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.
This article will describe the procedure for recordal of a license agreement, which is regulated by the Law on Marks and Geographical Indications and the Instruction on Requests for the Registration of Changes in the Legal Status of Industrial Property Objects.
According to Article 24 of the Law on Marks and Geographical Indications, the proprietor of a mark may permit the use of his mark in respect of all or some of the goods or services for which it is registered in all or part of the territory of the Republic of Bulgaria by means of a written license agreement. The use of a jointly held mark shall be permitted with the written consent of all the proprietors unless otherwise agreed. The license may be exclusive or non-exclusive. Unless otherwise is agreed, the license shall be considered non-exclusive. Licensor of an exclusive license has the obligation not to grant licenses with the same subject to others. He has the right to use the trademark if explicitly agreed.
Who can submit a request for recordal of a license agreement at the Patent Office of the Republic of Bulgaria?
The request for recordal of a license agreement shall be filed at the Patent Office of the Republic of Bulgaria by the licensee or the licensor or by an authorized industrial property representative.
The request for recordal of a license agreement shall be submitted at the Patent Office of the Republic of Bulgaria in one of the following ways: directly in the Patent Office; by post; by fax; electronically; by e-mail.
The following documents shall accompany the request for recordal of a license agreement:
- the license agreement, which shall contain the following information: – identification of the licensee; – identification of the licensor; – identification of the trademark (representation, registration number); – express wishes of the parties; – type of license; – term of the license; – signatures of the parties;
- power of attorney when the application is filed through an industrial property representative;
- document for paid state fees.
The request for recordal of a license agreement shall be signed by the licensee or the licensor or by an authorized industrial property representative. Where the licensee or the licensor is a legal person, placement of a stamp is required as well.
Examination of the request for recordal of a license agreement
The request for recordal of a license agreement shall be filed at the “Marks and Geographical Indications” Directorate. Within two days of receipt of the request, an expert at the Patent Office checks whether the trademark is identified, whether the state fees have been paid, and whether a power of attorney is attached when the request is filed through an industrial property representative.
If state fees are not paid and/or the power of attorney is not attached, the person requesting the entry is notified and given a 3-day period to remedy the deficiencies. If the deficiencies are not remedied within the provided period, the proceedings shall be terminated.
If no deficiencies have been identified or the deficiencies have been remedied in the provided period, the request shall be submitted for examination to the Legal Department and shall be assigned to a legal adviser who, within 3 days of receipt of the request, verifies the status of the mark in the electronic database, аnd, if necessary, in the dossier of the trademark and assesses and reviews the documents submitted for the for recordal of a license agreement.
In the event that during the inspection deficiencies or inconsistencies in the submitted request and the attached documents or inconsistency between the data in the electronic database/file of the trademark and the ones in the request are revealed, a notice is sent to the person requesting the entry where a 7-day period to remedy the deficiencies is provided. The proceedings shall be terminated if the deficiencies are not remedied within the provided 7-day period.
When the request meets the requirements set out in the Law on Marks and Geographical Indications and the Instruction on Requests for the Registration of Changes in the Legal Status of Industrial Property Objects, a decision shall be taken to record the license agreement. Where the request does not meet the requirements, a motivated decision to refuse shall be issued.
The entry of the recordal of a license agreement into the State Register of trademarks and publication in the Official Bulletin of the Patent Office
Once the decision is signed, the request is immediately returned for recordal in the State Register of trademarks and the issuance of the certificate within two days. The recordal of a license agreement shall be published in the Official Bulletin of the Patent Office. The license agreement shall have effects vis-à-vis third parties as from the date on which it is entered in the State Register.
It is important to note that the proprietor of a trademark may oppose the rights conferred by that trademark against a licensee who infringes a provision of the license agreement in respect of:
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the term;
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the form in which the trademark may be used in accordance with the registration;
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the scope of the goods or services for which the license has been granted;
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the territory in which the trademark may be used
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the quality of the goods produced or of the services provided by the licensee.
What are the state fees for entry of the recordal of a license agreement?
The amount of the state fee paid to the Patent office for entry of the recordal of a licensee agreement is 60 BGN.
The “recordal of a license agreement” service includes the following steps:
– providing information to the client about the procedure;
– preparing all necessary documents;
– filing the request for recordal of a license agreement;
– payment of state fees;
– legal representation during the procedure before the Patent Office of Republic of Bulgaria;
– timely communication with the client on the course of the procedure;
– obtaining a certificate;
– handling of the certificate to the client.
If you would like to license your trademark you are therefore advised to contact a trademark attorney with experience for professional advice and preparation of all necessary documents. The Bulgarian IP Attorney Krasimira Kadieva will gladly assist you in the license of your trademark by providing professional advice and preparation of the necessary documents. In the event that you wish to take advantage of the service „trademark licensing”, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website.
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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide more information about the procedure for trademark licensing. 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 trademark licensing procedures by providing professional advice and preparation of all necessary documents.