Court of Justice of the European Union”.

Under EU–Ukraine AA, art 153, “due account shall be taken of the corresponding case law of the European Court of Justice” during the legislative approximation in the area of public procurement.

Under EU–Ukraine AA, art 264, “the relevant jurisprudence of the Court of Justice of the European Union” shall be used as a source interpretation for norms on state aid.

Marianne Levin, ‘The harmonising decisions from Luxembourg’ in Annette Kur et al. (eds), The EU Design Approach: A Global Appraisal (Edward Elgar Publishing 2018) 49; Alain Strowel and Kim Hee-Eun, ‘The Balancing Impact of General EU Law on European Intellectual Property Jurisprudence’ in Ansgar Ohly and Justine Pila (eds), The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (Oxford University Press 2013) 121; Vincent Cassiers and Alain Strowel, ‘Intellectual Property Law Made by the Court of Justice of the European Union’ in Christophe Geiger et al. (eds), Intellectual Property and the Judiciary (Edward Elgar Publishing 2019) 175. On the ECJ’s judicial activism in copyright cases, see also Eleonora Rosati, Copyright and the Court of Justice of the European Union (Oxford University Press 2019).

Levin, ‘The harmonising decisions from Luxembourg’ in Kur et al. (n 58) 49 (50).

Cassiers and Strowel, ‘Intellectual Property Law Made by the Court of Justice of the European Union’ in Geiger et al. (n 58) 175 (178, 197).

Design Regulation, art 6.

Design Regulation, art 8(1).

Ibid para 53.

For explanations on both theories, ECJ C-395/16 DOCERAM (2018) EU:C:2018:172, Opinion of Advocate General Saugmandsgaard, paras 19–22. See also the analysis in Tobias Endrich, ‘Pinning Down Functionality in EU Design Law—A Comment on the CJEU’s DOCERAM Judgment (C-395/16)’ 14(2) Journal of Intellectual Property Law & Practice (2019) 156 (156–167); Suthersanen, ‘Excluding Designs (and Shape Marks)’ (n 33) 157 (157–160); Uma Suthersanen and Marc D Mimler, ‘An Autonomous EU Functionality Doctrine for Shape Exclusions’ 69(6) GRUR International (2020) 567 (567–577).

Ibid.

Ibid para 37.

Ukrainian Law on Amendments to Certain Legislative Acts of Ukraine to Raise Protection and Enforcement of Trade marks and Designs and to Fight Patent Trolling 2020, 815-IX.

Ukrainian Law on Protection of Rights to Designs 1994, 3770-XII (“Design Law”).

The legal database “Unified State Register of Judicial Decisions” allows search by applicable legal norms, including those from the 2020 Design law.

Industrial Designs (2020) https://​ukrpatent.​org/​uk/​articles/​ap-industrial-design accessed 13 September 2021.

Marketa Trimble, ‘Unjustly Vilified TRIPS-Plus?: Intellectual Property Law in Free Trade Agreements’ American University Law Review 1 (22).

Trimble, ‘Unjustly Vilified TRIPS-Plus?’ (n 78) 1 (23).

Grosse Ruse-Khan, ‘Principles for Intellectual Property Provisions’ (n 10) 878 (879–880).

The need for a balanced approach to IP provisions in trade agreements is also recognised in the European Commission’s policy documents. See COM (2014) 389 final, para 2.2.

The 2020 Law also introduced other amendments, such as administrative invalidity proceedings for designs, which are not discussed further because their introduction is not due to the implementation of the AA. Note, however, that the European Commission plans to introduce mandatory administrative proceedings for invalidating a national design right. See also European Commission, ‘Commission Staff Working Document—Evaluation of EU legislation on design protection’ SWD (2020) 264 final, 47–49.

The term “abusive” is used in inverted commas, as such registrations were completely legal as per the requirements of the Ukrainian Design Law prior to 2020.

Ukrainian designs, registered under No. 26706, No. 26707, No. 26708, No. 26709, No. 26710.

Ukrainian design, registered under No. 26905.

Ukrainian design, registered under No. 27154.

Ukrainian designs, registered under No. 28140, No. 28141, No. 28142, No. 28143, No. 28144. On the registration of a carbonizer under previous design law, see Ganna Yudina, ‘Concept of Industrial Design in Ukraine and EU’ (2014) 5 Theory and Practice of Intellectual Property 57 (61).

