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Absolute grounds for refusal of registration of a trademark

The trademark, by its nature, is an integral part of the portfolio of every business that is built and developed over time. There are a number of publications on this website that describe the importance of having a registered trademark, the benefits it brings, and the overall effect it has on the business venture. This article is a logical extension of this series of trademark publications, the purpose of which is to provide the reader with practical insight and guidance on how to create a trademark so that it meets all legal requirements and successfully passes the examination as to Substance in the Patent Office of the Republic of Bulgaria.

I. What is a trademark?

According to Art. 9, para. 1 of the Law on Marks and Geographical Indications (LMGI), the trademark is a sign that is capable of distinguishing the goods or services of one person from those of other persons and can be represented graphically. Such signs may be words, including the names of persons, or letters, numerals, drawings, figures, the shape of goods or of their packaging, a  combination of colors, sound signals or any combination of such elements.

I.e, the trademark is that sign that will distinguish your goods/services from those of your competitors. For example, with regard to footwear, falling under Class 25 of the Nice Classification of Goods and Services (NCL), there are trademarks “Adidas” and “Nike”.

II. What is the examination as to Substance (Substantive examination) in the Patent Office of the Republic of Bulgaria?

Once the filed trademark application has successfully passed the Formal examination (where certain requirements of the application itself are being examined – such as whether a document for paid state fees is attached, whether the application for registration has been filled in correctly, etc.), the Patent Office proceeds to the substantive examination. The latter is based on Art. 11, para. 1 of the LMGO, the purpose of which is the experts of the Patent Office to verify that the trademark you have applied for registration does not correspond to any of the listed in Article 11, para. 1 grounds for refusal of registration of a trademark. If one of the grounds is in place, the registration of the trademark shall be refused, with the refusal may be complete or partial.

III. Absolute grounds for refusal of registration of a trademark (Art. 11, para. 1 of the Law on Marks and Geographical Indications).

As mentioned above, the absolute grounds for refusal of registration of a trademark are laid down in Art. 11, para. 1 of the LMGI, and if one or more grounds are established, the experts will refuse to register the trademark, and for that reason it is important before you apply for registration, to consider carefully how your trademark will look, taking into account the grounds for refusal.

There are frequent cases in the law practice where a client’s trademark cannot be registered or at least there is a significant risk of denial by the experts at the Patent Office, namely on the basis that the trademark they wish to register, falls under one or more of the absolute grounds for refusal, that are laid down in Art. 11, para. 1 of the LMGM. In such cases, prior to applying for registration, a prior assessment of that risk is made and the client is being advised how and what it is good to change in the mark so that it can successfully pass the Substantive examination. Such advice could be, for example, to reinforce any element of the mark itself in order for the latter to be distinctive and dominant in the trademark.

Below, the different grounds for refusal, accompanied by practical examples, will be considered separately for the sake of clarity.

a) Art. 11, para. 1, p. 1 – not registered shall be a sign that is not a mark in the sense of art. 9, para 1 of the LMGI.

Initially, if the sign you want to register does not meet the legal definition of a trademark (Art. 9, Para. 1 of the LMGI), then logically there is no way to register the sign as a trademark.

Practical example: A touch (sensation) trademark cannot be registered since it is not possible to be represented as a trademark, the overall effect that is felt when touching a particular material or texture.

b) Art. 11, para. 1, p. 2 – not registered shall be a trademark with no distinctive character.

The distinctive character of a trademark is its inherent and strictly binding feature, without which it cannot fulfill its basic function, namely to distinguish the goods/services of one person from those of other persons. The distinctiveness is always assessed in relation to the goods/services requested, taking into account the relevant consumers of the same goods/services. It is precise because of this general nature of this ground for refusal of registration that, in practical terms, it is very often combined in the opinions of the experts of the Patent Office with any of the other grounds for refusal. Practical examples:

