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.
Many trademarks have been registered over the years and more and more applications for trademarks are submitted every day. This often leads to a conflict of interests between different competitors.
Following the amendments made in March 2011 of the Law on Marks and Geographical Indications (LMGI), a trademark opposition procedure, the so-called opposition system, was introduced. Under this system, the experts in the Patent Office of the Republic of Bulgaria do not check for the existence of earlier trademarks. They only carry out expertise on the merits of applications for registration of trademarks only on absolute grounds for refusal. In case the mark does not fall within the scope of Art. 11 of the LMGI, the application is published in the Official Bulletin of the Patent Office. Therefore, apart from successful marketing, the most important task of any proprietor of a trademark is also to maintain that trademark through the years. Therefore, it is necessary to carry out the so-called “trademark monitoring” so that opposition can be organized in time if attempts to register an identical or similar mark are made.
The purpose of this publication is to provide more information on the opposition to a national trademark application filed at the Patent Office of the Republic of Bulgaria.
1. Who has the legal right to file an opposition against the registration of a trademark in Bulgaria?
An opposition may be filed by:
- the proprietor of an earlier trademark acc. to Art. 12, para. 2 and 3 of the Law on Marks and Geographical Indications, the co-owner without the consent of the other owner or the licensee of an exclusive license of the earlier trademark;
- the actual proprietor of an unregistered trademark which is used in the commercial activity on the territory of the Republic of Bulgaria and for which an application for registration has been filed and fees under Article 42, paragraph 6 are paid;
- the actual proprietor of the trademark, where the applicant has acted in bad faith and this has been established by a judgment entered into force;
- the proprietor of a mark applied for in the name of an agent or representative of the proprietor without his consent;
- the trader who claims that the mark consists of or contains the name of his company;
- the person who, under the relevant legislation, may exercise the right to prohibit the use of a trademark on the basis of a previously registered geographical indication.
The opposition may also be filed by an industrial property representative authorized by the above-mentioned persons.
2. When an opposition against a trademark application be filed?
Within a period of three months of the publication of the application for registration of a national trademark in the Official Bulletin of the Patent Office, the opposition may be filed against the registration of a mark filed under the Law on Marks and Geographical Indications, respectively against the recognition of the effect of international registration of a trademark on the territory of the Republic Bulgaria. The opposition against recognition of the effect of an international registration shall be filed between the sixth and the ninth month of the publication of the international registration in the Official Bulletin of the Patent Office.
3. How can the opposition be filed?
The opposition shall be filed at the Patent Office in one of the following ways, namely: directly, by mail, by fax, by means of a communication tool transmitting an electronic copy, or by electronic means through the electronic portal of the Patent Office. In the event that the opposition is submitted by fax or by communication tool transmitting an electronic copy, the original of the opposition must be received by the Patent Office within one month from the receipt of the fax or the electronic copy. When the original is not received within the specified period, the opposition shall be deemed not to have been filed and the person who submitted it shall be notified.
4. What should an opposition contain in order to be admissible?
The opposition should include:
1. information about the opponent;
2. information about the legal interest;
3. the application number, the name of the trademark, and the goods or services;
4. grounds and motives.
The opposition shall:
1. be based on one or more earlier rights, provided that they belong to the same person;
2. be based on part or all of the goods or services to which the earlier right relates;
3. be directed against all or part of the goods or services of the disputed mark.
It is important to note that the opposition must be submitted in the Bulgarian language in duplicate, except when submitted electronically with a qualified electronic signature and be accompanied by all evidence of the alleged facts and circumstances. A document on paid state fees should be attached to the opposition, as well as a court certificate for the proceedings initiated or a judgment entered into force when the opposition is under Art. 12, para. 5 of the LMGI.
