15 Dec A new law on Bulgarian trademarks in force as of 13 December 2019
As of December 13, 2019, the new Bulgarian Trade Marks and Geographical Indications Law has entered into force. Changes in the law are dictated by the obligations to comply with EU law under DIRECTIVE (EU) 2015/2436 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL on the approximation of the laws of the Member States relating to trade marks, and the need to eliminate many ambiguities and omissions in the past legislative framework. In addition, the newly adopted law complies with the requirements of Regulation (EU) No 1151/2012 of the European Parliament and of the Council on quality schemes for agricultural products and foodstuffs.
In the present article, I will highlight some of the pivotal changes in the requirements, new opportunities and / or restrictions conerning the registration of a Bulgarian trademark. The purpose of the article is to inform the mass consumers of the Bulgarian trademark system about the new possibilities prescribed in the law, without going into details about the more extensive legal reforms that would be practically used by specialists in the IP field, such as Bulgarian industrial property representatives, a.k.a. Bulgarian Trademark Attorneys.
The main reforms can be divided into several groups which, in my opinion, would be of particular interest to the trademark applicants in Bulgaria.
I. COSTS FOR A BULGARIAN TRADE MARK APPLICATION/REGISTRATION
The price for the registriation of a mark (brand) in Bulgaria before the entry into force of the new law, started from BGN 570 (290 EUR) for a trademark application including up to 3 classes of goods / services and an additional amount of BGN 40 (22 EUR ) was applicable for each class of goods / services over the 3rd. The fees had to be paid in two stages, namely the trademark application fees at the filing stage of the TM the application – 180 BGN (95 EUR) up to 3 classes, plus 40 BGN (22 EUR) per class if the application contains more than 3 classes, and fees for the registration of the mark at the registration stage- BGN 390 (200 EUR), which in practice occurred about 5-7 months after the application was filed, provided the procedure was completed without formal irregularities or oppositions submitted by third parties.
The new provision of the Law on BG Marks, concerning the applicable fees, is laid down in Article 4, which states:
“Art. 4. (1) The Patent Office shall collect fees for filing and examination, issuance of a registration certificate, priority, opposition,….etc.. ”
With the new provision of the law, the fees applicable at the second stage, namely the registration trademark fees, are waived, which in turn is most likely to be due upon the application stage, i.e. all registration fees for a mark in Bulgaria will be paid upon submission of the application irrespective of its further fate. With this reform, the trademark system in Bulgaria approximates the practice of the system governing the registration of the European Union trademark, administered by EUIPO, as well as the TM practice of some European countries such as Germany, Denmark, the United Kingdom, Spain and many others.
Since within 6 months from the entry into force of the new Bulgarian trademark law , the Council of Ministers should adopt the implementing regulations, concerning the filing and examination of Bulgarian Trademark Applications. As it currently stands the previous implementing regulations are still applicable at the time of the adoption of the new law. Hence, the procedure for payment of application and registration fees for the registration of brand in Bulgaria is still in 2 stages, as described above.
Following the entry into force of the new impleteing regulations, trademark applicants should be more careful in their choice of signs and decisions for applying for a trade mark (brand), given the significant increase in the filing fee and the fact that the fees paid will not be refunded if the TM application is subsequently refused or rejected. In the current practice, many applicants used to file ‘test’ trade mark applications, on account of the negligible amount of the application fee, which practice is likely to be diminished with the entry into force of the new reform. Moreover, given the additional stricter registrable requirements in the new law, the chances of refusal to register a brand are increased. For these reasons, I highly recommend, as a mandatory step prior to filing a TM application, to consult a qualified Bulgarian Trademark Attorney.
II. WHAT CAN BE REGISTERED OR PROTECTED AS A TRADE MARK (BRAND) IN BULGARIA?
The purpose and main function of the trademark is to identify the source of the goods and services and distinguish them from another undertaking so as to allow consumers to choose products which meet expectations of a certain quality or standard. The trademark law is aimed at protecting the consumers from being misled, as well as it is aimed at enforcing the exclusive rights which a registered trademark confers.
According to the previous provision of the Bulgarian trademark law, the definition of a trademark consisted of two basic commutative requirements, namely that the mark in question must be capable of distinguishing the goods or services of one undertaking from those of other undertakinds and is represented graphically.
The legal reform took into account the technical advancements, rewording the article and eliminating the requirement of the graphical representation. This change also fulfils the requirement of harmonisation of the trademark law within the European Union under the Directive (EU) 2015/2436. Hence, as of 13.12.2019 and pursuant to Art. 9(1) of the Bulgarian Trademark Law, the trademark may consist of any sign capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
This change provides the trademark applicants in Bulgaria with additional opportunities to protect a wider range and type of marks and brands, in addition to those that can only be represented graphically. The users of the trademark system can now submit and register non-standard brands, such as:
A positional trademark represents the specific way in which the mark is placed or affixed on the goods. This type of mark (brand) is represented by a reproduction which appropriately identifies the position of the mark and its size or proportion with respect to the relevant goods. The elements which do not form part of the subject matter of the registration shall be visually disclaimed preferably by broken or dotted lines.
