№3(14)(2013)

Industrial design [1] is the result of human creativity in the field of artistic design, solution of aesthetic and decorative (affects the visual perception of the consumer) side of the product.

According to the procedure of registration in the customs register of intellectual property rights, protected according to the law and application by the person (owner of intellectual property rights to the object of intellectual property rights – industrial design), suspension of customs clearance of goods could happen[2]. Standards of IPR protection during the movement of goods across the customs border of Ukraine are contained in Chapter XIV of the Customs Code of Ukraine.

Visual perception of the consumer stops at the product packaging, which must have information about consumer properties both of the product and its manufacturer.

Acquisition of intellectual property rights to industrial design is certified by the patent. Patent of Ukraine to industrial design is a title of protection that is issued on behalf of the state by the authorized agency - the State Department of Intellectual Property (hereinafter - the State Department[3]). The right to obtain a patent is held by the author and others who have acquired the right to industrial design under the contract or law. Legal protection of industrial design in Ukraine is provided on the basis of its registration in the manner prescribed by the Law of Ukraine "On Protection of Industrial Designs".

As of 1 November 2012 (since 1992) State Department registered[4] 23886 patents, industrial designs, that include, in particular, active and such that are no longer valid.

For example, validity ceased for the following patents on packaging, protected as:

• industrial design «Box for “Kyivskyi” cake[5] (Patent of Ukraine №11483, owner - CJSC "Kiev cardboard packaging factory"[6], application filing date – 15.11.2005)[7];

• industrial design "Box for packing" (Patent of Ukraine № 4858, owner - a subsidiary of JSC "Kyivkhlib" "bakery and confectionery complex ", application filing date – 01.02.2001).

In the database of SE "UPTO" appropriate intellectual property rights of SE "Confectionery Corporation" Roshen "[8] remain valid as regards:

• industrial design "Box for packaging of "Kyivskyi" cake[9] (Patent of Ukraine №2741, filing date – 22.10.1998);

• mark for goods and services[10] (certificate of Ukraine №80829, filing date – 29.03.2005);

• mark for goods and services (certificate of Ukraine №80829, filing date – 07.06.2006).

Presented examples of box for packaging of the cake demonstrate that when the appearance of an industrial design is formed only through the presence of the sign which is identical to the registered mark for goods and services and the rights which arose prior to the date of application for industrial design or if priority is claimed before date of its priority, such industrial design does not meet requirements of patentability.

Industrial design meets the requirements of patentability if it is new.

In establishing the novelty of an industrial design one takes into account all submitted applications by other persons in Ukraine for industrial designs (except for withdrawn) as well as industrial designs patented in Ukraine. In this case examination of applications for industrial design is carried out by formal features, because in Ukraine during the examination compliance of the industrial design to the conditions for patentability, namely novelty, is not checked [11]. Given the latter, the question of whether industrial design was known before submitting the application for registration of the industrial design, etc.,[12] is a basic solved forensically [13].

It should be noted that in most countries which have acceded to the Locarno Agreement on Establishing an International Classification for Industrial Designs [14], novelty must be global (absolute), rather than local, as it is in Ukraine. According to the laws of the European Union, Canada, Mexico, Brazil, Argentina, industrial design should not be used anywhere else in the world at the time of applying for registration (or prior to the relevant priority date).

On the basis of the legal provisions of 17.12.2008 Ukraine joined the Locarno Agreement on Establishing an International Classification for Industrial Designs, signed on 8 October 1968.

Validity term of the Patent of Ukraine for industrial design is 10 years from the filing date to the State Department and may be extended at the request of the patent owner, but not more than five years.

Patent of Ukraine on industrial design issued by the results of the formal examination under the responsibility of the owner without guarantee of validity of the patent. Under domestic law, when considering applications for industrial designs an examination is conducted without regard to the information on submitted applications and registered marks for goods and services. Thus, even if one of the essential features of the industrial design is the designation that is identical or similar to the extent that it can be confused with the designation registered as a trademark for goods and services, the rights to which belong to another person, not the person who filed an application for an industrial design, or the appearance of industrial design is formed only through the use of such designations, there are no legal grounds for refusal of granting a patent.

