Last updated: 03.01.2020. This publication fully complies with the provisions of the new Law on Marks and Geographical Indications, promulgated on 13.12.2019.
Your trademark is an asset and you begin to invest in it even before its registration and start using it. Therefore, you should not create a trademark, which is similar to another earlier trademark. Dented reputation, consumer confidence loss and loss of market share are just some of the adverse effects of the registration of similar trademarks.
Therefore, conducting of a trademark clearance search before filing of the application for registration will answer the question whether there is an infringement of earlier rights, or more precisely, whether there is an infringement of the right of a person who has applied for registration of identical or similar trademark or has already registered identical or similar trademark, as well as similar or identical trademark that has not been registered. Conducting the trademark clearance search will answer the question of whether the Office, that registers the trademarks has the right to refuse the publication of the application for registration of the trademark in the Official Gazette. You are therefore advised to conduct a preliminary trademark search before submitting the application for registration of the trademark, the results of which search should be described and analyzed in a written report.
The report shall contain the answer to the question of whether the trademark falls within the scope of the norm that regulates the absolute grounds for refusal. This check is extremely important because it is carried out by experts in the registration Office and only if the trademark does not fall within the scope of the norm regulating the absolute grounds for refusal, the application will successfully pass the substantive expertise. The absolute grounds for refusal are contained in Article 11 of the Law on Marks and Geographical Indications (LMGI). According to Article 11 of the LMGI, the following trademarks shall not be registered:
- a sign that is not a mark in the sense of art. 9, para 1 of the LMGI;
- a trademark that is devoid of distinctive character;
- a trademark consisting exclusively of signs or indications that have become customary in the current language or in the established practices of the trade in the Republic of Bulgaria with respect to the goods or services filed for registration;
- a trademark consisting exclusively of signs designating the kind, quality, quantity, intended purpose, value, geographical origin, time or process of production of the goods or the manner of rendering of the services, or other characteristics of the goods or services;
- a sign consisting exclusively of: – the shape which results from the nature of the goods themselves; – the shape of goods which is necessary to obtain a technical result; – the shape rendering the significant value of the product.
- a trademark which is contrary to public policy or to accepted principles of morality;
- a trademark which may deceive the consumers as to the nature, quality or geographical origin of the goods or services;
- a trademark consisting of or including emblems, banners or other symbols, as well as their imitations of member-countries of the Paris Convention, as well as emblems, banners or other symbols, abbreviations or names of international intergovernmental organizations announced under Art. 6ter of the Paris Convention;
- a trademark containing signs, emblems or coat of arms other than those announced under Art. 6ter of the Paris Convention and representing significant public interest;
- a trademark consisting of or including official signs and stamps for control and guarantee when they are designated for indicating identical or similar goods;
- a trademark consisting of or including the name or the image of historic or cultural monuments of the Republic of Bulgaria determined by the Ministry of Culture;
- a trademark whose registration is in violation of Bulgarian law, European Union law or International agreements to which the Republic of Bulgaria and the European Union is a party providing legal protection of geographical indications;
- a trademark whose registration is in violation of European Union law or International agreements to which the European Union is a party providing legal protection for traditional specialty foods;
- a trademark whose registration is in violation of the European Union law or International agreements to which the European Union is a party providing legal protection of traditional names for wines;
- a trademark which consist of or reproduces in its essential elements the name of an earlier plant variety, registered in accordance with the Bulgarian Law, European Union law or International acts to which the Republic of Bulgaria and the European Union are parties, providing legal protection of plant varieties where the trademark and the plant variety refer to identical or closely related species.
It is important to ensure that you do not infringe earlier rights before submitting the application for registration of your trademark. Therefore, the written report shall contain a detailed analysis of the preliminary trademark search for the existence of earlier identical or similar trademarks in order to avoid infringement of the earlier rights. Conducting such a trademark clearance search will help you save a lot of time and money in the future by reducing the risk of eventually challenging the registration based on identified potential obstacles, which are described in the report. The risk of opposition is reduced as well.
What information should contain the detailed written legal report of the trademark clearance search?
The detailed written legal report of the preliminary search should necessarily contains answers of the questions of whether:
- the trademark falls within the scope of Article 11 of the LMGI where the absolute grounds for refusal are regulated;
- 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;
- there are unregistered identical or similar trademarks which are used in the course of trade of the Republic of Bulgaria;
- there are earlier registered identical or similar trademarks for goods and/ or services that are not identical or similar;
- there are registered companies, which have been used in relation to identical or similar goods and/ or services;
- the trademark is easy to read, write, pronounce and remember, as well as suitable for all types of advertising means;
- the trademark does not have any undesirable side meaning in the Bulgarian language, in the languages of the potential export markets, as well as in the most popular and common languages in the European Union;
- there is an earlier right of a third party, such as a right to a name and portrait, copyright, breeder’s right to a plant variety or breed name, industrial property right;
- there are similar or identical expired, revoked, invalidated or terminated trademarks.
Finally, the report should contain a conclusion which is a risk analysis based on the results of the trademark clearance carried out.
What should I do if during the trademark clearance search a similar trademark has been identified?
In case you do not wish to change the trademark, it is advisable not to file the mark for registration before contacting the proprietor of the earlier trademark or its industrial property representatives. With the goodwill of both parties, the co-existence of the two similar trademarks is possible by concluding a trademark co-existence agreement, which details the conditions for the co-existence of both trademarks. Furthermore, it is important to be seen how much time has passed since the registration of the earlier trademark. It shall be also checked whether the trademark is currently used and also the lack of or presence of opposition history – whether or not the proprietor of the earlier trademark has filed an opposition against the registration of identical or similar marks.
You are therefore advised to contact an intellectual property specialist for professional advice and conducting a preliminary trademark search for the trademark that you intend to register as well as request a detailed analysis of the results described in a written report. The Bulgarian trademark lawyer Krasimira Kadieva will gladly assist by conducting a preliminary trademark search as well as writing a detailed analysis.
If you wish to assign us to conduct a trademark clearance search, you can use the electronic services by filling in the relevant electronic form, which is available HERE.
EACH CLIENT WILL RECEIVE A FREE E-BOOK CONTAINING ARTICLES WITH USEFUL INFORMATION ABOUT TRADEMARKS.
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The 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. Bulgarian trademark lawyer Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.