A trademark (brand) consisting exclusively of a set of elements that are repeated regularly is called a brand/trademark with a motif (patterns) and is capable of being protected as a registered trademark. In this case, the mark is represented by a reproduction showing the pattern of repetition. The representation may be accompanied by a description detailing how its elements are repeated regularly.
A mark consisting of one color or a combination of colors may be protected as a registered trademark. Where the trade mark consists exclusively of a single colour without contours, the mark shall be represented by submitting a reproduction of the colour and an indication of that colour by reference to a generally recognised colour code. Where the trade mark consists exclusively of a combination of colours without contours, the mark shall be represented by submitting a reproduction that shows the systematic arrangement of the colour combination in a uniform and predetermined manner and an indication of those colours by reference to a generally recognised colour code.
A mark (brand) consisting exclusively of a sound or combination of sounds is called sound mark. In order to registered such type of mark, it is necessary the sound to be represented by submitting an audio file reproducing the sound or by an accurate representation of the sound in musical notation.
A trade mark consisting of, or extending to, a movement or a change in the position of the elements of the mark is called a motion mark. Such types of marks shall be represented by a video file or by a series of sequential still images showing the movement or change of position.
This type of marks consists of, or extends to, the combination of image and sound (multimedia mark). This type of brand shall be represented by an audiovisual file containing the combination of the image and the sound.
A hologram brand (mark) consists of elements with holographic characteristics. Such type of marks shall be represented by a video file or a graphic or photographic reproduction containing the views which are necessary to sufficiently identify the holographic effect in its entirety.
OTHER TYPES OF TRADEMARKS
In this category of trade marks are any marks that are not covered by the categories as listed above. However, they must also comply with the requirements for representation that is, be clear, precise, self-contained, easily accessible, intelligible, durable and objective so as to so as to allow the competent authorities and the public to clearly and precisely identify the object of the protection conferred on the proprietor of the mark.
Examples of such type of marks, can be:
- Tracer marks – these are marks that are coloured lines or threads applied to certain products popular in textile industry, or coloured lines on wires or cables.
- Smell /olfactory or taste trade marks – these types of mark are currently not acceptable as the current state of technology does not allow them to be represented in the registry in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner. Samples or specimens as suitable representationare currently not acceptable neither because they may decay over time.
- Tactile marks – these are brands that seek protection for the tactile effect of a particular material or texture, such as the Braille alphabet or specific surface of an object or product. From the current state of technology, it is not possible to judge objectively and with certainty from the image the claimed tactile feeling. Samples or specimens are also not accepted. As a result, applications for this type of trademark are not currently acceptable and will be rejected.
III. WHAT ARE THE NEW BASIC REQUIREMENTS FOR REGISTRATION OF A TRADE MARK (BRAND) IN BULGARIA AND WHAT CONDITIONS SHOULD THE TRADEMARK FULFILL?
The basic requirements for the registration of a trade mark or those to which the mark must comply are defined in the law in a negative form, and in particular what cannot be registered as a trade mark or brand. These requirements are defined by law as absolute grounds for refusal and are regulated by Art. 11 of the Trade Marks Law.
Changes to the new law were introduced only for some grounds for refusal, namely:
Art. 11 (5) A sign shall not be registered as a trademark if it consists exclusively of:
(a) the shape, or another characteristic, of the good which results from the nature of the good itself;
(b) the shape, or another characteristic, of the good which is necessary to obtain a technical result;
(c) the shape, or another characteristic, of the good which gives substantial value to the the goods;
According to previous practice and the perception that the average (ordinary) consumer is not in the habit of making assumptions about the origin of products based on their shape / color / packaging, it is therefore more difficult to establish distinctiveness in relation to 3-D marks. With the addition of “or another characteristic” in the law, the threshold for rejecting this type of 3D brand as being distinctive is already extremely high. Therefore, three-dimensional marks must be more distinctive in order to pass the test of this provision.
The news is not good for applicants for agricultural products and foodstuffs, wines, spirits, as under the new provisions of the law, the following further requirements are prescribed:
Art. 11: The following shall not be registered as a trademark:
- a trade mark which registration is in breach of the Bulgarian legislation, the legislation of the European Union or international agreements to which the Republic of Bulgaria or the European Union is a party providing legal protection of geographical indications;
- a trade mark which registration is in breach of the European Union law or international agreements to which the European Union is a party providing legal protection for traditional specialities guaranteed;
- a trade mark which registration is in breach of the European Union law or international agreements to which the European Union is a party providing for the legal protection of traditional terms for wine;
- a trade mark which consists of or reproduces in its essential elements the name of an earlier plant variety, registered in accordance with national legislation, European Union legislation or international agreements to which the Republic of Bulgaria and the European Union are parties to the protection of plant varieties where the mark and the plant variety refer to identical or closely related species.
In practice, under these new provisions, trademark applicantion seeking protection of brands for for foodstuff, wines, spirits, agricultural products, plants, etc. will have to do a very detailed preliminary search for confict with previously filed or registered geographical indications, traditionally specialties guaranteed, traditional names for wines and plant varieties not only at national, but also at European level, which is an exorbitant task for the users of the trademark system. In practice, there will have to be a research in the registers of the European Union maintaining these registrations of names and the sign should not contain such a registered name. Otherwise, the mark will be refused at the stage of absolute grounds for refusal ex officio by the Patent Office of the Republic of Bulgaria and the paid filing fee shall not be refunded.
