Protection of a trademark in Bulgaria

Last updated: 09.01.2020. This publication fully complies with the provisions of the new Law on Marks and Geographical Indications, promulgated on 13.12.2019.

In the course of the successful development and market imposition of every trademark, several stages can be identified, namely:

• The first stage is the creation of the trademark and namely its vision that will be aimed at the specific consumers that will be targeted.
• The second stage is the registration of the mark since only then you will acquire the rights to it and be able to effectively defend your rights.
• The third stage is the protection of the trademark which the proprietor undertakes when there is an infringement of the rights of the registered trademark.

Therefore, the creation, respectively the registration of a trademark is only the beginning, and its successful imposition on the market and its protection in the years are the most important obligations for each proprietor of a trademark.

This publication will discuss the possible ways for the protection of trademarks in Bulgaria. The tips described in the article are intended to help you successfully protect your trademark in case of infringement of the right to a registered trademark.

Before providing detailed information on possible methods of protection in the case of infringement of the right to a registered trademark, we need to clarify what constitutes trademark infringement. According to Art. 13, paragraphs 1,2,3 and 4 of the Law on Marks and Geographical Indications (LMGI), the use of a sign in the course of trade, without the consent of the proprietor, constitutes an infringement. The following shall likewise constitute an infringement:

• the affixing of the mark to a material to be used for labeling or packaging, for business papers or for the advertising of goods or services if the person who performs those activities knows or has good reason to know that the mark has been affixed without the consent of its proprietor.
• the manufacture of means specially intended or adapted for reproduction of the mark, or the possession or stocking of such means, if the person who carries on those activities knows or has good reason to know that the means serve or will serve for the manufacture of goods or of a material presented in the preceding paragraph without the consent of the proprietor of the mark.
• the implementation of preparatory actions within the meaning of Article 14 without the consent of the proprietor of the trademark.
• use of a trademark by its proprietor, where it is registered in the name of an agent or representative without the consent of its actual proprietor, unless the agent or representative substantiates his actions.

Once we have clarified what constitutes trademark infringement, we will provide information on how the trademark owner can successfully protect his trademark in Bulgaria in the event of trademark infringement. Clearly, a successful result can be achieved by one of the aforementioned means of protection or a combination of two or more methods. It is advisable to discuss your trademark protection strategy with an experienced specialist in trademark law.

There are several means of protection of the right over a trademark, namely:

• Sending of a cease and desist letter;
• Exercising of administrative penal liability by notifying the Patent Office of the Republic of Bulgaria with information about the infringement;
• Civil law defense by filing a claim at the Sofia City Court;
• Border controls;
• Criminal law defense by notifying the prosecutor’s office;
• Filing a claim under the Law on Protection of Competition to the Commission On Protection of Competition.

Sending a cease and desist letter

It is often the case in practice that someone dishonestly or unknowingly commits an infringement by using a trademark in a commercial activity or by having registered a similar earlier trademark. Violators can easily be found on the Internet, at exhibitions or in magazines. What is the usual procedure in such cases? The fastest way to resolve such disputes is to prepare and send a cease and desist letter or an infringement letter. A cease and desist letter is a legal remedy commonly used in practice to bring an infringement of a trademark right or other intellectual property right to an end. The notification shall contain an explanation of the infringement committed and it shall request voluntary termination of the infringement. In the event that the infringer does not cease the infringement, the right party has the right to take further action in order to be able to defend his/her legitimate rights. Sending a cease and desist letter is a cheaper option than initiating legal proceedings.

A large number of intellectual property rights infringements are committed in a very unconscious manner, and in most cases, after the infringers have received a warning letter, the infringement is terminated and no further proceedings are initiated. For more information on preparing a cease and desist letter or a so-called notice of termination of an infringement, you can see the publication “Cease and desist letter” on the website.

If the cease and desist letter does not give the desired results and the infringement of the earlier trademark right is not suspended, further action is recommended, taking into account the methods described below.

Notifying the Patent Office of the Republic of Bulgaria with information about the infringement (procedure for exercising administrative penal liability)

Who has the right to notify the Patent Office of the Republic of Bulgaria?