  • It cannot be registered a mark which is only a letter, a currency, or at all any sign that is widely known to the public as a result of its use. For example, cannot be registered only: a; b; (any letter of the alphabet at all); @; $; +; -; etc.
  • It cannot be registered domain names or company abbreviations. For example, cannot be registered: .org; .net; Ltd.
  • It cannot be registered too long and difficult to remember word combinations. For example, it cannot be registered: “Purchased, gained, paid, traded, processed from Turkey”.
  • It cannot be registered difficult to pronounce and difficult to remember combinations of letters. For example, cannot be registered: NVAWEAUJBN, QIACURNPG, etc.
  • It cannot be registered in simple geometric shapes. Thus, for example, one circle or rectangle cannot be registered without being distinctive (eg in some color range, presented differently than usual) or in combination with one another (eg 4 or 5 connected circles – like the well-known trademarks of Audi and the Olympic Games).
  • It cannot be registered 3D signs representing the shape of the product itself or its packaging. For example, cannot be registered: a 3D trademark representing the shape of a laptop for goods “laptop” (class 9 of the NCL). An exception to this rule is when the shape/packaging of the product itself is distinctive – in this case, on the shape of the laptop is placed the sign HP or a well-known bitten apple, which distinguishes the 3D trademark and associates it with a specific producer.
  • They cannot be registered colors by themselves. For example, cannot be registered: blue or any other color.
  • It cannot be registered typical patterns for the fashion industry. For example, cannot be registered a Scottish tartan for goods related to the mentioned industry.
  • Cannot be registered slogans that are promotional and/or laudatory character. For example, cannot be registered: “The best on the market”, “You will not find any better than this”, “The juiciest chicken fillet you’ve tried”.

c) Art. 11, para.1, p. 3 – not registered shall be a trademark consisting exclusively of signs and indications that have become usual in the spoken language or in the established commercial practice in the Republic of Bulgaria with regard to the declared goods or services.

Those signs or indications that have become customary in the spoken language or in the established commercial practice of the Republic of Bulgaria must relate to the goods/services requested, and the assessment of the trademark of the mark itself is specifically assessed in relation to the commercial area concerned.

Practical examples:

  • It cannot be registered words that initially did not make sense or had a different meaning to those that were subsequently conveyed to them in a particular commercial area. For example, it cannot be registered: “TELECOM” for the services “telecommunication” (class 38 of the NCL).
  • Cannot be registered abbreviations/acronyms/ that have become common names of goods/services. For example, it cannot be registered: “PC” for the goods “computers” (class 9 of the NCL).
  • It cannot be registered images that have become common or frequently used to designate the relevant goods/services. For example, cannot be registered: a figurative sign representing an upright flash for goods in class 9 of the NCL, like this image, would be identical to the international safety symbol known as the “high voltage symbol”.

It cannot be registered with the usual forms or packaging with which consumers associate a particular good. For example, cannot be registered: a three-dimensional (3D) trademark representing the form of a blister for medicines (class 5 of the NCL).

d) Art. 11, para. 1, p. 4 – not registered shall be a trademark consisting exclusively of signs or marks indicating the kind, the quality, the quantity, the designation, the geographic origin, the time or the method of production of the goods, the way of rendering the services or other characteristics of the goods or the services.

This ground for refusal of the registration of a trademark refers to those signs or indications that consumers perceive directly, accurately and specifically as indications related to any characteristic of a given product/service, that is to say, it must be considered whether the mark is descriptive of the particular good/service.

The purpose of this ground is based on both the main task of the mark, namely to distinguish the goods/services of one trader from those of another, as well as on the public interest, which would be affected in the present case if registration is allowed contrary to this reasoning since a person would acquire the exclusive right to a descriptive term that was initially free to be used by everyone, and this, in turn, would result in the violation of good morals and free trade.

An exception to this ground for refusal of registration of a trademark are suggestive trademarks, which are expressions, phrases or other combinations of signs and/or markings that contain an element that directs consumers to a specific characteristic of the goods and/or services without describing them directly. For example, Jaguar is registered for the goods “cars” (class 12 of the NCL).

It is also important to clarify that when assessing whether a trademark is descriptive, the experts in their judgment are guided, in addition, by the dictionary meanings of some terms or phrases, including when they are in a foreign language, which is recognizable and spoken in Bulgaria (thus, the mark “Звярът – V6 двигател” (eng. “The beast – V6 engine”) cannot be registered for the goods “car engines” falling under class 12 of the NCL). The examination is carried out even only with regard to the simple spelling of a Bulgarian word or term in Latin (thus the mark “AVTOMOBIL” is not registered for the goods “cars” falling under class 12 of the NCL).