In view of the stricter requirements for the registration of the mark in Bulgaria, I recommend conducting a prior consultation with qualified Bulgarian industrial property representative with experience in the field of trademarks.
IV. RIGHTS OF THE TRADE MARKER OWNERS AGAINST VIOLATORS OF THE REGISTERED TRADEMARK, SANCTIONS AND FINES
The news is extremely favorable for the proprietors of a registered trademark (brand) in Bulgaria and accordingly the news is not good for infringers of these rights.
A favorable opportunity for the protection of the proprietor of a registered trade mark is provided in Art. 10 (5), according to which:
The applicant for a trade mark shall be entitled to receive equitable remuneration from any person who, without his or her permission, uses a similar or identical sign after the publication of the application for registration of the trade mark, provided that such actions would be prohibited after the publication of the registration.
Use of a trademark in the course of trade means any of the following:
- affixing the mark to the goods or their packaging;
- offering the goods with this mark for sale or placing them on the market, storing or holding them for these purposes, as well as offering or providing services with this mark;
- the import or export of the goods with this mark;
- the use of the sign as a trade or business name or as part of a trade or business name;
- the use of the sign in commercial papers and in advertisements;
- the use of the sign in comparative advertising in a manner which is in violation of Art. 34 of the Competition Act.
This provision is analogous to “provisional protection” for patent for an invention. In practice, trademark rights will be enforceable even at the application stage from the date of publication of the application, ie. before the date of registration. Of course, these rights can only be claimed after the registration has been obtained, but it is still an additional opportunity to prevent earlier infringements that occurred prior to the registration of the mark.
As I mentioned above, the news of trademark infringers is not good, given the fact that sanctions and fines in administrative infringement proceedings are dramatically overstated. The circle of offenders has been further expanded. More particularly:
Art. 127. (1) A person who uses in the course of trade within the meaning of Art. 13, para. 1 and 2 (the use asdescribed above) goods or services marked with a sign identical or similar to a registered mark, without the consent of its proprietor, are punished with a fine of 2000 to 10 000 BGN (approximately 1000 EUR to 5000 EUR), and sole traders and legal entities – with a property sanction in the amount of 3000 to 20 000 BGN(approximately 1500 EUR to 10 000 EUR).
(2) The penalties under para. 1 shall also be imposed on a person who, without the consent of the proprietor of the registered trade mark:
- affixes a sign identical or similar to the mark on the packaging, labels, markings, elements or devices of security or authenticity, or on any other means and materials;
- offers for sale, places on the market, stores or holds for these purposes, imports, exports packaging, labels, markings, security or authentication elements or devices, or on any other means and materials on which the mark is affixed for the purpose to use these packages, labels, markings, elements or devices for protection or authenticity, or any other means and materials for goods or services in the commercial activity within the meaning of Art. 13, para. 1 and 2.
(3) The penalties under para. 1 shall also be imposed on a person who:
- bring into the territory of the Republic of Bulgaria goods under Art. 13, para. 3 without the consent of the proprietor of the registered trade mark;
- uses a designation that does not differ materially from the registered geographical indication;
- uses a geographical indication registered under this law, without being registered as its user.
(4) In case of repeated and any subsequent infringement under para. 1 – 5, committed within one year of the entry into force of the preceding criminal decree, the person shall be fined from 3000 to 15 000 BGN(approximately 1500 EUR to 7500 EUR), and the sole traders and legal persons shall be fined from 5000 to 30 000 BGN (approximately 2500 EUR to 15 000 EUR).
(5) The subject matter of the infringement under para. 1 to 4, irrespective of its proprietorship, shall be forfeited to the benefit of the State and shall be submitted for destruction to the Ministry of the Interior, and the mark proprietor or a person authorized by him may attend the destruction process.
(6) When the sign under para. 1 is used to offer or provide services, the infringer is instructed to remove it.
(7) In the case of systemic infringements, the place where they are committed shall be sealed for a period of three to 6 months.
(8) The preceding paragraphs shall also apply to goods which transit through the territory of the Republic of Bulgaria.
Given the much faster administrative infringement procedure before BPO compared to the judicial one before the Court, infringers of rights of registered trademarks in Bulgaria must be extremely cautious given the serious sanctions already applied by the new law. On the other hand, these opportunities should stimulate businesses, traders and service providers to protect their trademarks by registering them with the Patent Office of the Republic of Bulgaria and then to exercise the acquired rights administratively or judicially.
V. OTHER AMENDMENTS TO THE NEW TRADEMARK LAW
There are further changes in the articles concerning the procedure for opposition against trademark application, proving the use of a trademark, possibilities for protection in infringement proceedings, but given the purpose of this article, I will not elaborate on them, as being very specific in nature.
The views expressed are strictly personal. Furthermore, the author Konstantin Tahtadjiev, cannot be held responsible for the advice given or the opinions expressed in present article.