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Why are you advised to assign the trademark registration to a trademark specialist?

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.

The mark is a sign used to identify and distinguish the goods of one manufacturer or seller from those of another 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.

Registration of a trademark requires a thorough knowledge of trademark law, so it is advisable to seek the assistance of a specialist with experience in this field, as a number of things need to be taken into consideration. We recommend that you consult a specialist who will be competent to answer all your questions. This article will highlight the benefits of working with an intellectual property specialist when it comes to registering your trademark.

  1. In the first place, the expert will familiarize you with the trademark registration procedure and all the actions that need to be taken. You will be aware of how long the whole procedure takes and all the questions you have asked will be answered.
  2. Next, the specialist will ask you questions and, depending on the answers you provide, will perform the so-called “strategic analysis”, that is, you will be advised whether to pursue the registration of a national trademark, a European Union trademark or an international mark.
  3. An experienced specialist will necessarily carry out a thorough preliminary trademark search to determine if there are any earlier foreign rights. A preliminary search needs to be carried out to identify the risks, if any, and to take timely steps to avoid the identified risks. This check should be carried out in order to reduce the risk of opposition or revocation of the mark.
  4. The specialist will prepare a detailed written opinion containing an analysis of the results of the preliminary search and will give you recommendations for further actions, including, if necessary, proposals for change in the mark before applying for registration. In addition, the opinion will also contain a detailed analysis of the mark as to whether it falls within the scope of the norm governing the absolute grounds for refusal and, if the mark is non-registrable and there is a risk of refusal after the verification of absolute grounds for refusal, the trademark specialist will give reasoned recommendations on what needs to be done to avoid refusal by the experts.
  5. The trademark specialist will assist you in choosing the goods and/or services for which the mark will be applied for and will offer an adequate range of goods and/or services. Each trademark specialist is aware that the list of goods and/or services for which the mark will be filed for registration cannot be supplemented by additional goods and/or services further, but may only be restricted. At the same time, an experienced specialist will warn you that if you do not use your trademark in relation to all the goods and/or services for which it is registered, it would be easier to be revoked.
  6. Next, the specialist will correctly fill in the application for registration of the mark, apply for registration and pay state fees.
  7. The specialist will also represent you during the registration process by performing all necessary actions before the respective Office (depending on the type of the mark – before the Patent Office of the Republic of Bulgaria, the EUIPO or the World Intellectual Property Organization).
  8. The specialist will keep you informed throughout the registration process and, upon successful completion of the procedure, will provide you with the certificate for registration of the trademark.

An experienced trademark specialist will not only take care of your trademark registration but will also help you successfully protect your trademark after registration, which is one of the most important obligations of any mark owner. What do I mean?

  1. Firstly, once you have a registered trademark, a trademark specialist can conduct a “trademark monitoring” so that you can be able to file an opposition in a timely manner if there is an application for registration of a trademark identical or similar to yours. By performing monitoring you will be able to protect your trademark actively and in a timely manner by filing opposition or notice of an infringement, which will be prepared by the specialist you work with.
  2. The specialist you work with will give you detailed instructions on how to use your trademark, as in many cases, practice shows that there is a discrepancy between the registered trademark and the way in which it was subsequently used, making it difficult to prove genuine use in one future dispute.
  3. Also, a specialist will give you valuable advice on what to do to prevent your trademark from becoming generic, as well as that changes made to the name and address of the trademark owner should be recorded as well.
  4. Finally, the specialist will never forget to remind you that the end of the ten-year period is approaching, with which the registration of the mark will be terminated if its registration is not renewed within the period provided for by law. In this way, the specialist will renew the registration of the mark for a further period of ten years and your mark will not follow the fate of many other marks whose proprietors have forgotten to renew them.

Due to the above-listed specifics of trademark registration, it is advisable to seek the assistance of an intellectual property specialist with experience in this matter who will prepare all the necessary documents. Krasimira Kadieva and her team 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 her practice is the trademark registration service.

TRADEMARK REGISTRATION SERVICE INCLUDES THE FOLLOWING STEPS:

  • Strategic analysis;
  • Consultation – providing information on the registration procedure of the trademark;
  • Providing of a specially prepared brochure containing important information about the trademarks;
  • Conducting a preliminary search of existing identical or similar trademarks in order to avoid trademark infringement (unauthorized use) and potential lawsuits;
  • Drafting of a detailed analysis of the data and recommendations for further actions, including and, where necessary, proposals for change in the trademark before submitting the application for registration to overcome the infringement of existing prior rights on identical or similar trademarks;
  • Analysis of the trademark pursuant to the norm that regulates the absolute grounds for refusal and providing the results of the analysis;
  • Proposal of an appropriate range of goods and services for which the trademark should be filed;
  • Filing of the application form for registration of the trademark;
  • Payment of state fees;
  • Submission of the application form for registration of the trademark at the respective Office (depending on the type of the mark – before the Patent Office of the Republic of Bulgaria, the EUIPO or the World Intellectual Property Organization);
  • Legal representation during the registration process of the trademark at the respective Office (depending on the type of the trademark – before the Patent Office of the Republic of Bulgaria, the EUIPO or the World Intellectual Property Organization);
  • Timely communication with the client on the course of the registration procedure;
  • Obtaining a certificate for a registered national trademark and handling this certificate to the client;
  • A reminder of the deadline for renewal of registration of the national trademark.

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.

Legal Disclaimer: This material prepared by Krasimira Kadieva 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 all types of trademark registrations by providing professional advice and preparation of all necessary documents.

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