In 2024, Ukraine adopted several long-awaited regulations that updated the procedures for registering intellectual property, including trademarks, industrial designs, inventions, utility models, and geographical indications.
In general, the new rules develop and detail the provisions of the main laws in the field of intellectual property, which underwent significant changes in 2020. These regulations, in particular, govern the procedures for filing applications in electronic form, using a qualified electronic signature for documents submitted by applicants and issued by the Ukrainian Patent Office; they have established the procedure for verifying applicants and rights holders for compliance with sanctions regulations, and review of applications filed by persons under sanctions, taking into account the appropriate restrictions.
The new rules have adapted the terminology in accordance with European standards (for example, the term «sign for goods and services» has been replaced by «trademark»), clarify the format, composition, and requirements for documents, including the procedure for correcting errors, amending applications, dividing and withdrawing them. In addition, the new rules cover not only the procedures for drafting and submission of applications but also regulate the examination procedure, which was previously determined by separate documents for certain intellectual property objects.
Another notable change is the new requirement is to provide detailed information about applicants and authors. Particularly, information about an individual applicant must now include the date of birth, details of the identity document, registration number of the taxpayer’s account card (if any), and a unique record number in the Unified State Demographic Register (if any).
In addition to the general changes, the new regulations take into account the specifics of each type of intellectual property.
Trademarks
In August 2024, The Rules for Drafting and Submitting a Trademark Application, an Application for International Trademark Registration, and Conducting an Examination of a Trademark Application and an International Trademark Registration with Extension to Ukraine (Order of the Ministry of Economy of Ukraine No. 19889 dated 06.08.2024) have been approved, which, inter alia,
- The types of marks eligible for registration have been defined, namely: word, figurative, three-dimensional, combined, sound, positional, ornamental, motion, holographic, multimedia designations, as well as color as such or a combination of colors without delineation of contours;
- The grounds for refusal of registration have been clarified, in particular, compliance with the Law of Ukraine «On the Condemnation and Prohibition of Propaganda of Russian Imperial Policy»;
- The requirements for reasoned oppositions to an application, which may be submitted by third parties, have been established;
- The procedure for filing and examining applications for international trademark registration has been regulated in accordance with the Madrid Agreement Concerning the International Registration of Marks and its Protocol.
Another important event related to trademarks was the adoption of The Regulation on the Commission for Granting Permission to Use the Official Name and International Letter Code of the State of Ukraine in a Trademark and/or to Include an Imitation of the Small State Emblem of Ukraine in the Trademark Image (Order of the Ministry of Economy No. 19944 dated 20.12.2023). This document regulates the procedure for submitting and reviewing requests for the use of Ukraine’s name and emblem in trademark images.
Inventions and utility models
The Rules for the Preparation, Filing, and Examination of Applications for Invention and Utility Model Applications (Order of the Ministry of Economy of Ukraine No. 23301 dated 09.09.2024) contain the following important provisions:
- The definitions of «product» and «process» for patenting purposes have been clarified. This is important for professionals and applicants, as recent amendments to the Law on the Protection of Rights to Inventions and Utility Models have introduced a distinction between these objects: only a product or process can be the subject of an invention, while a device or process can be the subject of a utility model. These rules define that:
- A device is a tangible object with a specific design and functional purpose;
- Process means a method of performing actions or using or utilizing resources to achieve a particular technical result;
- A product may be a device or system of interacting devices, mechanisms, products, substances, biological materials, plant or animal cell cultures, strains of microorganisms.
- The list of objects not subject to legal protection under the amended Law has been clarified. This list includes categories that were previously not covered, such as objects related to biological processes, genetic modifications, and therapeutic or diagnostic methods.
- The approach to assessing the individual character of industrial designs has been definied, a criterion that became a significant new requirement for the protectability of these objects in Ukraine several years ago. The concept of the degree of freedom of the author when creating an industrial design and the category of an informed user of the product also have been established;
- The requirements for an industrial design application have been detailed, including the requirements for multiple applications. It should be noted that, according to the amendments to the Law on Industrial Designs of 2020, an application can cover up to 100 products if they belong to the same class of the International Classification of Industrial Designs;
- For the first time at the national level the procedure for examining international industrial designs has been regulated, which acquire legal protection in Ukraine under the Hague Agreement on the International Registration of Industrial Designs.
