Transfer of a trademark

This article will describe the procedure for transfer of a trademark, which is regulated by the Law on Marks and Geographical Indications and the Instruction on Requests for the Registration of Changes in the Legal Status of Industrial Property Objects.

A mark may be transferred, independently of the transfer of the commercial undertaking, in respect of all or some of the goods or services for which it is registered. It is important to note that in the case of joint ownership, the trademark shall be transferred only with the written consent of all of the proprietors, unless otherwise agreed.

Who can submit a request for trademark transfer at the Patent Office of the Republic of Bulgaria?

The request for trademark transfer shall be filed at the Patent Office of the Republic of Bulgaria by the transferor or the new holder or by an authorized industrial property representative.

The request for trademark transfer shall be submitted at the Patent Office of the Republic of Bulgaria in one of the following ways: directly in the Patent Office; by post; by fax; electronically; by e-mail.

The request for trademark transfer shall contain the following information:

  • identification of the trademark (application and registration number);
  • identification of the holder of the trademark:
    1. the full name of the person if the holder is a natural person;
    2. name and type of legal entity if the holder is a legal entity. The names of the person representing the legal entity.
  • Identification of the new holder:
  1. the full name of the person if the holder is a natural person;
  2. name and type of legal entity if the holder is a legal entity. The names of the person representing the legal entity.
  • mailing address.
  • details of the industrial property representative, if authorized.
  • details of the requested transfer: how the transfer was made.
  • whether the transfer relates to all goods / services in the registration or only for part of the goods / services in the registration.

The following documents shall accompany the request for trademark transfer:

  • document certifying the transfer of the trademark;
  • documents certifying succession;
  • written consent of all of the proprietors in case of joint ownership;
  • power of attorney when the application is filed through an industrial property representative;
  • document for paid state fees.

The request shall be signed by the transferor or the new holder or by an authorized industrial property representative. Where the transferor or the new holder is a legal person, a placement of a stamp is required as well.

Examination of the request for trademark transfer

Within two days of receipt of the request, an expert at the Patent Office checks whether the trademark is identified, whether the state fees have been paid, and whether a power of attorney is attached when the request is filed through an industrial property representative. If state fees are not paid and/or the power of attorney is not attached, the person requesting the entry is notified and given a 3-day period to remedy the deficiencies. If the deficiencies are not remedied within the provided period, the proceedings shall be terminated.

If no deficiencies have been identified or the deficiencies have been remedied in the provided period, the request shall be submitted for examination to the Legal Department and shall be assigned to a legal adviser who, within 3 days of receipt of the request, verifies the status of the mark in the electronic database, аnd, if necessary, in the dossier of the trademark and assesses and reviews the documents submitted for the transfer of the trademark.

In the event that during the inspection deficiencies or inconsistencies in the submitted  request and the attached documents or inconsistency between the data in the electronic database/file of the trademark and the ones in the request are revealed, a notice is sent to the person requesting the entry where a 7-day period to remedy the deficiencies is provided. The proceedings shall be terminated if the deficiencies are not remedied within the provided 7-day period.

It is important to note that where it emerges from the transfer document that, owing to the transfer of the mark, users are liable to be confused as to the nature, quality or geographical origin of the goods or services, the transfer shall not be recorded, unless it is limited to those goods or services that are not likely to cause confusion.

When the request meets the requirements set out in the Law on Marks and Geographical Indications and the Instruction on Requests for the Registration of Changes in the Legal Status of Industrial Property Objects, a decision shall be taken to record the transfer. Where the request does not meet the requirements, a motivated  decision to refuse shall be issued.

Entry of the transfer into the State Register of trademarks and publication in the Official Bulletin of the Patent Office

Once the decision is signed, the request is immediately returned for recordal in the State Register of tradearks and the issuance of the certificate to the new holder within two days. The registration of the transfer of a registered trademark shall be published in the Official Bulletin of the Patent Office. The transfer shall have effect vis-à-vis third parties as from the date on which it is entered in the State Register.

The “trademark transfer” service includes the following steps:

– preparing of all necessary documents;

– filing the request for trademark transfer;

– payment of state fees;

– legal representation during the procedure before the Patent Office of Republic of Bulgaria;

– timely communication with the client on the course of the procedure;

–  obtaining of a certificate;

– handling of the certificate to the client.

 

If you would like to transfer your trademark you are therefore advised to contact a trademark attorney with experience for professional advice and preparation of all necessary documents. The Bulgarian IP Attorney Krasimira Kadieva will gladly assist you in the transfer of your trademark by providing professional advice and preparation of the necessary documents. In the event that you wish to take advantage of the service „transfer of a trademark”, please contact Krasimira Kadieva  at 00359 882 308 670 or make an inquiry using the contact form of this website.

Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide more information about the procedure for transfer of a trademark. It does not constitute a legal opinion and cannot be interpreted as an individual consultation on any concrete facts or circumstances. The advice of intellectual property specialist should be obtained for specific questions and situations. For more information on the above mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She offers comprehensive analysis and strategy for the effective protection of trademarks as objects of industrial property, both at the time of registration and in violation of the rights thereto. The IP lawyer in Bulgaria Krasimira Kadieva assists in transfer of trademarks by providing professional advice and preparation of all necessary documents.