Trademark in Bulgaria
How to register a trademark in Bulgaria?
The trademark with which a company designates its goods and/or services is not protected until it is registered. This means that competition in the industry has the freedom to use the same mark for its goods and/or services. In order to avoid unfair competition and to restrict the use of the trademark by others, it is necessary to register it. For our country, this is done by filing an application for trademark registration in Bulgaria. The right to the trademark is acquired through registration, starting from the date of filing the application, belonging to the first at the time applicant.
What is a trademark
A trademark is a sign that is able to distinguish the goods or services of one person from those of others. It must be presented graphically. Such signs may be words, including names of persons, letters, numbers, drawings, figures, the shape of the goods or their packaging, a combination of colors, sound signs (notes), or any combination of such signs. The application for registration shall include a graphic representation of the sign which will denote the goods and/or services, as well as a detailed list of those for which the mark will be used.
Preliminary search
In order to obtain an idea of other registered trademarks, it is advisable to carry out a preliminary search for freedom of trademark for registration, which provides up-to-date information on previously registered trademarks. It is recommended that the preliminary search be conducted by a trademark specialist, as extensive experience and expert knowledge are required in searching the registered trademark databases in order for the results and analysis to be more comprehensive and accurate. Any qualitative search on freedom of use is a prerequisite for the unimpeded registration of a trademark *.
It is very important to know that a check for the existence of prior rights on the marks applied for registration is not carried out in the Patent Office. It is the duty and responsibility of the holders of earlier rights themselves.
* The results can never be exhaustive due to a large number of registered and unregistered trademarks.
Procedure for registration of trademark in Bulgaria
Every filed application for trademark registration in Bulgaria goes through a procedure in the Bulgarian Patent Office (BPO). The procedure takes about a year. The duration of the procedure does not matter. The applicant has the benefit of so-called “provisional protection”. It has a retroactive effect from the publication of the application if the trademark is subsequently registered. During the procedure, each duly filed application is subject to examination, and after publication, it goes through the so-called period of “Opposition”.
On March 10, 2011, amendments to the Trademarks and Geographical Indications Law entered into force, regulating the opposition procedure. The procedure for registration of trademarks was replaced by the so-called opposition system. Under the new system, the examination as to the substance of applications for trademark registration in Bulgaria is carried out ex officio only on absolute grounds. They are listed in Art. 11 of the Law. If the application meets these requirements, it shall be published in the Official Bulletin of the Patent Office. Within three months of publication, the proprietor of the earlier mark, the licensee of the exclusive license of the earlier mark, as well as other persons with earlier rights may object to the registration. For this purpose, they may file a written opposition to the registration of the mark.
When no opposition has been filed or the opposition has been rejected, a decision shall be taken to register the mark. Trademark holders should take the necessary care to protect their rights. They must monitor the published applications and, in the opinion that the possible registration may harm their business interests, file an opposition.
Right to apply
Applicants for a trademark in Bulgaria can be both Bulgarian individuals and legal entities, as well as foreign ones. Foreign individuals and legal entities perform actions before the Patent Office through a local industrial property representative. Bulgarian law does not necessarily require the applicant to be a manufacturing or trading company that manufactures or trades the goods, respectively to perform the services for which he wishes to register the mark.
Exclusive right
The right on a trademark arising from its registration includes the right of its proprietor to use it, to dispose of it and to prohibit third parties from using a mark that is identical or similar to it in commercial activities without his consent. The prohibition on use includes the affixing of the mark on goods or on their packaging. The offering on the market of goods bearing this mark or their placing on the market, or the supply or provision of services bearing that mark, the importation or exportation of goods bearing that mark and the use of the mark in commercial papers and in advertising also fall into this category. When the trademark is owned by several persons, each of them can use it in full. This is the case unless otherwise agreed.
Trademark monitoring
A specific recommendation to businesses is to monitor published applications (so-called “trademark monitoring“). They can object to any trademark that could harm them in any way. The assessment is made by the rightsholders themselves or their representative. They know best what the consequences of having an identical or similar trademark on the market would be. Trademark rights are not an end in themselves and their registration should not be used with a prohibitory function.