Thus, the provisions of the legislation of Ukraine provide the opportunity to settle disputes between the owners of patents for industrial designs, owners of certificates of marks for goods and services and the owners of marks unregistered as industrial property with the official state registries (including service marks).

We should note the norms of subparagraph "a" Art. 11 of the Directive of the European Union "On the Protection of Industrial Designs» № 98/71 of 13.10.1998, which stipulate that member states of the European Union may provide for the refusal of registration of an industrial design or declaring such registration null and void if the fact of use in industrial design trademark rights to which within the European Union or within a specific member state belong to the person who is entitled to object to the use of such a mark. A similar provision is found in Art. 25 of the EU Directive "On the design patterns within the European Union» № 6/2002 of 12.12.2001.

In addition, the European Union Directive "On the Protection of Industrial Designs» № 98/71 of 13.10.1998 requires that industrial designs registered in EU countries were also protected in accordance with law of that country on copyright.

The said laws and regulations suggest that industrial designs, being on the border of art and industry, undergo two legal regimes (legal protection under the rules of industrial property and copyright regulations).

Contradictions in choosing the form for protection of industrial designs - copyright or industrial property right - persist in the legislation of all countries. These two forms of protection of industrial designs may be cumulative (theory of element of art in France), separatist (USA, Italy), intermediate (Benelux countries, Germany, Denmark, Finland, Norway, Sweden, Switzerland).

The analysis of procedures for acquisition of rights to intellectual property - industrial design and mark for goods and services - shows that in each particular case an applicant must decide on the form of legal protection of the result their intellectual creativity and industrial activities.

Practice suggests that it is better to protect volume designations as industrial design, if the shape of the applied object is largely determined by the function it performs. When the shape of a volume designation is full of decorative elements with intensive plastic design, then it is better to use the protection provided by the concept of a trademark.

It is worth also considering the basic legal criteria for differences between industrial designs and three-dimensional marks for goods and services[15]:

Criterion of difference

Industrial Designs

Three-dimensional marks for goods and services

Purpose

Encourage creativity in building new industrial designs of products and investing in the production of advanced consumer products in which these designs are implemented

Promote transparency and ensuring a competitive market and allow customers to more effectively focus their demand

Function

Make products aesthetically appealing and functional for consumers

Give consumers the opportunity to distinguish between products that bear a mark and equivalent competing products

Duplication

Combined protection is possible (according to certain laws) for both artwork and (when having sufficient distinctive force) for marks only in relation to non-functional features

Combined protection is possible (according to certain laws) for both artwork and (in certain cases) for industrial designs only in relation to non-functional features

Amount

Holder of the right to industrial design may prevent the production and sale of any product, which embodies the said industrial design

Holder of the right to the mark may prevent only unauthorized use of the mark in connection with the above products, but cannot prevent production and sale of such goods, if the mark is not used

Duration

Exclusive rights to industrial design are limited in time, usually 10-15 years from the date of registration or deposition

Exclusive rights to the mark can be unlimited in time, if the registration of marks is periodically updated and / or the mark is appropriately used in trade, as required

In today's world there are no concurrent views on the legal protection of industrial designs and what distinguishes them from other objects of intellectual property (patent and copyright, trademark right).

Legislation of certain countries prohibits the registration of packaging as trademarks (Argentina, Brazil, Japan and some others). In Ukraine means of packaging can be registered both as marks for goods and services, and as industrial designs. Each of legal institutions has its advantages (as a legal means of protection). For example, the novelty of the mark for goods and services is limited to the territory of Ukraine, and of the industrial design - the whole world.

Accordingly, to ensure that an industrial design is new, a patent search should be conducted taking into account that the following may be under protection:

• overall product appearance;

• independent elements of design;

• appearance of individual parts;

• appearance (design elements) of internal parts (components) of the product that are visible in the normal use of the object.