Practical examples:

  • Cannot be registered a mark that consists exclusively of signs or indications indicating its type. For example, cannot be registered: “chocolate” for the goods “waffles” (class 30 of the NCL) or “glass” for the goods “cups” (class 21 of the NCL). This sub-ground also applies to registered breeds of plants and animals. For example, cannot be registered: “Pit Bull” for the goods “dogs” (class 31 of the NCL).
  • It cannot be registered a mark that consists exclusively of signs or indications indicating its quality. For example, “Best” cannot be registered for any product or service.
  • Cannot be registered a mark that consists exclusively of signs or indications indicating the quantity. For example, the following cannot be registered: “2.5 liters” for the goods “mineral water(Class 32 of the NCL) or “6 pieces” for the goods “eggs” (Class 29 of the NCL).
  • Cannot be registered a mark that consists exclusively of signs or indications indicating the purpose. For example, the following cannot be registered: “POOL” for goods “chlorine” (class 1 of NCL) or “AUTOMOBILE” for goods “brake pads for automobiles” (class 12 of NCL).
  • Cannot be registered a mark that consists exclusively of signs indicating the value. For example, cannot be registered: “$ 9.99” for any product or service, or “Cheapest price on the market” for any product or service.
  • It cannot be registered a mark that consists exclusively of signs indicating the geographical origin, the name of which is known to the relevant consumer and associated with a particular category of goods. For example, the following cannot be registered: Rhodopean” for woolen blankets (class 24 of NCL) or “KAZANLAK” for goods “rose oil” (class 3 of NCL)
  • It cannot be registered a mark that consists exclusively of signs indicating the time or method of production of the goods and the manner in which the services are provided. For example, the following cannot be registered: “MANUFACTURED SINCE 1899” for goods “wine” (class 33 of the NCL); “Goodyear-welted” for the goods “shoes”(class 25 of the NCL) or “ROUND-THE-CLOCK” for the services sale of alcoholic beverages’ (class 35 of the NCL).
  • Cannot be registered a mark which consists exclusively of signs indicating other characteristics of the goods/services. For example, the following cannot be registered: “Airbags”, “ABS”, “ESP” for the goods “cars” (class 12 of the NCL) or “Stevia” for the goods “protein dietary supplements” (class 5 of the NCL)

e) Art. 11, para. 1, 5 – not registered shall be a sign consisting exclusively of the form ensuing from the nature of the product itself; the form of the product which is necessary for achieving a technical result or the form rendering the significant value of the product.

This absolute ground for refusal of registration of a trademark is directed at the so-called three-dimensional (3D) trademarks, those which, by graphic representation, to represent the shape, the packaging of the goods, some kind of a figure or drawing.

Practical examples of the various sub-grounds of Art. 11, para. 1, p. 5:

  • It cannot be registered a sign consisting exclusively of the form ensuing from the nature of the product itself. For example, it cannot be registered: a three-dimensional pen-shaped trademark for the goods “ pens” (class 16 of the NCL). However, this sub-ground can be avoided by incorporating distinctive and dominant elements into the composition of the trademark – in the case, mentioned above, the following is registered: a three-dimensional mark in the form of a pen, which is more distinctive than usual and has a distinguishing sign (for example “BIC”) for the goods “pens” (class 16 of the NCL).
  • Cannot be registered a sign consisting exclusively of the form of the good which is necessary for achieving a technical result. For example, it cannot be registered: a three-dimensional trademark in the form of a nib, facilitating the writing, sketching, and drawing for the goods “pens with felt nibs” (class 16, NCL).

Cannot be registered a sign consisting exclusively of the form rendering the significant value of the product. This sub-ground was established precisely because of the original way of presenting the product, which itself can play a decisive role in the choice of the end consumer. For example, cannot be registered: a three-dimensional trademark of a pen in the original superhero form for the goods “pens” (class 16 of the NCL).

f) Art. 11, para.1, p.6 – not registered shall be a trademark contradicting with the public order or good ethics.