- A unified procedure for registration of a geographical indication as a designation of the place of origin of a product has been established, including geographical indications for spirits, agricultural products, and foodstuffs.
- The requirements for registration have been further detailed, specifying who has the right to apply, what documents must be submitted, and establishing the requirements for the product specification.
- A simplified procedure for reviewing oppositions has been introduced;
- The option of mediation at any stage of the review process has been added;
- The creation of a unified information and communication system (ICS UKRNOIVI) for submitting and receiving documents with an electronic signature has been provided for;
- The procedure for reviewing applications subject to sanctions restrictions has been regulated.
- The Procedure for the Protection of the Personal Non-property Rights of an Author Whose Work Has Entered the Public Domain in the Absence of Heirs (Resolution of the Cabinet of Ministers of Ukraine No. 1066 dated 10.10.2023), –
regulates the mechanisms for protecting the author’s non-property rights after the work has entered the public domain (for example, due to the expiration of copyright protection and the absence of heirs). - The Procedure for Acquiring and Losing the Status of Orphan Works, Phonograms, Videograms and the Performances Recorded in Them, the Conditions for Their Permitted Use and the Maintenance of the Register (Resolution of the Cabinet of Ministers of Ukraine No. 1312 dated 15.12.2023), –
establishes the procedure for recognizing copyright and related rights objects as «orphan works», meaning those whose right holders cannot be identified or found. It also defines the conditions and rules for their further use by libraries, archives, educational and cultural institutions. - The Procedure for State Registration of Copyright and Agreements Concerning Property Rights to a Work (Order of the Ministry of Economy of Ukraine No. 11319 dated 16.08.2023), –
defines the procedure for the official registration of copyright for a work, as well as contracts related to the use or transfer (alienation) of copyright. - The Procedure for forming the National List of Websites Raising Concerns about Compliance with Intellectual Property Rights (Order of the Ministry of Economy of Ukraine No. 2945 dated 01.04.2024), –
introduces a mechanism for maintaining a list of websites that may infringe copyright and related rights, as well as a procedure for submitting and reviewing appeals from rights holders who consider their rights have been violated, and appeals from website owners to eliminate infringements.
Industrial designs
The Rules for Drafting and Filing an Application for an Industrial Design and Examining an Application for an Industrial Design and International Registration of an Industrial Design (Order of the Ministry of Economy of Ukraine No. 6237 dated 07.03.2024) regulate the «revolutionary» amendments of 2020 to the Law of Ukraine «On Protection of Rights to Industrial Designs», in particular:
Geographical indications
The Rules for the Preparation, Filing, and Examination of Applications for the Registration of a Geographical Indication (originally approved on 12.03.2021 No. 536-21, but significantly amended and presented in a new edition in accordance with the Order of the Ministry of Economy of Ukraine No. 16370 dated 09.07.2024).
The Appeals Chamber
In addition, in February 2024, the updated Regulations of The Appeals Chamber of the National Intellectual Property Authority came into force (Order of the Ministry of Economy of Ukraine No. 17768 dated 23.11.2023), which, inter alia:
Copyright
In the field of copyright, the Cabinet of Ministers of Ukraine and the Ministry of Economy of Ukraine adopted regulations in 2023-2024 that protect the rights of authors, their heirs, other copyright holders, and society as a whole. Among them:
Another important event was Ukraine’s accession to the international WIPO ALERT system at the beginning of 2024, which allows for the integration of a national list of websites that infringe intellectual property rights into a global database.
All these norms and innovations aim to align Ukrainian legislation with EU standards, enhance the protection of copyright and industrial property rights, classify intellectual property objects, provide legal certainty for applicants and examiners, and harmonize national registration and patenting practices with international standards.