• The proprietor of a registered trademark or entered user of a registered geographical indication;
• The joint-proprietor of the trademark without the consent of the other joint-proprietors;
• The licensee of an exclusive license;
• The licensee of a non-exclusive license with the consent of the proprietor, unless otherwise provided in the agreement;
• A person entitled to use a collective mark with the consent of its proprietor.

The proprietor of a registered trademark has the right to notify the Patent Office of the Republic of Bulgaria with information about the infringement of the trademark right. The notification shall contain as much information as possible with regard to the mark, the infringer and the infringement itself. The infringement shall be established by an act drawn up by an official designated by an order of the President of the Patent Office, after conducting an examination. The official shall have the right to request access to the objects to be inspected and to request the necessary documents in reference to the inspections carried out and to take samples for expert evaluation. In the event of an established infringement, a penal decree is issued by the President of the Patent Office or by an official authorized by him. The penal decree may be appealed under the Administrative Violations and Sanctions Act. In case of an established violation, a fine of 2000 to 10000 BGN is imposed, and sole traders and legal entities are subject to a property sanction in the amount of 3,000 to 20,000 BGN. In the case of repeated infringement, a fine of 3,000 to 15,000 BGN is imposed, and sole proprietors and legal entities are subject to a property sanction in the amount of 5,000 to 30,000 BGN. The goods, regardless of whose ownership they are, are forfeited in favor of the state and handed over for destruction and the trademark proprietor or a person authorized by him may be present at the destruction.

Both types of penalties – fine and property sanction – shall be enforced voluntarily within seven days of the entry into force of the penal decree, the amount being deposited in the cashier or transferred to the account of the Patent Office. After the expiration of the seven-day period, in the case of lack of voluntary enforcement, a copy of the penal decree shall be sent to the National Revenue Agency for enforcement of the imposed fine or property sanction under the procedure of the Tax and Social Security Procedure Code. Following the entry into force of the penal decree or the court’s decision, goods forfeited in favor of the state are handed over for destruction to the Ministry of Interior.

Civil law defense by filing a claim at the Sofia City Court

Civil protection is realized by filing a claim for infringement in the Sofia City Court by the trademark proprietor or the licensee of an exclusive license. The licensee of a non-exclusive license may bring an action only with the consent of the proprietor unless otherwise agreed in the agreement.

Who is entitled to a claim?

• The proprietor of the trademark;
• Licensee with the consent of the proprietor, unless otherwise provided in the agreement;
• Licensee of an exclusive license if the proprietor of the trademark, having been duly notified of the infringement, does not himself file a claim within 6 months of receiving of the written invitation from the licensee;
• The joint-proprietor of the trademark without the consent of the other joint-proprietors;
• The actual proprietor of a trademark which has been registered in the name of an agent or representative.

With the consent of the proprietor of a collective mark, any person who may use it may also file a claim. The consent of the proprietor is not required if, after being duly notified of the infringement, he does not file a claim within 6 months of the notification. Any registered user of a registered geographical indication is also entitled to a claim.

A professional protection body which is regularly recognized as a person entitled to represent the users of a specific registered geographical indication, a designation of food of traditional special character or a traditional designation of wine shall also have the right to file a claim.

Infringement actions may relate to:

1. ascertainment of the fact of infringement;
2. suspension of the act of infringement;
3. compensation for damages suffered;
4. expropriation and destruction of the goods which are subject to the infringement as well as of the means with which the infringement was carried out.

Along with the action, the claimant may likewise request through the court that:

1. the infringing articles are given to him;
2. the expenses are refunded to him for keeping and destroying the infringing articles;
3. the operative part of the court decision be announced, at the expense of the infringer, in two daily publications and during emission time of a national range TV organization as determined by the court.