The purpose of this absolute ground for refusal of registration of a trademark is to avoid the possibility of acquiring exclusive rights in trademarks which undermine the public order, law, and morality. Of course, in examining this ground for refusal, it is assessed on a case-by-case basis and for each trademark, taking into account the relevant average consumer and his normal, i.e. average, sensitivity. In the examination, the experts are guided by the generally known principles of good morals, as well as the rules of public order as part of the generally accepted and due behavior of participants in the public relations.

Practical examples:

  • Cannot be registered marks that contain in their composition obscene and destructive elements and signs, such as symbols of National Socialism (Nazi and neo-Nazi symbols).
  • Cannot be registered marks that contain in their composition the figurative elements of indecent gestures, such as the middle finger.
  • Cannot be registered marks that contain in their composition racist, obscene and discriminatory language, regardless of the language in which it is written.
  • Cannot be registered marks that contain in their composition substances prohibited by law, such as: “hashish”; “MARIJUANA” for the goods “tobacco (Class 34 of the NCL).
  • Cannot be registered marks that contain in their composition names or abbreviations of terrorist organizations.
  • Cannot be registered marks that are made up of names of major Christian religious holidays, as this in itself is contrary to good morals. For example, cannot be registered: “EASTER”.
  • It cannot be registered marks that are contrary to good commercial practice. For example, cannot be registered: “The best you’ll ever try”.
  • Cannot be registered marks that contain in their composition false information. For example, it cannot be registered: a trademark that contains information about a certificate that has not been issued.

Cannot be registered marks that contain in their composition the names of celebrities who have not given their explicit consent for that. For example, cannot be registered: Nicole Kidman; Brad Pitt, if the latter have not given their explicit consent.

g)  11, para.1, p. 7 – not registered shall be a trademark that could mislead the users about the nature, the quality or the geographic origin of the goods or the services.

With regard to this absolute ground for refusal of registration of a trademark, the likelihood of confusion is analyzed with extreme care and based on lasting and consistent case-law in the area of trademark law, which leads to the presumptive conclusion that the average consumer is considered relatively well informed, and reasonably observant and circumspect when choosing a purchase.

Consumer misconception occurs when a trademark contains in itself signs and/or indications that are misleading about the nature, quality or geographical origin of the goods/services. It is for this reason that it is advisable, when creating a trademark, to determine whether the mark itself contains such signs and/or indications, whether the latter are false and whether consumers will be influenced by their choice based on this misleading information.

Practical examples:                                                         

  • It cannot be registered a trademark “ELECTRIC LIGHT” for the goods ‘gas lamps’ (class 11 of the NCL) as it misleads consumers as to the nature of the product itself.
  • Cannot be registered a trademark “the eggs of the happy chicken LILI” for the goods “duck eggs” (class 29 if the NCL) as it misleads consumers as to the nature of the product itself.
  • Cannot be registered a trademark “IVORY VARY ladies leather handbags” for the goods “synthetic leather handbags” (class 25 of the NCL) as it misleads consumers as to the quality of the product itself.
  • Cannot be registered a trademark “VARNA” for the goods “Spanish mackerel, inanimate” (class 29 of the NCL) as it misleads consumers as to the geographical origin of the product itself.

However, as they do not mislead the consumer as to nature, quality or geographical origin of the goods /services, the following trademarks can be registered:

  • ELECTRIC LIGHT for the goods “lamps” (Class 11 of the NCL).
  • “the eggs of the happy chicken LILI” for the goods “eggs” (Class 29 of the NCL).
  • “IVORY VARY ladies leather handbags” for the goods “handbags” (Class 18 of the NCL).
  • “VARNA” for the goods “fish, inanimate” (Class 29 of the NCL).

Trademarks that cannot by themselves mislead the consumer, are also registered such as:

  • “SAHARA” for the goods “ice cubes” (Class 30 of the NCL), since the average and well-informed consumer will in no way make a connection between the geographical concept of the Sahara desert and the goods ice cubes.
  • “Caribbean robbers” for the goods “typical Italian grape alcohol [grappa]” (Class 33 of the NCL), since in this case, the geographical indication relating to the Caribbean only and merely explains the other part of the word, namely robbers. In this case, the overall phrase “Caribbean robbers” seems fanciful, which automatically eliminates any possibility of confusion for the average consumer regarding the geographical origin of the goods.

