Last updated: 17.12.2019. This publication fully complies with the provisions of the new Law on Marks and Geographical Indications, promulgated on 13.12.2019.
It is my conviction, that the registration of a trademark is just the beginning, but permanent protection of the registered trademark in the years is the most important obligation of each trademark owner.
The recommendations, which are described in this article aim to help you successfully to protect your trademark in Bulgaria in the years.
1. Undertake a proper care of your trademark by taking preventative measures to protect it.
In the first place, once you already have a registered trademark, you are advised to monitor all published applications for registration of trademarks and in case an application for registration of identical or similar to your trademark is filed, you are recommended to file an opposition. Therefore, trademark monitoring is an important preventive tool, which every owner of a trademark is advised to use in order to timely protect his rights and interests.
Recommendation: Take advantage of the “trademark monitoring” service to protect your rights and interests by the filing of opposition in case an application for registration of a trademark which is identical or similar to yours has been filed. This is the way to avoid adverse effects such as impaired reputation, loss of market share, loss of consumer confidence.
2. Protect your trademark actively and on time.
Monitor your trademark and exercise your right to opposition on time, because according to article 37 of the Law on Marks and Geographical Indications when the owner of an earlier trademark for five consecutive years has acquiesced the use of the later trademark while being aware of such use, he has no right to request the invalidation of the registration or oppose the use of the later trademark on the basis of his earlier trademark regarding the goods or services for which the later trademark has been used, unless the application for registration of the later trademark was made in bad faith.
3. Use your trademark and collect dated evidence for the use of your trademark.
Use in commercial activities is:
– the placement of the sign on goods or on their packaging;
– the supply of the goods with that sign for sale, or placing them on the market, or stocking them for those purposes, as well as offering or provision of services with the sign;
– the import or export of goods bearing the sign;
– the use of the sign as a trade or business name or as part of a trade or business name;
– using the sign on business papers and in advertising;
– the use of the sign in comparative advertising in a way that is in violation of Art. 34 of the Law on Protection of Competition.
It is important to be noted that the use of the trademark by the owner in a form that does not differ substantially from the form in which the trademark has been registered is considered for actual use, whether or not the type in which it is used is registered as another mark of the same proprietor, as well as the affixing of the mark on the goods or on their packaging in the Republic of Bulgaria, even though they are intended for export only.
WHAT MIGHT BE THE CONSEQUENCES IF THE TRADEMARK IS NOT USED?
According to article 21, paragraph 1 of the Law on Marks and Geographical Indications if within a period of five years from the date of the registration, the owner has not started to use the trademark on the territory of the Republic of Bulgaria in connection with the goods or services for which the trademark has been registered, or the use has been suspended for a continuous period of five years, the registration may be revoked if there is no valid reason for non-use. It is therefore important the trademark be used but also dated evidence to be collected for the use of the trademark in order a request for revocation of the trademark to be avoided.
4. Record the changes in your name and address on time.
According to Article 66, Paragraph 1 of the LMGI, tthe proprietor of a mark shall notify the Patent Office of any change in his name or address within one month after the change occurs. In the event of a change in the name or address of the proprietor of the trademark, it is necessary to notify the Patent Office in order the change to be recorded.
5. Don’t let your trademark become generic.
The main function of the trademark is to indicate the origin of relevant goods or services or said with other words to indicate the manufacturer or provider of the goods or services. A trademark becomes generic when it takes place in the minds of a large group of society. This can practically happen when there is a market monopoly of the trademark in the relevant product category. In this case the trademark becomes a victim of its own success. If the trademark is used correctly, it shall be able to retain its main function to distinguish the goods and services of one manufacturer from those of another. The distinctiveness of the trademark is at risk when the improper use of the trademark starts to cause consumers to use the mark as the “name” of the product or service. This is why the owners of trademarks shall ensure that the mark will not become a generic description for similar goods or services, because in this case, it will lose its function to distinguish the goods and services and then it will be subject to revocation proceedings. According to Article 35, Paragraph 1, item 2 of the Law on Marks and Geographical Indications a trademark may be revoked 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.
The trademark history knows the following trademarks to have experienced this fate of becoming generic: ESCALATOR, LINOLEUM, ASPIRIN, CELLOPHANE, THERMOS, LAUNDROMAT. This happens often with innovative products where the mark has been adopted as the product name.
What steps can you take to reduce the risk of your trademark becoming generic?
The risk of revocation of the trademark will be reduced when it is properly used. Therefore, you need to use your trademark effectively from the very first day. The following recommendations are intended to assist you in this task.
- It is advisable that you draft and adopt well-defined guidelines for the proper use of your trademark.
- It is advisable that you train your employees and licensees on how to use your trademark properly.
- Always use the trademark status with the “®” symbol (for registered trademarks) and “TM” symbol (for unregistered trademarks).
- Do not alter the trademark.
- Do not abbreviate the trademark.
- The trademark shall not be used in a plural form.
- The trademark shall not be used as a noun.
- The trademark shall not be used as a verb.
- The trademark shall be used as an adjective.
- The general name of the product shall be used after the trademark.
- Make the trademark stand out from the rest of the text by always highlighting the trademark by using capital letters, color or font.
- Periodically check articles, periodicals, etc. to make sure your trademark has been used correctly by third parties.
- Commonly check dictionaries to ensure that the word is properly shown as a trademark. According to Art. 20 of the Law on Trademarks and Geographical Indications “where the inclusion of a mark in dictionaries, encyclopedias or other reference materials gives the impression that the mark is the generic name of the goods or services for which it is registered, the publisher, at the request of the proprietor, is obliged to do so by electronic publication immediately and, in the case of printed matter, at the latest in the next edition of the relevant material, indicate that it is a registered trademark. “
- Take the necessary steps on time to prevent any infringement of your trademark by exercising your rights in a timely, systematic and effective manner.
6. Renew the registration of the trademark on time.
Do not forget to renew the registration of your trademark. Remember that the duration of the registration is 10/ten/years from the filing date of the application for registration in the Patent Office of the Republic of Bulgaria. Registration may be renewed indefinitely for further periods of 10 / ten / years. The request for renewal may be submitted in the last year of the period referred to in article 20, paragraph 1 of the Law on Marks and Geographical Indications or within six months after the expiry of that period, against payment of a higher state fee.
Recommendation: It is recommended that you submit a request for renewal of the registration of your trademark in the last year before the expiration of the ten year period because after that you will have only six months for the renewal of the registration as you have to pay a higher fee. In case you miss the deadline for renewal and want to continue to have exclusive rights to the trademark, you should submit a new application for registration.
The trademark lawyer in Bulgaria Krasimira Kadieva will gladly assist you successfully to protect your trademark in Bulgaria in the years by providing trademark monitoring services, consultations as well as trademark renewal services.
EACH CLIENT WILL RECEIVE A FREE E-BOOK CONTAINING ARTICLES WITH USEFUL INFORMATION ABOUT TRADEMARKS.
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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to inform owners of trademarks with the actions that should be taken for the successful protection of the owned trademark in the years. 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 Bulgarian IP lawyer Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.