Collective and certification marks

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.

According to Article 9, paragraph 1 of the Law on Trademarks and Geographical Indications, a trademark is a sign used to identify and distinguish the goods of one manufacturer or seller from those of another and can be presented in the State Register of Marks in such a way that it is possible to clearly and accurately determine the subject of the protection granted with the registration. Such signs may be words, including names of persons; letters; numerals; drawings; figures; the shape of goods or of their packaging; a combination of colors; sound signals or any combination of such signs.

According to the way of representing the marks are three-dimensional, sound marks, combinative, word, figurative. Depending on its territorial validity the mark may be registered as a national trademark, regional (European trademark) and international trademark. According to their use, marks are trademarks, service marks, collective marks, and certification marks.

This publication aims to provide more information about collective and certification marks.

Collective Marks

According to Article 39, paragraph 1 of the Law on Trademarks and Geographical Indications, the collective mark is a mark – owned by an association of producers, traders or persons providing services, which is a legal entity. It distinguishes the goods or services of the members of the Association from the goods or services of others. Signs indicating the geographical origin of the goods or services are registered as collective marks, but their proprietor cannot prohibit third parties from using those trademarks in their business, insofar such use is in accordance with good faith commercial practice and cannot be opposed to a third party entitled to use a geographical indication.

The association should adopt Rules for the use of the collective mark. These rules must contain information of the persons who may use the mark; conditions for membership in the association; conditions for use of the mark and the grounds on which a member of the association may prohibit its use. The rules for the use of the collective mark entitle any person whose goods or services originate in the geographical area to become a member of the Association, provided that the person fulfills all other requirements included in the rules.

It is important to note that the right to a collective mark cannot be transferred. Furthermore, persons who are not members of the association cannot obtain permission to use it. A collective mark is an effective tool for the successful marketing of a product, as each of the producers really could hardly promote his brand and also receive recognition by consumers.

Certification Marks

According to Article 40, paragraph 1 of the Law on Trademarks and Geographical Indications, certification mark certifies the material, method of manufacture, quality or other characteristics of the goods or services produced or provided by persons with the consent and under the control of the owner of the certification mark. The owner should adopt Rules for the use of the certification mark. These rules should contain directions for quality, material or other characteristics of the goods or services; the control measures and the sanction that the owner of the certification mark will impose.

It should be noted that the owner of the certification mark cannot use it to designate the goods or services produced or rendered by him. The registration of a certification mark may be revoked if the owner has used the mark to designate goods or services produced by him.

Registration procedure of collective and certification marks

The application for registration of the collective or certification trademark shall be submitted at the Patent Office of Republic of Bulgaria in one of the following ways:

– directly in the Patent Office;
– by post;
– by fax (the original documents must be received by the Patent Office within one month from the date of the receipt of the fax);
– electronically (this service functions since 2014).

The application for registration of the collective or certification trademark shall contain the following:

1. request for registration;
2. name and address of the applicant;
3. representation (image) of the trademark;
4. list of the goods or/and services;
5. kind and type of the trademark;
6. information about the representative, when such is authorized;
7. mailing address;
8. description of the trademark;
9. information about division of the application – number date of submission of the previous application;
10. information about claimed priority, if such is claimed

11. information that the application is the result of a European Union application / trademark transformation – the number and date of filing of the transformed application /trademark, as well as information about priority if such is claimed;

12. information that the application is the result of transformation of international trademark registration – number and date of registration of the transformed international trademark registration, as well as information about priority, if such is claimed;
13. declaration of surrender of the exclusive right over a trademark element;
14. rules for the use of the collective or certification mark;
15. list of attachments.

It is important to note that if there are changes in the rules of use, the owner of the trademark must submit the changed rules in the Patent Office. The changes will take effect from their submission in the Patent Office. The Patent Office shall provide access to the rules for use of the collective and certification marks.

Revocation of the registration of collective and certification marks

The registration of a collective or certification mark may be revoked at the request of any person in the following cases:

– When the mark has not been used in accordance with Article 21 of the Law on Marks and Geographical Indications;
– When, as a result of the action or inactivity of the owner the mark has become a common name for the product or service for which it is registered;
– When using the mark for the goods or services for which it is registered, is in a way that misleads consumers as to nature, quality or geographical origin of the goods or services;
– When the owner has permitted or tolerated use, which is in violation of the rules of use.

Collective or certification marks whose registration has been revoked or invalidated is an obstacle to the registration of an identical or similar trademark for identical or similar goods or services on behalf of another person within three years of publication of the revocation or invalidation.

If you would like to register a collective or certification mark in Bulgaria you are therefore advised to contact a trademark attorney in Bulgaria for professional advice and preparation of all necessary documents. The Bulgarian trademark attorney Krasimira Kadieva will gladly assist you during the registration process of the collective or certification trademark by providing professional advice and preparation of all necessary documents.

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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide basic information about collective and certification trademarks. 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. Bulgarian IP attorney Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.