Since 2011 the trademark registration system in Bulgaria has changed through the implementation of the procedure for opposition. The amendments to the Law on Marks and Geographical Indications came into force from 10.03.2011. The Ordinance for the implementation of the law regarding the procedure for opposition was adopted two months later on 30.05.2011.
The present article aims to answer the frequently asked questions of applicants /proprietors of trade marks in Bulgaria when there is an opposition filed against their application or to decide whether they should submit opposition against a conflict application.
First of all we should point out that in the absence of an opposition filed and proper behavior by the proprietor of the earlier trade mark in order to protect his rights, any third party can register even identical to his mark. I.e. if you own a trademark and you want it to remain your real distinguishing sign you should have active attitude in respect to the filing of oppositions. On the other hand if there is an opposition against an application filed, the absence of any objection would lead to its refusal, although your opponent may have no sufficient reason for this.
1. Who may file an opposition against a mark in Bulgaria?
According to Article 38b from the Bulgarian Law on Marks and Geographical Indications, the persons, who may file an opposition are:
– the holders of an earlier mark;
– the exclusive licensee of an earlier mark;
– the actual owner of a non-registered mark, used in commercial activity on the territory of the Republic of Bulgaria and applied for registration;
– the holder of a mark, applied for by an agent or representative of the holder without the consent of the latter.
2. What is the deadline for filing an opposition against a mark in Bulgaria?
The Law on Marks defines the deadlines for filing of the oppositions in Article 38 b, paragraph 2 and paragraph 3.
The opposition against published application for registration of a national mark, submitted to the Patent Office directly, shall be filed within three months from the publication of the applied mark in the official bulletin of the Patent Office.
The opposition against published application for international registration (though WIPO), designating Bulgaria, shall be filed between the 6th and the 9th month after the publication of the international registration in the official bulletin of the Patent Office.
3.What is the fee for opposition against a mark in Bulgaria?
The fee for filing an opposition is 400 BGN according to the Tariff of fees collected by the Patent Office of the Republic of Bulgaria.
It is explicitly stated that the opposition is deemed to have been filed in case of payment of the fee within the deadline for filing of the opposition.
4. What are the grounds for filing an opposition against a mark in Bulgaria?
The grounds for filing an opposition are defined in Article 12 from the Bulgarian Law on Marks and Geographical Indications under the title “Relative Grounds for Refusal of Registration”, namely:
– In case of opposition filed shall not be registered a mark:
1. which is identical with an earlier mark when the commodities or the services of the declared one and of the earlier mark are identical;
2. when, due to its identity or similarity with an earlier mark and the identity or the similarity of the commodities or the services of the two marks there is a probability for confusion of the users including the opportunity for connection with the earlier mark;
– A mark identical with or similar to an earlier mark and designated for commodities or services which are not identical with or similar to these for which the earlier mark has been registered when the earlier mark is well-known on the territory of the Republic of Bulgaria and the use of the declared mark would lead to unfair benefits from the distinctive character or the popularity of the earlier mark or will degrade them, shall not be registered.
– In case of opposition filed by the actual holder of a mark, no mark shall be registered, if filed by the agent or the representative of the actual holder without the consent of the latter.
– In case of opposition filed by the actual holder of a non-registered mark used in the commercial activity on the territory of the Republic of Bulgaria, no mark shall be registered which filing date is later than the date of the actual commercial use of the non-registered mark.
4.1. When it is assumed that there is an earlier similar and/or identical mark for similar and/or identical goods/services?
First ground for opposition is Article 12, paragraph 1 from the Bulgarian Law on Marks and Geographical Indications, which is related to the existence of an earlier mark.
An earlier mark in the sense of the Law on Marks and Geographical Indications is:
1. a mark with earlier filing date of the application or earlier priority, registered under this Law;
2. an applied mark with earlier filing date or earlier priority, in case being registered under this Law;
3. a mark registered under the Madrid Agreement or the Protocol with earlier date of registration or earlier priority and acknowledged effect on the territory of the Republic of Bulgaria;
4. a mark registered under the Madrid Agreement or the Protocol with earlier date of registration or earlier priority in case its effect being acknowledged on the territory of the Republic of Bulgaria;
5. a Community mark with earlier filing date of the application or earlier priority, or earlier seniority for the territory of the Republic of Bulgaria, acknowledged under the order of Regulation (EC) No 207/2009 of the Council of 26 February 2009 regarding the Community trademark (OJ, L 78/1 of 24 March 2009);
6. an applied Community mark with earlier filing date of the application or earlier priority, or earlier seniority for the territory of the Republic of Bulgaria, acknowledged under Regulation (EC) No 207/2009, in case it being registered under this Regulation;
7. a mark which is widely known on the territory of the Republic of Bulgaria by the date of submitting an application for a mark, respectively by the date of priority.
