This publication will describe the procedure for revocation (cancellation) of trademarks. The invalidation of trademark registration will be described in the next article.
Grounds for revocation of a trademark registration
Trademark registration may be revoked on the following grounds, namely:
- If within a period of five years following the registration, the proprietor has not put the trademark into genuine use on the territory of the Republic of Bulgaria in connection with the goods or services in respect of which it is registered, or if such use has been suspended for an uninterrupted period of five years unless there are legitimate reasons for non-use.
- If, as a result of the action or inaction of the proprietor, the trademark has become a common name for the product or service in respect of which it is registered;
- Where the use of the mark by the proprietor or by another person with his consent for the goods or services for which it is registered is in a manner which misleads consumers as to the nature, quality, geographical origin or other characteristics of the goods or services. Consumer misconception arises when a trademark contains in itself signs and/or indications that are misleading about the nature, quality, geographical origin or other characteristics of the goods/services.
It is important to note that the application for revocation can be filed for all goods and/or services as well for some of the goods or services for which the trademark is registered. In the event that the application relates to a part of the goods or services, the registration shall be revoked only for those goods or services.
The trademark shall not be revoked if the proprietor of the mark has commenced or resumed its use in the period between the expiry of the five-year term and the filing date of the revocation application. The commencement or resumption of use within a period of three months prior to the submission of the request for revocation shall not be taken into account if the preparation for such use or resumption has been completed after the holder has learned that such request may be made.
Who has the right to file an application for the revocation of a registration of a trademark?
Any person has the right to file an application for the revocation of the trademark registration. The application may also be filed by an authorized industrial property representative.
When an application for revocation of a trademark registration can be filed?
An application for revocation of a trademark registration may be filed throughout the whole term of the trademark registration.
How an application for revocation of a trademark can be filed?
The application for revocation of trademark registration shall be filed at the Patent Office of Republic of Bulgaria in one of the following ways, namely: directly at the Patent Office, by mail, fax or electronically through the electronic portal of the Patent Office.
What shall the application contain in order to be admissible?
The application for revocation of trademark registration shall contain:
- name, surname and family name of the individual, citizenship or country in which he/she has a permanent address, as well as correspondence, fax or electronic address (e-mail);
- in the event the applicant is a legal entity: name and type, company address and registered office, as well as correspondence, fax or e-mail address;
- registration number and name of the trademark;
- the goods or services in respect of which the request was made;
- a detailed statement of the legal grounds;
- justification of legal interest, if required;
- the request;
- a thorough presentation of all the evidence available.
The application shall be submitted in duplicate, accompanied by a document for paid state fees. A power of attorney should be provided when it is submitted by an industrial property representative.
Stages of the proceedings of revocation of the trademark registration
Upon receipt of a request for revocation of trademark registration, order for the appointment of a panel shall be issued within two days to examine it and within one week the chairman of the panel shall check the admissibility of the request. If deficiencies are identified, the applicant has 14 days to remedy them. If the request is inadmissible, as the deficiencies have not been remedied within the time limit allowed, a decision shall be taken the proceedings not to be opened. If the request is admissible, a formal regularity check of the request shall be carried out within seven days of the admissibility check. In the case of deficiencies, the applicant shall be given a one-month period for their removal. If the deficiencies are not remedied within the time limit, a decision for termination of the proceedings shall be taken. Within seven days after the formal regularity of the request has been established, one copy shall be sent to the proprietor of the trademark and shall be given a period of two months to object. The objection, if any, shall be sent to the requester, together with the evidence submitted, with the latter having a period of one month to deliver an opinion. If the applicant submits an opinion within one month, it shall be submitted to the proprietor of the trademark for a reply within one month of the communication, provided that it presents new facts, circumstances and/or evidence relevant to the dispute. Within three months after the completion of the collection of all the evidence and materials on the request, a decision shall be taken which revokes the registration of the mark in whole or in part or rejects the request in case it is unfounded. The parties shall be informed of the decision and shall be notified thereof within two days of its adoption and the decision shall be fulfilled within one month of its entry into force. Where, before the decision for revocation of the trademark is taken, the validity of the registration of the disputed trademark is terminated or the trademark proprietor surrenders the trademark right for part or all of the goods or services, the applicant shall be given an opportunity within 14 days of notification to confirm whether supports the request. If the applicant does not reply or withdraw the request, the proceedings shall be terminated.
The decision may be appealed to the Administrative Court – the City of Sofia within two months from its notification.
Effect of revocation of a trademark registration
Revocation of trademark registration shall take effect from the date on which the application for revocation has been filed. At the request of one of the parties to the dispute, in the decision of the revocation an earlier date may be determined than the date on which one of the grounds for revocation has arisen.
The revocation of a trademark shall not affect any enforced court decisions concerning infringement insofar as they have been executed prior to the revocation as well as license agreements executed prior to the revocation unless otherwise agreed.
Due to the above-mentioned peculiarities, it is advisable to seek the assistance of an intellectual property specialist with experience in this matter when preparing and submitting a request for revocation of trademark registration. The team of the law firm of Krasimira Kadieva will gladly assist you in the preparation and filing of a request for revocation of trademark registration, as well as in representation in the procedure for revocation of a trademark registration by providing professional advice and preparation of all necessary documents. The team of the law firm of Krassimira Kadieva will gladly assist in the trademark revocation proceedings in the event that a request for revocation of a trademark has been filed against your trademark when you are the proprietor of a national trademark, as well as a European Union trademark registered at the European Union Intellectual Property Office.
Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide more information about the revocation of trademark registration. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of an 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 all types of trademark registrations by providing professional advice and preparation of all necessary documents.