World Intellectual Property Review e-Digest 2012

BULGARIA

STAND UP AND BE COUNTED: FIGHTING SIMILAR TRADEMARKS

Iliana Muhibian J.Varbanov and Partners

As a step towards harmonising Bulgarian intellectual property legislation with EU legislation, the Bulgarian Trademark Law (BTL) was substantially amended. One of the biggest changes was the introduction of proper trademark opposition proceedings in Bulgaria, as it was one of a handful of European countries that did not provide an adequate means of challenging new trademark applications.

Background

Before the BTL was changed to allow proper trademark opposition proceedings, it did off er a watered-down version. T e Bulgarian Patent Offi ce (BPO) previously carried out ex offi cio examinations on absolute and relative grounds. Trademark applications would be registered only if they successfully passed a substantial examination on relative grounds. T e law said that objections to new trademark applications could be fi led if they were based on absolute and relative grounds. However, the law also said that an opponent could not be a part of the opposition proceeding and an objection would not be sent to the trademark applicant.

Furthermore, an objection would only be considered by an examiner during an ex officio examination of an opposed mark. It would be left to the examiner’s discretion whether to take an opposition into account during examination, or not. No separate decision on the objection would be taken and there would be no opportunity for the opponent to appeal an examiner’s decision.

Better late than never

T e BTL was substantially amended on March 10, 2011. As a result of these amendments, the BPO does not carry out ex offi cio examinations on relative grounds. T e BPO now carries out examination on absolute grounds only.

Once a trademark application meets the formal requirements and successfully passes the examination on absolute grounds, it is published in the Official Bulletin of the BPO.

68 World Intellectual Property Review e-Digest 2012

After the publication of a trademark application, anyone can file an objection against its registration, based on absolute grounds.

At the same time, any owner of a prior trademark can file an opposition against the registration of an identical or similar trademark application that is filed for identical or similar goods and/or services.

This new opposition procedure is applied to all pending trademark applications, but not those that were published before March 10, 2011.

According to the amended law, an opposition against a trademark application can be filed by:

• The owner of a prior trademark; • The licensee of an exclusive licence;

• The owner of a trademark when its mark has been applied for by its agent or representative without its permission; and

• The genuine owner of an unregistered mark that is used in Bulgaria.

What should be noted here is that, an opposition in Bulgaria can be filed on the basis of prior trademark rights and on the basis of prior trademark use in Bulgaria.

However, this remains a possibility only, because it is not clear how the BPO will approach prior trademark use in Bulgaria.

In fact the BTL, despite being amended, does not explicitly outline the possibility of acquiring trademark rights by use. Moreover, neither the BPO nor the courts has any experience in protecting so-called ‘unregistered trademarks’. It is unclear how this will be approached. Patent attorneys and trademark owners are waiting to see what will be the BPO’s practice.

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