A new Trademark and geographical indications Act was published in issue 98 of Bulgarian official gazette, which overrules the previous act. The changes are made due to implementation of Directive (EU) 2015/2436 of the European parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks.
Who is affected?
The new Act applies to all Bulgarian physical persons and legal entities, as well as to foreign ones from jurisdictions that have bilateral agreements with Bulgaria.
The new Act applies to applications for registration of trademarks and geographical indications made after its entry into force, as well as to pending ones regarding which there is no final decision yet.
1. New legal definition of the term “trademark”.
According to the new Act, a trademark is a sign distinguishing the goods or services of one person from those of other persons while being represented on the national 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 This means that the requirement for graphical representation of the trademark is no longer in force. Hence, this opens up the possibility to register new kinds of trademarks, such as multimedia, sound, taste, scent and hologram trademarks, marks that involve motion and others.
2. State fees
There’s a change in the methods of payment of state fees. The two-phase model according to which payments are made at any stage of the process of registration, is replaced by a single payment due at the beginning of the procedure.
3. National trademark register. Files and right to access
The categories of information stored in the national trademark register are broadened. From now on the register will hold information regarding transfers, license agreements, insolvencies, oppositions, invalidity and other procedures.
The persons that will have access to the file of each trademark will be the trademark applicant or holder, IP representative, in-house legal counsel of the applicant or holder, as well as an attorney with written authorization. Any other person with notarized authorization can be granted access as well.
4. Absolute and relative grounds for refusal
4.1. Pursuant to the new Act, a sign shall not be registered or, if registered, shall be liable to be declared invalid if it consists exclusively of:
• the shape, or another characteristic, which results from the nature of the goods themselves;
• the shape, or another characteristic, of goods which is necessary to obtain a technical result;
• the shape, or another characteristic, which gives substantial value to the goods.
Also, trade marks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Union legislation or the national law, or international agreements, shall not be registered as well.
4.2. Relative grounds for refusal are related to the rights to an earlier trademark and require making an opposition.
The scope of protection for well-known trademarks is broadened, since it applies not only to goods and services which are not identical to the earlier well-known trade mark, but to identical or similar goods and services as well.
Furthermore, a trade mark is not to be registered or, if registered, is liable to be declared invalid where, and to the extent that rights to a non-registered trade mark or to another sign used in the course of trade were acquired prior to the date of application for registration of the subsequent trade mark, or the date of the priority claimed for the application for registration of the subsequent trade mark, and that non-registered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Also, a trade mark shall not be registered or declared invalid where the application for registration of the trade mark was made in bad faith by the applicant, which must be established by a valid court decision. An opposition can be made by the person authorised under the relevant law to exercise the rights arising from an earlier registered geographical indication.
An opposition can be made by a trader when the application consists of or contains their trade name.
In case you need professional consultation or assistance with the registration of a trademark or in opposition, invalidity or other proceedings – do not hesitate to contact us – your online business consultant!
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