Trademarks

A Trademark is a sign that identifies and distinguishes (individualizes) in the marketplace the products of one enterprise from those of competitors enterprises. The products that it identifies may be goods or services.

Generally, speaking the main function of a trademark is to identify the commercial origin of a product and/or service. Additionally, it conveys a message about the quality of the goods and/or services of the enterprise, thus facilitating consumer’s choice. Finally, a trademark is usually used for advertisement purposes and also function as an investment instrument because trademarks can be assigned and licensed.

It follows from the purpose and function of the trademark that virtually any sign capable of distinguishing (individualizing) the goods and/or services of one company from other company can be used as a trademark. By way of illustration a trademark could be words, names, letters, numerals, drawings, pictures, shapes, colors, labels, or any combination of these. In most countries, taglines, advertising slogans and titles may also constitute trademarks. The registration of non-traditional trademarks such as single colors, three-dimensional signs (shapes of products or packaging), moving images, holograms, sounds, smells, gestures, tactile marks (feeling or touch) and fluid/mutating trademarks is also possible in significant number of countries.

Other types of human’s intellectual creativity, like the technological aspects of an invention and/or aesthetic features of a product may be acquired through Patents, Utility model registration and/or Industrial design registration respectively.

Generally speaking, two different kinds of requirement are to be distinguished.

The first kind of requirement relates to the basic function of a trademark, namely, its function to distinguish the products or services of one enterprise from the products or services of other enterprises. From that function it follows that a trademark must be distinguishable among different products.

The second kind of requirement relates to the possible harmful effects of a trademark if it has a misleading character or if it violates public order or morality.

Requirement of Distinctiveness

A trademark, in order to function, must be distinctive. A sign that is not distinctive cannot help the consumer to identify the goods of his choice and therefore lack distinctiveness and should be refused. For instance, the word “orange” cannot be registered for oranges, but it is highly distinctive for mobile services. By way of illustration the generic terms, descriptive signs, other signs lacking distinctiveness, foreign scripts and transliterations lack distinctiveness.

Exclusions from registration on account of the public interest

Deceptiveness

Trademarks that are likely to deceive the public as to the nature, quality or any other characteristics of the goods or their geographical origin do not, in the interest of the public, qualify for registration.

Signs possessing Partial Deceptiveness, Signs Contrary to Morality or Public Policy, signs reference to Geographical Origins, Signs Reserved for Use by the State, Public Institutions or International Organizations are also excluded from registration on account of the public interest.

Registration of a trademark is always performed with respect to one or more classes of specific goods and/or services which should correspond to those goods and/or services commercialised by its owner. The classes for goods and services are governed byt the Nice Classification.

Consequently, the trademark owner has the exclusive right to use the trademark in relation to the goods and/or services for which registration has been achieved, which practically encompasses two rights: a positive right, namely the right to use thetrademark and a negative right, namely the right to exclude others from using it.

The positive rights to use the trademark means that the trademark owner has the right to affix the sign to the goods or to the packaging thereof, i.e. containers, packaging, labels or to use it in any other way in relation to the goods/services for which it is registered, i.e. offering the goods, placing them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder, importing or exporting the goods under that sign; using the sign on business papers and in advertising.

The negative exclusive rights arising out of a trademark registration allow the trademark owners to prevent all others from marketing identical or similar products/services under an identical or confusingly similar trademark in order to prevent consumers and the public in general from being misled. Hence, they are able to prohibit competitors from: (a) affixing the trademark to the goods or their packaging; (b) stocking or selling goods bearing the trademark or supplying services under the service mark; (c) importing or exporting goods under the trademark; and/or (d) using the trademark on business papers, websites and in advertising. Furthermore, since consumers are to be protected against confusion, protection generally extends to the use of similar trademarks for similar goods, if such use is likely to confuse the consumer.

However, such exclusive rights have limits. The rights are limited to:

• the country, countries or regions in which you have registered the trademark

• the goods/services for which the trademark is registered;

• situations in which consumers are likely be confused by the infringing Trademark

It is a common misconception that registering a business and its trade name at the business registry also automatically protects those business and trade names as a trademark. This is not true and it is of paramount importance for the users to understand the difference between a company name, trade name and trademark.

The company/business/trade name is simply the name of a company or business that is recorded in the company/commercial registers. It is used in bylaws, contracts, taxes and other administrative activities to identify your business.

On the contrary, a trademark is a sign that is used to identify the origin of the products and/or services of one company and distinguish them from those of competitors.

Company/trade names can be trademarks and vice versa, but they are not interchangeable.

Trademarks are territorial rights, which means that a sign is only protected in the countries or regions where trademark registration has been obtained. In other words, if you have not succeeded in registering your sign as trademark in a given country, your sign will not be protected in that country, enabling anybody else to use it in that particular country.

The validity of trademark registration is 10 years from the filing date of the trademark application. Registration may be renewed indefinitely for consecutive periods of 10 years provided trademark renewals are conducted by paying the trademark renewal fees periodically.

Depending on your business needs, target markets, strategies, financial capabilities and commercial expectations, a protection of trademark can be acquired through 3 main ways:

• The national route – by filing a national application for trademark (TM) registration for the territory of one particular country, or as many countries as necessary, with the national trademark office of each country of interest. For instance, in Bulgaria by filing application for a Bulgarian Trademark Registration with the Bulgarian Patent Office (BPO). Additionally the TM applications must be in the prescribed language and the respective trademark application and registration fees under the national law must also be paid. This path may be very cumbersome and expensive if the number of countries is large.

• The regional route (EUTM) –  when a number of countries are members of a regional trademark system,  you may apply for a trademark registration with effect in the territories of all member countries by filing an application at the relevant regional office. Such regional office is the European Union Intellectual Property Office (EUIPO) where applicant can acquire protection in all countries of the European Union (EU) by filing a single application for European Union Trademark Registration (EUTM).  

• The international route (Madrid System) – provides an opportunity for protecting  signs through a centralised application for International Trademark Registration (IR registration) in multiple countries around the globe that are members of the Madrid Union (Madrid Agreement and the Madrid Protocol), the so called Madrid System. The procedure is governed by the World Intellectual Property Organization (WIPO).