There are four possible hypotheses:
– the declared mark is identical with the earlier mark and is for identical goods/services (Article 12, paragraph 1, item 1)
– the declared mark is similar to an earlier mark and is for identical goods/services (Article 12, paragraph 1, item 2);
– the declared mark is similar to an earlier mark and is for similar goods/services (Article 12, paragraph 1, item 2);
– the declared mark is identical with the earlier mark and is for similar goods/services (Article 12, paragraph 1, item 2 from the Law on Marks and Geographical Indications).
4.2. When it is assumed that there is a mark with a reputation?
In Article 12 from the Bulgarian Law on Marks and Geographical Indications explicitly provides, that the earlier mark should be a Mark “with a Reputation”. Marks which have well-known reputation are determined as “marks with reputation” or “well-known marks”, and Article 50a from the Bulgarian Law on Marks and Geographical Indications defines the criteria that should be considered when determining the mark as “mark with reputation”, which are:
1. degree of knowledge or recognition of the mark in the relevant sector of the public which includes the actual or potential consumers of the goods or the service, the persons involved in the distribution network and the business circles dealing with the given type of goods or services;
2. duration, extent and geographical area of use of the mark;
3. duration, extent and geographical area of public promotion of the mark, including advertising, publicity or presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
4. data of successful enforcement of rights in the mark if it is registered;
5. value of the mark;
6. other circumstances.
Criteria are further developed in the Regulation on the procedure and the method for determining trademark as well-known and mark with a reputation within the Republic of Bulgaria – Article 10 and the Ordinance on oppositions – Article 17, paragraph 3.
4.3. When it is assumed that there is an application filed by an agent or representative?
When considering the evidence for application of the mark by an agent or representative of the actual owner of the mark, the Opposition department verifies if:
- the application was filed by an agent or representative of the actual proprietor of the mark;
- the application was filed without the consent of the actual proprietor of the mark;
- there is no legal basis for filing the application on behalf of the agent or the representative;
- the mark is identical or similar to the mark of the actual owner.
4.4. When it is assumed that there is an earlier unregistered mark?
When considering the evidence for the use of a non-registered mark in the commercial activity on the territory of the Republic of Bulgaria, the composition of the department:
- takes into account the location, duration, volume and nature of use of the non-registered mark in connection with goods and /or services on which the opposition is founded;
- ascertains whether the date of actual commercial use on the territory of the Republic of Bulgaria of the non-registered mark is earlier than the date of filing, respectively the date of the international registration, the date of territorial expansion, the date of priority or seniority claim;
- checks whether there is an application filed for registration of the non-registered mark.
5. What is the procedure for opposition against a mark?
After filing each opposition shall be checked for its formal validity.
When the composition of the opposition department concludes that the opposition is formally valid, a copy of the opposition shall be sent to the applicant of the mark being opposed. Both parties are provided a three-month time limit to reach an agreement. This time limit may be extended twice at request in writing signed by the parties.
When no agreement has been submitted, the applicant of the opposed mark shall be provided a two-month time limit to respond to the opposition. This time limit may be extended once.
The objection of the applicant shall be sent to his opponent and the latter shall be provided one month to state his opinion.
After finishing the exchange of correspondence and opinions, the composition of the opposition department shall deliver a decision.
6. How and where to appeal the decision on the opposition?
The decision of the Opposition department shall be possible to be appealed in three months term after the notification before the Disputes department.
The decision of the Disputes department shall be possible to be appealed before the Administrative court – Sofia city in three months term.
The decision of the Administrative court – Sofia city shall be possible to be appealed before The Supreme Administrative Court in fourteen days term.
Author: Aglika Ivanova, Attorney- at-law
For additional information, contact: office@ipconsulting.eu