The list of countries for the search should cover a number of official bulletins, including:

No.

Country

Alphabetic country code

Name of the Official Bulletin

1

Argentina

AR

Ley de Modelos y Diseños Industriales[16]

2

Australia

AU

Australian Official Journal of Designs[17]

3

Benelux (Belgium, Netherlands, Luxembourg)

BX

Benelux Industrial Designs Gazette[18]

4

Belarus

BY

Афыцыйны бюлетэнь (видавася з 1994-го по 2006)

«Изобретения. Полезные модели. Промышленные образцы»[19] (з 2006)

5

Bulgaria

BG

Официален бюлетин на Патентното ведомство на Република България[20]

6

Armenia

АМ

Промышленная собственность. Официальный бюллетень (видається вірменською мовою. З 1996 публікації дублюються російською мовою)[21]

7

Georgia

GE

Bulletin of the Industrial Property of Georgia (видається з 1993)[22]
8

Spain

ES

Boletin Oficial de la Propiedad Industrsal[23]

9

Kazakhstan

KZ

Онеркосіп меншігі. ресми бюлетень (публікації щодо промислових зразків дублюються російською мовою, видається з 1994)[24]

10

Kyrgyzstan

KG

Интеллектуалдык менчик: официалду бюллетень (щомісячно видається з 1997 накладом 120 примірників, з яких 60 – у паперовому вигляді; 60 – на CD-дисках)[25]

11

China

CN

Waiguan sheji zhuanli shenging gonggbao[26]

12

Colombia

CO

Gaceta de la Propided Industrial[27]

13

Cuba

CU

Boletin Oficial de la Nacional de Invenciones, informacion etica y marcas[28]

14

Latvia

LV

Patent un preču zimes[29]

15

Lithuania

LT

Valstybinio patentų biuro oficialus biuletenis[30]

16

Mexico

MX

Gazeta de Invenciones y Marcas[31]

17

Germany

DE

Geschmackmusterblatt[32]

18

Norway

NO

Norsk Patenttidende er publisert [33]

19

Portugal

РТ

Boletim da Propidade Industrial[34]

20

Republic of Moldova

MD

Buletin oficial de proprietate industriala[35]

21

Russia

RU

Изобретения. Полезные модели. Промышленные образцы [36][37]

22

USA

US

Official Gazette of the United States Patent and Trademark Office[38]

23

Tajikistan

TJ

Патентный вестник [39]

24

Turkmenistan

TM

Официальный патентный бюллетень Туркменистана[40]

25

Hungary

HG

Szabadalmi kozlony es vedjegyertesito[41]

26

Uzbekistan

UZ

Расмий Ахборотнома

(официальный бюллетень)[42]

27

Ukraine

UA

Промислова власність[43]

28

Finland

FL

The Design Gazette[44]

29

France

FR

Bulletin Officiel de la Propriete Industrielle: Dessins et Modeles[45]

30

Switzerland

CH

Schweizerisches Patent-, Muste-, und Markenblatt[46]

31

Sweden

SE

Swedish Design Database [47]

32

Japan

JP

Design Rights:Protector of Originality[48]

33

World Intellectual Property Organization

International Designs Bulletin[49]

34

Bureau of the European Union for the registration of trademarks and industrial designs [50]

RCD-ONLINE - Design consultation service[51]

The above table explains why the patent of Ukraine for industrial design is issued by the results of the formal examination under the responsibility of its owner.

The guarantee of the validityof a patent for an industrial design can be the report on patent research[52], drawn up by SE "Ukrpatent" under the Procedure for paid services, approved by the Order of SE "Ukrpatent" from 27.12.2006 № 85 (as amended on 03.08.2012 № 209). Thus, the cost per:

• processing of an order (definition of tools) within one day amounts to 504.00 UAH;

• area search for groups agreed with the customer (IPC, CTEA, enterprise, etc.) per one search item - 4020.00 UAH;

• preliminary analysis (per day) of selected data (creation of relevant groups, distribution by year, region, public authorities, enterprises, etc.) – 504.00 UAH;

• reporting on the search – 504.00 UAH [53].