METAL JACKET for the goods “textile jackets” (Class 25 of the NCL), as it is extremely clear to the average consumer that jackets are not made of metal. In this case, this trademark is suggestive because it leads the consumer to the fact that the jackets themselves are extremely sturdy.

h) Art. 11, para.1, p. 8 – not registered shall be 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.

This ground for refusal is based on internationally agreed relations between specific countries that have signed the so-called Paris Convention for the Protection of Industrial Property of 1883, by which international standards were introduced requiring countries to apply the same degree of protection to citizens of other countries as they apply to their own citizens.

The overall conception of this prohibition is the fact that the presence of emblems, banners or other symbols in a trademark, as well as their imitations of member-countries of the, said 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 would be misleading to consumers, which may be due to the fact that certain goods/services are originating or guaranteed, or are in any way related to the administration and the public government of the country or organization concerned.

It is important to emphasize that this ground does not apply when the relevant competent authority has consented to the use of emblems, banners or other symbols.

Practical examples:

  • Cannot be registered a trademark consisting exclusively of, or incorporating the Bulgarian banner or emblems, which would be perceived by consumers as an indication of a link between the applicant and the relevant Bulgarian public authorities.
  • Cannot be registered a trademark consisting exclusively of, or incorporating the official symbols of the European Union and its institutions, which would be perceived by consumers as an indication of a link between the applicant and the European institutions concerned.

Cannot be registered a trademark consisting of well-known abbreviations of international intergovernmental organizations under Article 6ter of the Paris Convention, such as WIPO, UNESCO.

i) 11, para.1, p. 9 – not registered shall be a trademark containing signs, emblems or coat of arms other than those announced under Art. 6ter of the Paris Convention and representing the significant public interest.

The main concept behind this ground for refusal is the so-called “significant public interest”. The latter represents the right of the whole society to use authentic information.

When conducting an examination on this ground, it shall be verified if the mark does not constitute a coat of arms, emblem or other symbol, as well as their imitations of member-countries and international intergovernmental organizations participating in the Paris Convention (that is, an examination under Art. 11, para. 1, p. 8). Accordingly, in the case of non-presence according to Art. 11, para. 1, p. 8, it shall be examined whether the applied trademark does not constitute a sign, emblem or a coat of arms of significant public interest, from which the relevant trademark is to be perceived by consumers as an indication of a link between the applicant and the organization concerned.

Аgain, if the respective organization gives its consent to the use of the sign, emblem or coat of arms, this ground will not be applied in the substantive examination of the mark under Art. 11 of the Law on Marks and Geographical Indications.

Practical examples:

Cannot be registered a trademark that consists exclusively of or includes the Bulgarian Red Cross sign or the sign of the International YMCA organization.

j) Art. 11, para. 1, p. 10 – not registered shall be a trademark consisting of or including official signs and stamps for control and guarantee when they are designated for indicating identical or similar goods.

Under this absolute ground for refusal of registration, are refused to be registered trademarks that consist or include signs and stamps for control and guarantee when they are designated for indicating identical or similar goods to those to which the symbols in a question apply.

It is important to note that the relevant signs and stamps for control and guarantee should be formally adopted by the specific countries or control and guarantee organizations in order to be protected under this provision.

As with the previous two grounds for refusal of registration of a trademark, so here, if the relevant authority or organization agrees to use the official sign or stamp, this ground does not apply to the substantive examination.

In connection with the foregoing, the following trademarks cannot be registered:

  • the official sign “CE” marking, which serves for certification and meets certain requirements of the European Union.

the official quality sign of BWA (Bulgarian Water Association), which serves as a guarantee for strict control according to clearly described standards and methodology, synchronized with the European practice in the field.

k) Art. 11, para. 1, p. 11 – not registered shall be 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.

This provision covers only tangible cultural values, the latter being movable and immovable under the Bulgarian Cultural Heritage Act.

