Practical steps for creation and protection of a trademark

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.

Nowadays, with the rapid development of commodity-money relations and the increasing number and types of goods and services offered on the market, the question is how will one business be distinguished from others?

For example, you produce a high-quality clothing, in particular women’s dresses, but at the same time, thousands of others like you are also producing women’s dresses. Thus, in order end-users (buyers) to differentiate between your goods/ services and those of another manufacturer or retailer, it is necessary to designate your product/ service in some way so that the quality you provide can only be linked and only with your product/ service. This is also the main function of a trademark, namely to represent such a sign that is capable of distinguishing the goods or services of one person from those of others (Art. 9 of the Law on Marks and Geographical Indications (LMGI)).

This article is intended to practically draw the business’s attention to the creation of a trademark and its subsequent registration. The registration allows the respective proprietor to have exclusive rights to the trademark, which means that if your or similar trademark is used by a third party for the same goods/services as yours, you may be able to ask the person concerned to cease the use of the mark.

Through the trademark, consumers will know your goods/ services and differentiate them from others. In order a trademark to be successful in the market, the latter is recommended to be registered. This is crucial because in practice often manufacturers/ traders do not register their marks, thinking that this is not so important and after a while, when the trademark has already been placed on the market, the proprietor finds that a third party uses a similar trademark for similar goods and/or services. This is why figuring out what the trademark will look like or what the trademark name will be, is just one of the steps to successfully promote it.The next necessary step is the registration itself.

In support of the described is the official survey of May 2019 carried out by the European Union Intellectual Property Office and the European Patent Office, the results of which are eloquent. According to the results, companies that register industrial property objects (trademarks, designs, patents) have a 21% greater opportunity for growth in their development than companies that do not register industrial property objects.

The general conclusion from the above is that the better protection of your intellectual property of your company you undertake, the better environment you will have for subsequent realization. This will avoid potential problems such as reputation and customer losses in the future.


1. Choose the specific vision of your trademark based on your long-term plans for its development.

When creating a trademark, you must first take into account its perception by the relevant user you are targeting. In other words, you should determine how the trademark shall be presented – whether it is word, figurative, combined, etc. It is also important to decide in which countries you want your trademark have an effect. You have to identify your commercial interest now and in the future (after three, five, seven years). This is necessary in order to be determined whether a national trademark, Community trademark or international trademark will be registered.

2. Identify the goods and/or services for which you will use and file the trademark for registration.

In the second place, you shall specify the goods (food, drinks, clothes, toys, etc.) or services (restaurant services, hotels, advertising, etc.) for which the trademark will be filed for registration. It is very important to be informed, that the list of goods and/or services for which the trademark will be filed for registration cannot be expanded with additional goods and/or services further. The list of goods and/ or services can only be limited. At the same time, if you do not use your trademark with respect to all the goods or services in the application, it would be attacked easier.

Recommendation: It is recommended to register the trademark only for goods and/ or services for which the trademark will be used, including for the goods and/ or services, which will be produced or offered in the future.

3. Carry out a preliminary trademark search on the existence of earlier identical or similar trademarks in order to avoid infringement of earlier rights.

Next, you always have to ask yourself whether a trademark is no longer used in business or not registered? This question is essential for the further development of your business. It is therefore extremely important to carry out a preliminary search of the existence of earlier identical or similar trademarks to avoid infringement of earlier rights.

When performing this preliminary search there have to be checked whether there are:

– registered identical or similar trademarks or filed applications for registration of identical or similar trademarks for identical or similar goods and/ or services;
– unregistered identical or similar trademarks which are used in the course of trade of the Republic of Bulgaria;
– earlier registered identical or similar trademarks for goods and/ or services that are not identical or similar;
– registered company, which has been used in relation to identical or similar goods and/ or services.

Recommendation: This check should be done in order to the risk filing of an opposition or request for invalidation of the trademark to be reduced.

4. Comply with legal requirements.

You shall take into account the legal requirements set out in Article 11 of the LMGI. Article 11 regulates the absolute grounds for refusal, indicating which trademark can be registered. To be registered, the mark must be distinctive, not misleading as to the nature, quality or geographical origin of the goods or services, etc. The performance and this check is strongly recommended, because this check is carried out by the experts from the Patent Office, and only if the mark does not fall within the scope of Article 11 of the Law on Marks and Geographical Indications, the application will successfully pass this expertise.

Recommendation: Always, when creating a trademark, keep in mind the legal rules set out in Art. 11 of the LMGI.

5. In conclusion, it is important to note that creating a trademark that can be successful in the market and can be successfully registered is a process that requires serious attention and respect. In whatever form you apply and register your trademark, in such form you will own the rights to it, because according to the LMGI no changes can be made in the trademark during the registration period or during the renewal procedure. The Law on Marks and Geographical Indications governs only one case where changes can be made in the trademark, and it is if the trademark includes the name and address of the proprietor. Any change in the name and address can be made at the request of the proprietor, provided that they do not affect significantly the trademark as it has been registered.

Recommendation: Consider very carefully how do you want your trademark to look like and make sure you will not change your opinion, because otherwise if you have registered your trademark and want to change it, in this case, another application for registration shall be filed.

These are the most important actions that need to be performed before the filing of the application for registration of a trademark. The registration procedure itself – from the filing of an application for registration to the issuance of the certificate for registration of a trademark will be described in a separate article. If you would like to register a trademark in Bulgaria you are therefore advised to contact a trademark attorney in Bulgaria for. The Bulgarian IP attorney Krasimira Kadieva will gladly assist you by performing a preliminary trademark search as well as writing a detailed analysis containing the results of the search.



Legal Disclaimer: This content of this material prepared by Krasimira Kadieva is intended for general information purposes only and aims to inform applicants of trademarks with the actions that should be taken prior to filing the application for registration of a trademark. 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, as well as, for comprehensive search, 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 trademark attorney Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.

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