Also, the guarantee of the validityof a patent for an industrial design can be the report on patent research prepared by the branch of SE "Ukrpatent" "Ukrainian Center of Innovations and Patent Information Services." The cost of services related to patent-related appearance of IPR object and business activity object, will make for:

• processing of one order - 180.00 UAH;

• information search (one state, one year, one class) - 120.00 UAH (fifteen working days) and 480.00 UAH (five working days);

• comparative analysis of the appearance of patented industrial designs and the object of research (one version) - 2520.00 UAH, each subsequent version - 1260.00 UAH;

• preparation of the report - 600.00 UAH [54].

Protection of the industrial design in other countries can be obtained by:

• filing an application to the office of the country in which the applicant wishes to obtain protection of industrial designs under the legislation of that country;

• obtaining protection of the industrial design in foreign countries under the Hague Agreement Concerning the International Registration industrial designs (hereinafter - the Hague agreement) that allows to register an industrial design in several member states of the Hague Agreement by filing one application to the International Bureau of the World Intellectual Property Organization (hereinafter - WIPO). Under the provisions of the Hague Agreement, such application is filed by the applicant themselves (or their representative) directly to the International Bureau of WIPO.

Upon filing an international application to the International Bureau of WIPO it is necessary to pay three types of fees:

• basic fee;

• regular designation fee in respect of each designated Contracting Party which, in turn, is differentiated and has three levels (depending on the indication of one or another Contracting Party that made a statement about belonging to the second or third level of fees);

• individual designation fee in respect of each of the contracting parties marked by a declarant, that made a statement that the regular designation fee is replaced by an individual designation fee, the amount of which is specified in the statement.

Paying the fee at the stage of filing an international application, one should specify the purpose of the payment, together with information that allows to identify the application, the applicant's name and the industrial design payable. Amounts and types of the fees paid are indicated in the list of amounts of fees (Schedule of Fees), posted on the website of WIPO[55].

Industrial designs may be three-dimensional (models), two-dimensional (pictures) or combined.

The scope of legal protection provided is determined by a combination of essential features of the design on the photos of the product (its layout, drawing). The feature of an industrial design is considered substantial if it influences the overall appearance of the product, which is characterized by this feature (Section 8.1.4.1. of Regulations[56] of preparation and submission of applications for industrial design).

The main document that contains all the information about the declared industrial design and which reveals all the essential features of the product, establish their totality and thus determine the scope of legal protection provided by industrial design, is the image the appearance of the product.

Instead of the product images pictures of his model or drawing may be submitted, as well as the image of a product, made in any manner (for example, by means of computer graphics).

In this case the main requirement regarding the images of both the product and its layout [57] or drawing [58], is the following: the image (set of images) should give a full, detailed presentation of the product appearance applied for registration as an industrial design which allows to identify all its essential features.

Legal "meaning" is borne only by the image (set of images) of an industrial design which allows to identify the essential features of the design, establish their totality, while description of the industrial design does not have this legal (legal) "meaning" and is used only to interpret features of the industrial design.

Significance of a particular feature of the product is determined by its participation in creating a visual image of the product, in providing the product with the properties that allow to visually distinguish it from similar products. At the same time, the disvision between major and minor features is arbitrary. The same features may be important in one case and unimportant in another.

Industrial designs may be three-dimensional [59], two-dimensional [60] or such characterized by features [61] characteristic of both three-dimensional and two-dimensional industrial designs.

Thus, essential features of an industrial design can be:

• creative solution of the product;

• composition and quantity of basic compositional elements;

• product shape as a whole and / or the shape of its part (three-dimension characteristic, outline, silhouette);

• relative position of the elements (composite, layout solution);

• plastic solution of the product (its elements);

• color solution;

• decoration;

• material.

For example, the appearance of products pertaining to printed materials may use important features that, in particular, reflect:

• composite construction;

• elaboration of graphic elements, visual motifs, ornamentation;

• placement and execution of font graphics (excluding semantic and / or phonetic content of inscriptions);

• color solution, etc..