It is also important to note the following points, namely:

  • this provision applies to all goods and services requested;
  • this provision applies regardless of how the mark is presented;
  • this provision shall not apply where the explicit consent of the competent authority has been obtained.

In regard to immovable cultural values.

Immovable cultural values are divided into:

  • those of world significance, with the statue itself being granted by the international organization UNESCO. Based on the immovable cultural values on the territory of the Republic of Bulgaria listed in the UNESCO special list, the following marks cannot be registered, namely: “Ancient City of Nessebar”; “Boyana Church”; “Madara Rider”; “Rila Monastery”; “Rock-Hewn Churches of Ivanovo”; “Thracian Tomb of Kazanlak”; “Thracian Tomb of Sveshtari”; “Ancient and Primeval Beech Forests of the Carpathians and Other Regions of Europe”; “Pirin National Park”; “Srebarna Nature Reserve”.
  • those of national significance, the status of which is given by the national competent authorities designated by the Bulgarian Cultural Heritage Act. The immovable cultural values themselves are recorded in a register kept by the National Institute for the Protection of the Immovable Cultural Heritage, which exceeds 40,000. Because of the large number of protected immovable cultural property, it is advisable to carry out preliminary research before the application for registration of the mark as to whether it constitutes a name or an image of an immovable cultural value or part of it.

In regard to movable cultural values.

The status of movable cultural values is granted by the Minister of Culture, and those who have received the relevant status are entered in a special register kept by the Ministry of Culture. Again, because of the large number, in the case of movable cultural values, it is advisable to carry out preliminary research before the application for registration of the mark as to whether it represents the name or image of movable cultural property or part of it.

Some practical examples:

  • Cannot be registered a mark, that depicts an item of the Panagyurishte Gold Treasure or all the treasure in its entirety.
  • Cannot be registered a mark, that depicts the April High School building in Gabrovo, as it is a cultural value of national importance.
  • Cannot be registered a mark, that depicts the Pliska Rosette as it is a movable cultural value.

Cannot be registered word mark “Perperikon”, as Perperikon is an immovable cultural value of national significance.

l) Art. 11, para. 1, p. 12 – not registered shall be a trademark exclusively consisting of applied or registered geographical indication, effective on the territory of the Republic of Bulgaria, or derivatives

This ground for refusal of registration of a trademark is based on the so-called geographical indication. There are two types of geographical indications, which are separate intellectual property objects, namely: appellation of origin and indication of the source.

An appellation of origin is the name of a country, or of a region or locality in that country, that serves to designate goods originating therein whose quality or characteristics are due essentially or exclusively to the geographical environment, including natural and human factors.

An indication of source is the name of a country, or of a region or locality in that country, which serves to designate goods originating therein whose quality, reputation or other characteristics can be attributed to that geographical origin.

That is to say, the difference between an appellation of origin and a geographical indication lies in the fact that in the case of appellation of origin, in addition to the geographical environment, the human factor, such as skills, traditions and production experience also has an influence on the qualities of the product, whereas when it comes to indication of source, the qualities of the products are determined only by the natural conditions of the geographical environment.

With regard to the registration procedure, it should be said that there are different types of geographical indication registrations following the relevant rules and procedures, but which are important to know, since it is in their databases that a preliminary research should be made before applying for a specific mark concerning whether or not a geographical indication is filed or registered (appellation of origin or indication of source). Thus, there is an application, respectively registration of a geographical indication by national order, under the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 1958, as well as under the specific regulations of the European Union in the particular field, including other bilateral treaties between the European Union and third countries.

Also noteworthy is the fact that registration of a trademark which is a derivative of a filed or registered geographical indication is refused. Derivativeness follows from words with the same root or meaning, the difference being only in the added prefixes or endings.

Practical examples:

  • Cannot be registered a trademark “FLAT-SAUSAGE FROM GORNA ORYAHOVITSA” for the good “meat” (class 29 of the NCL) as “Flat-sausage from Gorna Oryahovitsa” is a registered indication of source for meat products.
  • Cannot be registered a trademark “BULGARIAN ROSE OIL” for the goods “essential oils” (class 3 of the NCL) as “Bulgarian rose oil” is a registered indication of source for essential oils.