Similarly, in the case of infringement of the trademark right or where there is sufficient information to believe that such infringement will be committed or any evidence will be lost, destroyed or hidden, the court, at the request of the rights holder or the licensee, may, without notifying the respondent allow any of the following measures:

1. prohibition of the performance of activities that constitute or will constitute, as contended, illegal use of a mark or geographical indication;
2. seizure of the goods that are contended to illegally bear a registered mark or geographical indication, as well as of any other evidence of importance for proving the infringement;
3. seizure of the material or means referred to in Art. 113 para. 2;
4. sealing of the premises where the infringement is or will be made, as contended.

In the case of infringement of the right to a registered trademark, compensation is due for all material and non-pecuniary damage and loss of benefits suffered, which are the direct and immediate consequence of the infringement. In determining the amount of compensation, the court shall also take into account all the circumstances surrounding the infringement as well as the profits of the infringer as a result of the infringement. The court determines fair compensation, which should have a deterrent effect and a warning to the offender and other members of the public. Where an action is well-founded but there is insufficient information as to its amount, the claimant may request the following compensation:

1. 500 to 100 000 levs, the concrete amount being fixed at the discretion of the court, subject to the provisions of Article 118 para. 2 and 3;
2. the equivalence in the money of the infringing products at retail prices of legally produced articles which are identical with or similar to the infringing goods.

Actions on the Initiative of the Customs Authorities

The customs authorities shall apply measures to goods under customs supervision or customs control which are alleged to infringe a trademark or geographical indication, under the conditions and procedures of Regulation (EU) No 608/2013. The safeguard measures shall apply to all goods presented to the customs authorities, whether or not they are placed under customs procedure, including goods in transit. When implementing the measures, the customs authorities shall collect fees to cover the cost of storage of the goods at an amount determined by the Council of Ministers in accordance with Art. 12 of the Customs Act.

Criminal defense by reporting to the prosecutor’s office

The use in the commercial activity of a mark subject to an exclusive right, without the consent of its proprietor and without a legal basis is a crime against intellectual property according to Art. 172b of the Criminal Code and is punishable by imprisonment of up to five years and a fine of up to five thousand leva. Where the infringement is repeated or significant harmful consequences are caused, the punishment shall be imprisonment of five to eight years and a fine of five thousand to eight thousand leva. The object of the crime is seized for the benefit of the state, regardless of whose ownership it is, and is destroyed. The way to protect the holder is by reporting a crime to the Prosecutor’s Office of the Republic of Bulgaria, as well as to the Ministry of Interior’s General Directorate National Police.

Filing a claim under the Law on Protection of Competition with the Competition Commission

According to Art. 35 para. 2 of the Law on Protection of Competition, any use of a trading name, mark or geographical indication identical or similar to those of other persons, in a manner that may lead to injuring the interests of competitors shall be prohibited. The proprietor of the trademark right may bring proceedings before the Commission for Protection of Competition by filing a claim. The limitation period for filing the claim shall be five years from the day of committing the infringement and in the case of continued infringement – from the day on which the infringement is terminated.

In case of an established infringement, the Commission shall adopt a decision whereby it shall impose pecuniary sanctions and/or fines or it imposes termination of the infringement. The property sanction imposed has an amount not exceeding 10% of the total turnover in the preceding financial year of an undertaking and the fine of individuals amounts from 500 to 50,000 BGN. When determining the amount of the fine the gravity and the duration of the infringement, the capacity in which the person has acted, as well as the mitigating and aggravating circumstances shall be taken into consideration.

In the case of infringement of a registered trademark right, it is advisable to seek the assistance of a specialist with experience in the field, as a thorough knowledge of the trademark law is required and a lot of things have to be taken into account when choosing the most appropriate measures of protecting a trademark in order the client achieve the desired result. An experienced trademark specialist will successfully ensure that you exercise your trademark rights, which is one of the most important duties of any trademark owner. The team of the law firm of Krassimira Kadieva will gladly assist you in the protection of your trademark by providing professional advice and initiating procedures for the protection of your trademark before the relevant competent authorities in order to achieve a cessation of the infringement of the trademark right, as one of the the most frequently ordered services in the past years in our practice are the services related to trademark protection.

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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 clients in protection and registration of all types of trademarks by providing professional advice, preparation of all necessary documents and initiation of procedures before the competent authorities.