Thus, significant are the features each of which is necessary, and together they are sufficient to form a concrete visual image of the product.

Insignificant are considered the features that do not affect the overall appearance of the product, or do not exhibit the essence of the product applied for registration as an industrial design, or do not affect the properties of the product and its features[62].

In the description of essential features in the application for an industrial design the applicant must disclose in detail the essence of the design, including reference to the drawings of general apperance and / or layout scheme, building chart, ergonomic scheme and other materials that explain the essence of of the industrial design.

In the description of the design, which represents a set of products, it is necessary to list all constituent products (of the set) which perform the functions realizing the general function and the possibility of their integrated use in a set. In this case, in addition to features common to all products of the set, it is necessary to describe the features that characterize the peculiarities of particular products.

In the description of an industrial design, which involves variants of configuration, it is necessary to fully disclose substantial features of the main variant, and the disclosure of other alternatives is carried out through the description of features that differentiate each version from the main one.

In the description of products that can transform and whose appearance can be determined by two states - closed (folded) and open (eg, cabinets, refrigerators), it is necessary to disclose the essential features that characterize both external and internal appearance (internal volume) of the product.

If the color (colors) is (are) an essential feature of an industrial design, it (they) must be clearly specified in the "Description and essential features of the industrial design" section of the application.

For confirmation of existing ergonomic features in the description it is necessary to characterize the use of a product in relation to people, interaction of the most important compositional elements, assemblies and parts of the product's outward appearance to reveal the peculiarities of the relationship of man and product.

During the preparation of the description the terminology should be preserved. That is, the same features must have the same names, not as alternative concepts characterizing various forms of its realization.

As of 31 July 2012, the List of IPR objects included in the customs register, according to the letter of the State Customs Service, 477 IPR objects were included, including three-dimensional marks for goods and services, and industrial designs.

As of 18 October 2012 the number of IPR objects included in the customs register [63], increased to 545.

The question of the size of the regular price of remuneration to the owner of property rights to the industrial design available in the Customs Register, is resolved forensically subject to certain provisions discussed above.

A forensic examination is conducted under the condition that the declarant (whose goods are on hold by customs authorities for customs clearance) and the holder of property rights to industrial design (available in custom registry) are residents of Ukraine.

At the first stage of the examination a forensic expert, relying on the case materials, examines the payment of the annual fees [64] for the industrial design patent validity[65].

At the same time, they study the case materials (court journal, court records, judgment, etc.), facts about the presence or absence of recognition of the patent for industrial design (introduced into the customs registry) fully or partially invalid at the date of legal action.

In the absence of the payment of the annual fee for maintaining the validity of the patent for the industrial design introduced to custom registry, and the expiry of six months from the date on which such fee was to be paid, the forensic expert prepares the report of failure to express an opinion.

If the fee for maintaining the validity of a patent for the industrial design introduced ​​to custom registry, is paid on a timely basis and in full and if at the date of legal action the industrial design introduced into the customs registry or its part are valid, forensic expert continues legal research.

At the second stage of the examination comparison of details of documents and the terms "identification code", "location", "name of entity", "kinds of activity", "classes under Locarno classification"[66], "priority" is conducted.

In particular, details "location" and "name of legal entity", indicated in the certificate of state registration of the legal entity that owns the proprietary rights to the industrial design available in custom registry must match the details of the "location" and "the name of a legal entity," referred to in the patent of Ukraine for industrial design[67].

Details of documents provided to the expert are matched with information on grant of patents for industrial designs, starting with number 1 Official Bulletin "Industrial Property" of the State Enterprise "Ukrpatent" (hereinafter - the official bulletin) for 1993[68].

The publication date of information for granting a patent for an industrial design is the publication date of the bulletin indicated on its front page.

Information on industrial designs provided in the following sections of the Official Bulletin:

• "Publication of data on patents, industrial designs, entered into the State design register of Ukraine" (№ 1 in 1993 to No. 4 for 1994);

• "Registration of license agreements and agreements on the transfer of patent rights for industrial designs" (from No. 4 for 1994).