5. Stages of the opposition proceedings
Within three days of receipt of the opposition, the applicant and the opponent shall be informed of its receipt. Within seven days after the expiry of the three-month period for submission of opposition, an admissibility check of the opposition shall be carried out. In case the opposition is inadmissible, no proceedings are initiated. Where the opposition is admissible, a formal regularity examination of the opposition shall be carried out within seven days. In the event that deficiencies are found, the opponent shall be given a two-month period for their removal. If the deficiencies are not remedied within the provided time period, a decision shall be made to terminate the proceedings. Within seven days of the completion of the verification of the admissibility and formal regularity of the opposition, the applicant for the mark and the opponent shall be informed of the opposition proceedings initiated where a copy of the opposition is being sent to the applicant together with the evidence. A three-month period for reaching an agreement shall be given to the parties, which shall run from the date of dispatch of the notifications. This period may be extended twice by three months at the written request of the parties, submitted before the expiry of the relevant three-month period. When the parties deposit an agreement within the time limit, a decision shall be issued to terminate the opposition proceedings, which shall be sent to the parties within three days of its adoption. In the case of a deposited agreement, half of the state fee paid for the opposition shall be refunded to the person who submitted it, upon request. In the event that no agreement is reached between the parties, the applicant shall be given a two-month time limit to respond to the opposition. This period may be extended once by two months. Where the applicant fails to submit a reply within the time allowed, a decision shall be made on the basis of the opposition and the evidence attached thereto. When the applicant replies, the reply is sent to the opponent, giving him one month’s time to deposit a written opinion. The opponent’s opinion shall be sent to the applicant for reply only if it contains new facts and circumstances and new evidence.
Several peculiarities shall be mentioned:
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The new Law on Marks and Geographical Indications provides for the possibility the application to be divided if an opposition has been filed, which possibility was not provided in the repealed Law on Marks and Geographical Indications. The new LMGI provides that when the opposition is filed against a part of the goods or services of the application for registration of a trademark, within the period after the expiry of the term under Article 52, paragraph 1 and before the expiry of the term under Article 57, paragraph 6 the applicant may request the division of the application.
- The applicant may restrict the list of goods and/or services or withdraw the application in response to the opposition. In the event that a restriction on the goods and/or services has been made, the opponent shall be notified of the restriction, giving him one month’s opinion period to indicate whether he supports or withdraws the opposition. When the opponent withdraws the opposition within the time allowed, the experts shall issue a decision to terminate the proceedings, which shall be sent to the parties within three days of its adoption. Alternatively, when the applicant withdraws the application, the experts shall issue a decision terminating the opposition, which shall be sent to the parties within three days of its adoption.
- In response to the opposition and in fulfilling the requirements of Art. 58, para. 1 of the Law on Marks and Geographical Indications, the applicant has the right to ask the opponent to provide evidence for the actual use of the earlier mark on which the opposition is based, for the period of five years preceding the publication of the application, respectively of the international registration, or evidence that there are good reasons for its non-use, provided that the earlier mark was registered at least five years before the date of submission of the opposition. The time allowed to the opponent to provide evidence of actual use of the mark or of a good reason for its non-use is two months. The evidence shall be sent to the applicant, providing him a period of one month to give his opinion.
Within three months of the end of the exchange of correspondence between the parties, the experts shall consider the opposition, the opinions of the applicant, respectively of the holder of the international registration – an object of the opposition, and of the opponent, as well as the evidence presented and issue a decision.
When the experts consider that the opposition is justified, a decision shall be issued for the total or partial refusal of registration of the trademark, which has been the object of opposition. In case of a partial refusal, the proceedings on the application shall continue in accordance with the procedure of Art. 38f of the LMGI regarding the goods and/or services for which the mark may be registered, a notification of payment of registration, publication, and certification fees shall be sent to the applicant, providing him a period of one month for making the payment. The fees may be paid in duplicate up to one month after the expiry of the time period. When the fees are successfully paid, within one month a decision is made to register the mark. The mark is entered in the State Register of Marks, is published in the Official Bulletin of the Patent Office, and a certificate of registration is issued to the applicant.
When the experts consider that the opposition has not been justified, a decision is made to reject it. The decision shall be sent to the parties within three days of its delivery.
The decisions of the Patent Office’s Opposition Division may be appealed to the Patent Office’s Disputes Division within two months of notification of the decision. The decisions of the Dispute Division of the Patent Office can be appealed to the Administrative Court – Sofia City within three months. The decisions of the Administrative Court – Sofia City can be appealed before the Supreme Administrative Court within fourteen days.
Due to the above-mentioned peculiarities, it is advisable to seek the assistance of an intellectual property specialist with experience in this matter when drafting and filing opposition against the registration of a trademark in Bulgaria. The team of the law firm of Krasimira Kadieva will gladly assist you in the preparation and filing of an opposition, as well as in the representation in the opposition proceedings by providing professional advice and preparation of all necessary documents. The team of the law firm of Krasimira Kadieva will gladly assist you in representing you in opposition proceedings in case an opposition was filed against your application for registration of a trademark.
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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to describe the opposition procedure against an application for registration of a trademark in Bulgaria. 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 all types of trademark registrations by providing professional advice and preparation of all necessary documents.