Cannot be registered a trademark “TROYAN CERAMICS” for the goods “pottery” (class 21 of the NCL) as “Troyan ceramics” is a registered indication of source for pottery.

m) Art. 11, para.1, p. 13 – not registered shall be a trademark containing applied or registered geographical indication, effective on the territory of the Republic of Bulgaria, or derivatives thereof, when the applicant is not a registered user of the geographical indication.

Again, this ground for refusal relates to applied or registered geographical indication, similar to Art. 11, para. 1, p. 12, but while there the mark itself consists exclusively (i.e. the name of the geographical indication is the distinctive and dominant element into the composition of the mark itself) of a particular geographical indication, in the provision of Art. 11, para. 1, p.13 the name of the geographical indication is simply part of the whole composition of the mark itself.

It is important to mention the following situations where this ground for refusal of registration of a trademark shall not apply, respectively the mark will be registered, namely:

  • where the particular geographical indication is registered by national order or under the terms of the Lisbon Agreement, then the application of the trademark that contains the geographical indication must be registered as a user of this particular geographical indication.
  • where the particular geographical indication is registered as a result of the European Union Regulations, it is sufficient for the applicant to be from the relevant geographical location.

In the presence of the prerequisites described above, divided according to the different types of registrations of geographical indications, for the successful overcoming of this ground for refusal, it is necessary for the application of the respective mark to be limited to the good that is marked with the geographical indication with explicit mention of the geographical indication itself.

As a practical example, the following trademarks can be registered:

  • GRATITUDE FROM THE VALLEY OF FRAGRANCE – BULGARIAN ROSE OIL” for the goods “essential oils with a registered indication of source Bulgarian rose oil” (class 3 of the NCL).
  • “CUNNING ACHILLES – TROYAN CERAMICS” for the goods “pottery with the registered appellation of origin Troyan ceramics” (class 21 of the NCL).

IV. Conclusion

This publication presents the absolute grounds for refusal of registration of a trademark, accompanied by practical examples. However, it should be borne in mind that trademark law by itself is too extensive for all possible hypotheses and cases to be included in this publication. In order to minimize the risk of a refusal of registration after the substantive examination of the absolute grounds for refusal, it is advisable to carry out a preliminary trademark search, taking into account the various absolute grounds for refusal according to Art. 11, para. 1 of the Law on Marks and Geographical Indications and the existing constant practice regarding them. It should also be taken into account that some of the absolute grounds for refusal can be overcome. For example, the provisions of Art. 11, para. 1, p. 2, 3 and 4 of the LMGI do not apply when the mark as a result of use has acquired distinctiveness with regard to the goods or services for which it has been filed for registration, which must be proved by the applicant.

Due to the above-mentioned peculiarities in the registration of a trademark, it is advisable to seek the assistance of an intellectual property expert with experience in this matter, who can consider whether the mark you wish to register falls within the scope of Article 11 of the Law on Marks and Geographical Indications where the absolute grounds for refusal of registration of a trademark are regulated and which absolute grounds have been discussed in detail in this publication. The team of the law firm of attorney Krasimira Kadieva will gladly assist you in the registration of your mark by providing professional advice and preparation of all necessary documents, as one of the most frequently ordered services in the past years in the practice of attorney Krasimira Kadieva are the services in relation to the registration of trademarks.

EACH CLIENT WILL RECEIVE A FREE E-BOOK CONTAINING ARTICLES WITH USEFUL INFORMATION ABOUT TRADEMARKS.

FOR YOUR NEXT ORDER OF ANY OF OUR SERVICES YOU WILL RECEIVE UP TO 15% DISCOUNT.

This material prepared by Svetozar Gaydarski aims to provide more information about the absolute grounds for refusal of 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, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Since 2016 Svetozar Gaydarski is a law student at Sofia University “St. Kliment Ohridski “, having previously graduated from the National High School in Gabrovo. Since 2018 he has been registered as a mediator in the Unified Register of Mediators at the Ministry of Justice, with a specialization in the field of commercial mediation. He is interested in intellectual property, personal data protection, commercial and law on obligations and contracts and also regularly attends conferences, practical courses, seminars, and webinars. The team of the law office of Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.

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