Starting from the Official Bulletin "Industrial Property» № 5, 1994, in the section "Publication of data on patents of Ukraine on industrial designs", from № 8 for 2001 - in the section "Information on the patents of Ukraine on industrial designs".

In the section "Publications about granting of ..." the following information should be understood under the mentioned codes:

(10) - the kind and number of the title of protection of the USSR;

(11) - the number of the title of protection;

(15) - date of registration;

(20) - number and date of submission to the State Department of an application previously filed to the Patent Office of the USSR;

(21) - the application number;

(22) - date of filing;

(23) - data on the exhibition priority;

(28) - the reported number of versions;

(31) - the number of the earlier application in the state - party to the Paris Convention;

(32) - date of filing of the earlier application in the state - party to the Paris Convention;

(33) - code of the state - party to the Paris Convention, where the previous application is filed;

(51) - code(s) of the International Classification for Industrial Designs (hereinafter - ICID);

(54) - the name of the industrial design;

(55) - the image of industrial design and instructions concerning colors;

(62) - the number and filing date of the earlier application to the State Department of Ukraine;

(71) - the applicant(s), its (their) address and country code;

(72) - author(s);

(73) - the owner(s), its (their) address and country code.

Starting from number 11 of the Official Bulletin "Industrial Property" in 2004, the structure and form of presentation of information about patents of Ukraine on industrial designs is improved with the inclusion of all kinds of images listed in the State Register.

In addition, with regard to the change in legal position of patents for industrial designs in subsection "Industrial Designs" of the section "Notification" of the bulletin "Industrial Property" the information is published on:

• prolongation of the patent for industrial design;

• termination of the patent for industrial design in relation to its expiry;

• termination of the patent for industrial design on the owner’s application in full;

• termination of the patent for industrial design due to non-payment of the annual fee;

• recognition of the patent for an industrial design annulled by court in full;

• statement of the patent owner on granting to any person of the permission to use a patented industrial design;

• transfer of ownership of the industrial design;

• issuance of a license to use the industrial design;

• early termination of the license agreement by mutual consent;

• changes made to the data on the issue of a license to use the industrial design, etc..

Comparison of documents and details "CTEA kinds of activity" takes into account the provisions of Order № 457 of 11.10.2010 of the State Committee of Ukraine for Technical Regulation and Consumer Policy [69].

When comparing the documents and details "priority" information is considered with respect to the filing date (22), data on the exhibition priority (23), data on priority under the Paris Convention (31), the filing date of the earlier application under the Paris Convention (32).

At the third stage of expert research attention is paid to the presence or absence of comparison of the documents and details of the terms "identification code", "location", "name of legal entity", "CTEA kinds of activity", "classes under the Locarno Classification[70]”, "priority" in the statement of patent research and / or patent card [71], to be presented to the court by the copyright holder of intellectual property rights to the industrial design introduced to the customs register in accordance with the provisions of Instructions for the examination of technology objects on the patent cleanness[72].

Standards of § 1.1.2. Instructions for examination of technology objects on the patent cleanness (hereinafter - Instructions for examination)[73] provides that infringement is a legal property of the object, which consists in the fact that this object can be freely used in this country without the risk of violating patents acting in its territory of an exclusive right that belongs to third parties. In addition, objects (industrial designs) should not violate the registered inventions, utility models, trademarks as well as trade names, indications of goods origin.

patent infringement (paragraph 1.1.3. of the Instructions for examination) may be caused by the implementation, exhibiting or offering for sale in the country only of the concrete material object (device, process, substance). This notion of "patent cleanness» generally also covers technical documentation (standards, technological documents, etc.), according to which concrete material object will be produced or manufactured.

