Industrial Design Registration

The appearance of a product is often just as important as its technical characteristics. Shape, lines, contours, color combinations, decoration, texture, or the visual composition of a product may influence brand recognition, sales, and the competitive advantage of a business.

If a company creates a unique design for a product, packaging, interface element, interior item, furniture, clothing, accessories, or another item, this result may be protected as an industrial design.

VINCO’S Legal Company supports clients in the registration of industrial designs in Ukraine: from the initial analysis of the design and assessment of risks to preparation of the application, filing with the IP Office, and obtaining the certificate.

An industrial design is the result of intellectual creative activity in the field of design and artistic construction.

In simple terms, an industrial design protects not the technical idea of a product, but its appearance. It may cover the appearance of the whole product or part of it, determined, in particular, by lines, contours, colors, shape, texture, material, or decoration.

For example, an industrial design may include the appearance of packaging, a bottle, a device casing, furniture, a lamp, tableware, jewelry, clothing, footwear, a decorative element, a graphic symbol, or another product.

Registration of an industrial design allows the owner to secure rights to the appearance of a product and create a legal instrument for protecting the design against copying.

A certificate of state registration of an industrial design may be an important asset for manufacturers, designers, fashion brands, producers of furniture, equipment, packaging, consumer goods, and other businesses for which the visual form of a product has commercial value.

• secure rights to the design of a product or part of it;
• prohibit others from copying or using a similar design without permission;
• strengthen protection of the brand and products on the market;
• increase the investment and commercial value of the business;
• transfer rights to the industrial design;
• enter into license agreements;
• receive royalties for the use of the design;
• respond more effectively to copying by competitors.

The appearance of a product or part of a product may receive legal protection. It is important that the design can be visually perceived and properly represented in the application materials.

Industrial designs may include, in particular:

• product packaging;
• design of bottles, cans, boxes, and labels;
• appearance of furniture or interior items;
• shape of a device or equipment casing;
• design of clothing, footwear, bags, and accessories;
• jewelry;
• tableware and household items;
• toys;
• decorative elements;
• graphic symbols and typographic fonts;
• components of products that remain visible during normal use.

Not every visual object may be protected as an industrial design. Legislation provides certain restrictions for specific objects and features of appearance.

In particular, legal protection may not be granted to:

• objects of unstable form made of liquid, gaseous, loose, or similar substances;
• features of appearance determined solely by the technical function of the product;
• parts of a complex product that are not visible during normal use;
• solutions that contradict public order or generally accepted principles of morality;
• designs that do not meet the criteria of novelty and individual character.

To receive legal protection, an industrial design must meet two key criteria: novelty and individual character.

An industrial design is considered new if no identical industrial design has been made available to the public before the filing date or priority date.

Individual character means that the overall impression produced by the industrial design on an informed user differs from the overall impression produced by any other industrial design previously made available to the public.

Before filing an application, it is advisable to conduct a preliminary search to assess the risks of refusal or future invalidation of rights.

For industrial designs, the filing date and the date of disclosure are important. Premature publication of product images, presentation of the design to partners without an NDA, or demonstration of the product on marketplaces or social media may create risks for future protection.

Ukrainian legislation provides a certain grace period for disclosure by the author or successor in title, but in practice it is safer to file the application before broad public disclosure of the design.

If the design must be shown to a manufacturer, investor, partner, or contractor before filing, it is advisable to sign a non-disclosure agreement in advance.

In Ukraine, an industrial design may be protected as registered or unregistered.

A registered industrial design is entered into the State Register, and the acquisition of rights is confirmed by a certificate. This option is the most predictable for business, as it allows clear confirmation of the rights, filing date, scope of protection, and owner of rights.

An unregistered industrial design may be protected for three years from the date it was made available to the public in Ukraine. However, in the event of a dispute, proving the fact of creation, the date of disclosure, and the scope of rights may be more difficult.

The term of proprietary rights to a registered industrial design is 5 years from the date of filing the application with the National IP Office.

This term may be extended upon the owner’s request for one or more additional five-year periods, provided that the relevant fees are paid. The total term of proprietary rights to a registered industrial design may not exceed 25 years from the filing date.

To maintain the validity of rights, it is important to monitor renewal deadlines and pay official fees on time.

The industrial design registration procedure usually includes the following stages:

• initial consultation and analysis of the design;
• determination of whether the object may be protected as an industrial design;
• assessment of novelty and individual character;
• preliminary search for similar industrial designs;
• determination of the rights owner and review of documents from the author or designer;
• preparation of a set of product images;
• preparation of the industrial design description;
• preparation of the application for state registration;
• filing the application with the IP Office;
• support during formal examination;
• preparation of responses to examination requests, if necessary;
• payment of official fees;
• state registration of the industrial design;
• obtaining the certificate.

The following information and materials are usually required to prepare the application:

• information about the applicant;
• information about the author or authors of the design;
• images of the product or its model that provide a complete understanding of its appearance;
• description of the industrial design;
• drawings, schemes, material charts, or other materials if needed to disclose the design;
• documents confirming the applicant’s right to file the application if the applicant is not the author;
• power of attorney if the application is filed through a representative.

Filing an application without preliminary analysis may create risks for future protection of the design.

The most common problems include:

• incorrect identification of the object of protection;
• insufficient or incorrect number of images submitted with the application;
• images that do not provide a complete understanding of the appearance of the product;
• lack of assessment of novelty and individual character;
• failure to formalize the transfer of rights from the designer or author to the company;
• claiming features determined solely by technical function;
• violation of third-party rights;
• filing after broad public disclosure of the design;
• risk of future invalidation of the certificate.

VINCO’S Legal Company provides comprehensive support in the registration of industrial designs for businesses, designers, manufacturers, fashion brands, and producers of furniture, equipment, packaging, and other goods.

We can assist with:

• consultation on the possibility of registering the design;
• preliminary assessment of the protectability of the industrial design;
• search for similar industrial designs;
• development of a legal protection strategy for the design;
• review of rights to a design created by an employee, contractor, or designer;
• preparation of the application, description, and set of images;
• filing the application with the IP Office;
• communication with the examination authority;
• preparation of responses to examination requests;
• monitoring deadlines and official payments;
• support of the procedure until the certificate is obtained;
• further support with assignment of rights, licensing, or enforcement of the industrial design.

If you have created a unique design for a product, packaging, interior item, accessory, or another product, the VINCO’S team will help assess the possibility of registration, properly prepare the application, and provide professional support until the certificate is obtained.