REGISTRATION OF TRADEMARK IN BULGARIA
Stages of the procedure
1. Filing and dating of application for trademark registration
To obtain trademark registration in Bulgaria, it is necessary to file an application with the Patent Office of the Republic of Bulgaria. It is then necessary to check whether the requirements of the LMGI for establishing the filing date have been met. The filing date is considered to be the date on which the following documents were received by the Patent Office:
– request for registration;
– the name and address of the applicant;
– trademark image;
– list of goods or services for which registration is requested;
– for collective and certificate marks – the rules for their use.
2. Formal examination
For each application with a filing date, it is checked whether a document for paid fees is attached. Where the fees are paid in an insufficient amount the applicant is provided 14 days for payment. It is possible to pay the fees in the additional 14-day term in double the amount. If the fees are not paid within this period, the application is considered withdrawn and the proceeding is terminated. In one month following the receipt of the document for duly payment of the official fees the application shall be checked for formal requirements and in case of deficiency a period of one month shall be allowed to remedy the defect. The application must relate to one brand. It must be intended for goods and/or services of one or more classes according to the International Classification of Goods and Services. The application also contains:
– request for registration;
– identification data of the applicant;
– identification data of the industrial property representative, when such is authorized, incl. power of attorney;
– priority claim, if any;
– indication of the type of mark
– an image of the mark where it is combined, figurative or three-dimensional or spelling of the mark where it is word mark;
– a description of the mark and/or an indication of its word elements and the manner of their spelling – in Cyrillic or Latin letters, and/or an indication of the color (s) where the image of the mark is in color;
– list of goods and/or services and their classes according to the International Classification of Goods and Services;;
– list of the documents enclosed to the application;
– for collective and certificate marks, rules of use also apply;
– document for payment of fees.
3. Examination as to substance
Within two months from the completion of the formal examination, an examination regarding the existence of absolute grounds for refusal shall be carried out. Where there are grounds for refusal for all or part of the goods or services, the applicant shall be notified, stating the reasons for the refusal and given a two-month period for objection. If within this period, the applicant does not reply, object unreasonably, or does not limit the list of goods or services, a decision on total or partial refusal shall be taken. In case of partial refusal, the applicant has the opportunity within one month from the receipt of the decision or in the proceedings on appeals against decisions for refusal to submit a request for division of the application.
4. Publication of the application and objections by third parties
Within one month after the completion of the examination as to the substance of absolute grounds for refusal, any application that meets the requirements of the law shall be published in the Official Bulletin of the Patent Office. International registrations to which the Republic of Bulgaria is a designated state shall be published within one month of notifying the Office of the international registration. Within three months from the publication of the trademark, any person may file an objection against the registration, resp. against recognition of the effect of international registration on the territory of the Republic of Bulgaria on the basis of the absolute grounds for refusal. The objection is considered by the opposition department, as the person who filed the objection is not a participant in the proceedings on the application.
5. Opposition to registration
Within three months from the publication of the application, certain persons specified in the law may file an opposition against the registration of a trademark, resp. against recognition of the effect of international registration on the territory of the Republic of Bulgaria. Opposition to the recognition of the effect of an international registration shall be filed between the sixth and ninth month from the publication of the international registration in the Official Bulletin of the Patent Office. The opposition is submitted in two copies, and it must:
– be motivated;
– contain data on the person who filed the opposition;
– to contain data about the trademark, object of the opposition;
– contain the legal grounds on which it is based;
– be accompanied by evidence where necessary;
– be accompanied by evidence for well-known or recognized as a well-known mark, where the opposition is based on a well-known mark or a recognized as well known
– be accompanied by a document for payment of fees.
6. Registration
Within seven days from the expiration of the term for opposition (when opposition has not been filed) or from the date of entering the decision to reject the opposition as groundless, the decision to register the mark shall be taken. The mark is entered into the State Register of Trademarks and is published in the Official Bulletin of the Patent Office up to one month from the date of the decision for registration. A Certificate for registration shall be issued to the applicant.