Patent cleanness is a relative concept, i.e. it is defined only in relation to specific countries and only at a certain date. This is due to the territorial and temporal effect of patents. The object that holds patent cleanness with respect to certain countries where it is subject to patents applicable therein, may at the same time have the patent cleanness in respect of all other countries where there are no such patents. The same object with the passage of time may have an patent cleanness in respect of all other countries, where there are no such patents. Subsequently, the same object can also have patent cleanness regarding countries where patents, under whose action it was subjected earlier, will become invalid (due to the expiration or otherwise).

Test for patent cleanness in the report on patent research and patent card establishes the possibility of realisation (use) of the object in a particular country or group of countries, and identifies measures to ensure such realization without violating property rights of third parties-patent holders.

In carrying out the examination for patent cleanness three aspects must be observed: legal, technical (engineering) and economic.

In countries where the protection of an industrial design is based on rules of patent law, establishing the fact of the use of an industrial design or infringement of the design is done in a report on patent research by comparing the appearance of the investigated object with the identified patented design.

Comparison in the report on the patent research is carried out assuming that a violation of a patent (certificate) on industrial design is considered to be the introduction into economic circulation of a product that may be only partially identical to the registered sample, but gives a consumer the impression of analogy with the sample and may thus confuse them regarding the manufacturer of the product. In this case, it does not matter whether this is the case of borrowing (copying) or objective (random) coincidence. Therefore, when comparing the attention is focused not on complete coincidence of all signs of exterior design of the object or its parts with similar elements of the registered design, but only on their equal visual perception by an average person.

For example, according to current practice in the U.S. and other countries with the protection of industrial designs on the basis of patent law, during a dispute on the infringement, the comparison of the registered design with a counterfeit product is carried out by showing them one by one (but at a different time). In one of the judgments it was noted that "the eye is the only judge"[74].

To address the question on whether or not the appearance of the object being studied is subject to the revealed patent for an industrial design, one should bear in mind that the registered sample is a holistic, indivisible object and should not be considered as the sum of its individual parts. Accordingly, the use of only individual elements of exterior design of the registered industrial design is not considered an infringement of the patent. Only when the used part of the registered design has independent legal protection, that is, it is covered by a separate patent, the infringement occurs.[75]

For countries with the protection of industrial designs, according to copyright norms, the approach to establishing a violation is different.

Typically, comparison of registered design is not carried out. It suffices to establish the two facts:

• copying of the investigated object from a foreign design;

• protection of the investigated object in the country by the current title of protection or state registration.

If both of the above facts are present, the object under study violates the rights of the owner of the industrial design in this country. In this case, one should bear in mind that under the existing practice, if the data on the appearance of design were not published (in the prospectus, catalog) and have not been made public by exhibiting, selling, etc., in case of conflict, the plaintiff must prove the defendant's bad faith (the fact of borrowing ), and if such publication did occur, then proving one's innocence (absence of borrowing) is the responsibility of the defendant.

It is possible to refuse the study of infringement regarding the countries with the protection of industrial designs on the basis of copyright law only if it is known that the design is not copied, and the volume of concrete deliveries to that country, taking into account the previous volume of supply, is small, and its value does not exceed $150-200 thousand, and also considering the fact that there were no conflicts with deliveries that were conducted over the past several years[76].

In case of absence in the case materials of the report on patent research and patent card for the industrial design, available in the Customs Register, a forensic expert, guided by newsletter of the Supreme Economic Court of Ukraine from 10.07.2006 № 01-8/1516, submits a petition to the court to obtain data to be established by an expert, certified in the specialty 13.4 "Research relating to the protection of industrial designs," in the course of solving the following matters:

1. Is there likelihood of confusing the goods (industrial product) of the declarant, halted for customs control, with the industrial design, included in the customs register?

2. Is a set of essential features of the industrial design, which was introduced to the customs registry, publicly known in the world before the filing date of the application on it?

3. Are all the essential features of the industrial design entered into the customs register used in goods (industrial products) of the declarant, halted for customs control?

4. Are all the essential features of the industrial design entered to the customs registry listed in the supplied technical documentation for the goods (industrial product) of the declarant, halted for customs control?

5. Are other intellectual property objects protected in Ukraine included in the list of essential features of the industrial design entered into the customs register?