Chernadchuk, ‘Patent Trolling as a Type of Infringement of Intellectual Property Rights’ (n 27) 38 (38–41).

Under Recital 7 Design Regulation, the purpose of enhanced protection for designs is to encourage innovation and the development of new products and investment in their production.

Design Regulation, recital 10.

As an example, the database of Ukrainian designs includes carbonizers, motorcycle carburettors, carburettors for scooters, or internal combustion engine carburettors.

Kapyrina, ‘Design Rights in EU PTAs’ (n 26) 647 (662).

For features dictated solely by a technical function, Dinwoodie and Schovsbo, ‘Design Protection for Products that are “Dictated by Function”’ in Kur et al. (n 33) 142 (142). For must-fit features, Dinwoodie and Schovsbo, ‘Design Protection for Products that are “Dictated by Function”’ in Kur et al. (n 33) 142 (153); Kapyrina, ‘Design Rights in EU PTAs’ (n 26) 647 (662).

Design Law, art 5(3).

See Sec. 2.2.1. See also Oliver Ruhl and Jan Tolkmitt, Gemeinschaftsgeschmacksmuster (Carl Heymanns Verlag 2019) art 8, para 73.

See also footnote 25.

Design law, art 5(1). Kapyrina finds that such provisions in EU trade agreements are favourable to the interests of developing countries. See Kapyrina, ‘Design Rights in EU PTAs’ (n 26) 647 (669).

Design Law, art 5(4).

Design Law, art 5(2).

See Kapyrina, ‘Design Rights in EU PTAs’ (n 26) 647 (666).

Kur and Levin, ‘The Design Approach Revisited’ in Kur et al. (n 48) 1 (20).

See Sec. 2.2.2.

Ukrainian Draft Order of the Ministry of Economy of Ukraine on Approving Rules for Drafting and Submitting Applications for Designs and on Examination of Applications for Designs and for International Registration of Designs 2021.

“Informed user”, as defined under Guidelines, para 2.5, is modelled on ECJ C-281/10 P PepsiCo v. Grupo Promer Mon Graphic (2011) EU:C:2011:679, para 53. “Freedom of the designer”, as defined under Guidelines, para 2.6, is modelled on EGC T-9/07 Grupo Promer Mon Graphic v. OHMI- PepsiCo (2010) EU:T:2010:96, paras 67, 72.

Kapyrina, ‘Design Rights in EU PTAs’ (n 26) 647 (668).

Petchers’kij District Court of Kyiv, Order 93,843,068 (2020) 757/19365/19-ц; Northern Commercial Court of Appeal 82,158,234 (2019) 910/13209/18. Note that, in this same case, the Supreme Court did not rely on ECJ case law as a persuasive source of law. See Supreme Court 83,783,100 Order (2019) 910/13209/18.

For an alternative view, see Yuriy Kapitsa, ‘Association Agreements and Problems Approximating Intellectual Property Legislation of Third Countries with the EU Acquis: The Case of Ukraine’ in this Volume.

This unlike the Republic of Moldova, which, due to close linguistic ties with Romania, can access all the relevant jurisprudence translated into Romanian. See Plenum of the Supreme Court of the Republic of Moldova on the Application of Certain Provisions of Copyright and Related Rights Law, No. 1, from April 25, 2016, which requires Moldovan courts to apply ECJ case-law to interpret communication to the public, exceptions and limitation to copyright law. See also Plenum of the Supreme Court of the Republic of Moldova on the application of certain provisions of trade mark law, No. 1, from February 6, 2017, which required Moldovan courts to apply ECJ case-law to interpret the distinctiveness of slogans, similarity of marks, scope of trade mark rights, exhaustion of trade marks.

98/149/EC, ECSC, Euratom: Council and Commission Decision of 26 January 1998 on the conclusion of the Partnership and Cooperation Agreement between the European Communities and their Member States, of the one part, and Ukraine, of the other part, OJ L49, 19.2.1998, 1–2. See also Yuriy Kapitsa, ‘Association Agreements and Problems Approximating Intellectual Property Legislation of Third Countries with the EU Acquis: The Case of Ukraine’ in this Volume.