Absolute grounds for refusal of registration of a trademark are laid down in Art. 11, par.1 of the Law on Marks and Geographical Indications (LMGI).
It is characteristic of the absolute grounds for refusal of registration that they affect the ability of the sign applied for to be a trademark at all. They are either related to objective features of the applied for sign, which are an obstacle to its registration, or are aimed at protecting the public interest.
Below the different grounds for refusal, claimed by applicant, will be considered separately for sake of clarity.
- A sign, which is not a trademark in the meaning of Art. 9, Para. 1
- a mark, which is not distinctive;
- a mark, consisting exclusively of signs or indications, which have become customary in the spoken language or in established commercial practice in the Republic of Bulgaria in respect of the goods or services claimed;
- a mark consisting exclusively of signs or indications, indicating the type, quality, quantity, purpose, value, geographical origin, time or method of production of the goods, the manner, in which the services are provided or other characteristics of the goods or services;
- a sign, consisting exclusively of: a) the shape of the goods or any other characteristic, that arises from the nature of the goods itself; b) the shape of the goods or any other characteristic, necessary to achieve a technical result; c) the shape of the goods or other characteristic, that gives significant value to the goods.
- a mark, that is contrary to the public policy or to good morals;
- a mark, which may mislead consumers as to the nature, quality, geographical origin or other characteristics of the goods and services;
- a mark, consisting of, or incorporating the emblems, flags or other symbols, and imitations thereof, of a Member State of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as amended and supplemented pursuant to the Decision of the Council of Ministers on the accession of the People’s Republic of Bulgaria to the Lisbon Edition of the Convention (ratified by Decree No. 663 of the Presidium of the National Assembly – SG 75/65), hereinafter referred to as “the Paris Conventional”, as well as the emblems, flags or other symbols, abbreviations to names of International Intergovernmental organizations, declared under Art.6 of the Paris Convention;
- a mark, which consists of or includes signs, emblems to heraldry, other than those declared under Art. 6, from the Paris Convention, and of particular public interest;
- a mark, consisting of, or incorporating, official marks and the control mark and guarantee, where they are intended to mean identical to similar goods;
- a mark, consisting of to incorporating a name or image of a cultural property or parts of a cultural property, defined in accordance with the Cultural Heritage Act;
- a mark, whose registration is in breach of Bulgarian law, EU law or international agreements, to which Republic of Bulgaria or EU is a party, providing legal protection of geographical indications;
- a mark, whose registration is in breach of EU law or international agreements, to which EU is a party, providing legal protection of traditional wine names;
- a mark, which consist of, to reproduces in its essential elements the name of an earlier plant variety, registered under national legislation, EU law or international instruments, to which the Republic of Bulgaria and the EU are parties, providing legal protection to the plant variety rights, where the mark and the plant variety refer to identical or closely related species.
If any of the grounds are present, the registration of the mark should be refused, and the refusal can be complete or partial.
THE CASE
The Patents Office of Republic of Bulgaria admittance registration of a trademark with registration No №94404 – SHEEP’S CHEESE KASHKAVAL BULGARIAN KASHKAVAL MADE IN BULGARIA, combined.
A request for revocation has been made through the team of IPConsulting for all goods and services.
The administrative authority with decision №112/30.05.2018 reject the request as a whole and on all grounds relied on.
The applicant Димитър Маджаров – 2 ЕООД is dissatisfied with the decision and appealed against it before Administrative Court – Sofia City and asks the court for full revocation.
Court’s conclusions:
MISLEADING GOODS AND SERVICES
The trademark is registrated for the following types of goods in Class 29 – meat, fish, poultry, game, local extracts, canned, frozen, dried, cooked and roasted fruit and vegetables; jellies confiture and compotes; eggs.
Considering the meaning of dairy food products – sheep’s cheese and cottage cheese, familiar to the Bulgarian consumer, the designations SHEEP’S CHEESE KASHKAVAL BULGARIAN KASHKAVAL” could be seen as an indication of what kind of product is being sold rather than whose production it is. It is common knowledge that the products described do not contain dairy ingredients, sheep’s cheese, milk or cheese.
In this sense the designations SHEEP’S CHEESE KASHKAVAL, included in the process mark, affixed to a product of the said class of goods, provide false information concerning the nature and qualities of the latter.
DEGREE OF ATTENTION OF AVERAGE USERS
The assessment of the existence of a ground under Art. 1(7) of the CMLD (repealed) must be made taking into account the possibility of misleading the average consumer who, although informed and careful in his choice, might take a given product to be another, since the product is not among those to which, according to the practice of the EUIPO (formerly OHIM), the consumer approaches with a higher degree of care.
In making his choice, the user relies on the image imprinted in his memory and the overall impression.
According to the court, the trademark visibly indicates goods of the type of the cheese However, none of the registered goods is cheese or cheese curds, nor is it even a dairy product, and the Court therefore concludes that there is a serious risk of consumer confusion in this case, since the consumer may believe that the products contain lactoproteins, which is not the case.
CONCLUSION
Based on the stated considerations, the courts’s estimation at both instances is for the illegality of the conclusion of the administrative body.