6. Are other intellectual property rights, which are protected on the territory of member states of the World Intellectual Property Organization, included in the list of essential features of the industrial design entered into the customs register?

7. Are the features that are not subject to legal protection in Ukraine included in the list of essential features of the industrial design entered into the customs register?

8. Are the features that are not subject to legal protection on the territory of member states of the World Intellectual Property Organization included in the list of essential features of the industrial design entered into the customs register?

9. Are features, not included in the filed application into the list of essential features of the industrial design entered into the customs register?

In case this expert issues categorical answers to these questions not in favor of the owner of intellectual property rights to the industrial design (entered to the customs registry) and there is a proper court order, a forensic expert (specialty 9.13) prepares the notice of failure to express an opinion.

In case of probable answers to the above questions, or parts thereof, in favour of the owner of property rights for an industrial design (entered to the customs registry) and there is no relevant judicial decision on disagreement with the findings of the expert, a forensic expert (specialty 9.13) should continue their research and issue an opinion.

At the fourth stage of expert investigation matching the norms of Art. 144, 155 and 490 of the Civil Code of Ukraine and balance sheet indicators of the owner of intellectual property rights to the industrial design (entered to the customs registry), prepared at the latest annual date and the last reporting date preceding the date of suspension of the product of the declarant, is carried out.

Given the requirements of specified articles and information from the Balance Sheet of the owner of property rights for the industrial design (entered to the customs registry), prepared at the latest annual date, the expert conducts the comparison indicators of balance sheet "statutory capital" (line 300) and "equity" (line 380)[77].

At the fifth stage norms for the definition of "regular price of remuneration" are investigated[78].

Given the requirements of Art.7 and 8 Law of Ukraine "On Protection of Industrial Designs" from 15.12.1993 № 3688, during the procedures for the definition of "regular price of remuneration» of the owner of property rights for the industrial design (available in custom registry) a forensic expert, given the case materials (court journal, court records, judgment, etc.), investigates the availability of:

• written agreement between the authors [79] (application code (72), who created the industrial design by joint work;

• written agreement of the employer (owner of intellectual property rights to the industrial design, entered to the custom registry) with the author (authors)[80];

• the fact of payment of remuneration to the author (authors)[81] by the employer (owner of property rights for industrial design, entered to the custom registry) according to the economic value of the industrial design and other benefits received by the employer from the industrial design under the terms of a written contract between the employer (owner of intellectual property rights to the industrial design, entered to custom registry) and the author (authors);

• court dispute (disputes) concerning the conditions of receipt of remuneration [82] the author (authors) from the employer (owner of intellectual property rights to the industrial design, entered into the customs register);

• court dispute (disputes) on the authorship of industrial design, entered to the customs registry;

• court dispute (disputes) on establishing the owner of the patent to industrial design, entered to the customs registry;

• court dispute (disputes) on the right of prior use for industrial design, entered into the customs register.

In conducting the examination the rules of art. 15 of the Law of Ukraine "On Copyright and Related Rights" are also taken into consideration.

At the same time, in the research part of the opinion the forensic expert has the right to draw attention of the court to the provisions of subpara "d" para 2 Art. 52 of the Law of Ukraine "On Copyright and Related Rights", whereby instead of indemnification or collection of income in favor of the author (s) patent for an industrial design, entered to the customs registry may be paid a compensation ranging from 10 to 50 000 minimum salaries.

At the sixth stage the expert investigates the base and royalty rate for:

• contract, offered to the declarant of the goods (halted by customs officers) by the owner of property rights for industrial design, entered to the customs registry;

• determining the amount of remuneration to the owner of intellectual property rights to the industrial design, entered into the customs register[83].

At the seventh stage of the examination on the basis of the above stages of assessment procedures a forensic expert:

• carries out arithmetic calculations for each period of paying a remuneration within the dates of the contract, offered to the declarant of the goods (halted by customs officers) by the owner of the industrial design entered to the customs registry;

• provides opinions.