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 publication will provide more information about the refusal of registration of a trademark on absolute grounds and what is the procedure for protection when the trademark has been refused on absolute grounds.
Firstly, it is important to note that once the application for registration of the trademark has been filed, a formal examination is carried out where the examination verifies whether the trademark application contains the request for application for registration of the mark, the name and address of the applicant, representation of the mark and a list of the goods and/or services for which registration is sought, as well as a proof of payment of the state fees. Once the application for registration of the mark successfully passes the formal expertise within three months, the so-called substantive examination is carried out. During the substantive examination, the experts analyze whether the mark falls within the scope of Art. 11 of the Law on Marks and Geographical Indications, which regulates the absolute grounds for refusal of the registration of a trademark. Each of the absolute grounds for refusal of registration of a trademark will not be discussed in this article, as they have been described in detail in a separate publication titled “Absolute grounds for refusal of registration of a trademark”.
The examination under Article 11 of the Law on Marks and Geographical Indications of the mark applied for registration shall be carried out in the following databases and information sources, but not only: the database of the International Bureau of Coat of Arms, Flags or other symbols of the Member States of the Paris Convention, as well as the International Bureau of Coats of Arms, Flags or other symbols, abbreviations or names of international intergovernmental organizations, announced under Art. 6 ter of the Paris Convention; list and catalog of the Ministry of Culture of the historical and cultural monuments of the Republic of Bulgaria; lists of the World Health Organization’s recommended free names for pharmaceutical substances; the trademark databases of the Patent Office of Republic of Bulgaria; databases of the Patent Office containing the varieties of plants and animal species registered and applied for registration; databases of the geographical indications registered and applied for registration under the national order; the designations of origin registered under the Lisbon Agreement; the registered and applied for registration designations of origin and geographical indications for agricultural products and foods, wines and spirits in accordance with European Union regulations, as well as under bilateral treaties between the European Union and third countries; dictionaries, encyclopedias and other sources of information, including those available on the Internet.
In the event that after the analysis of the results of the examination under Article 11 of the LMGI inadmissibility of registration has been found in respect of all or part of the goods and/or services, notification of refusal of registration shall be sent to the applicant. The notification shall state all of the grounds and reasons for the refusal and the applicant shall be given a period of two months to object. Attention should be paid to the fact that in order to avoid the refusal of registration of the trademark on absolute grounds, it is advisable to consult a specialist with knowledge and experience on trademark law. In this way the specialist will conduct a trademark clearance in order to assess the risk of refusal of the application on absolute grounds and if there is a risk to advice you what shall be changed in the trademark, so that it successfully passes the examination on absolute grounds.
In which cases can the refusal be overcome?
Upon receipt of the notice of refusal of registration of the mark on absolute grounds, the applicant has two months to respond.
In certain cases, the refusal can be overcome. Of course, it is important to note that in some cases refusals cannot be overcome. This depends mainly on the grounds on which the mark has been refused: whether the mark is descriptive, whether it contains coats of arms or flags, whether it is contrary to public policy or to accepted principles of morality. For example, in case that a mark has been refused because it falls within the scope of Article 11, paragraph 1, p. 6 of the LMGI and it contradicts good manners, refusal of this kind is extremely difficult to be overcome.
However, there are cases in which the refusal of registration can be overcome. The refusal on absolute grounds can be overcome in the following cases:
- when the objection submitted by the applicant within the two-month period is well-founded;
- when evidence of the acquired distinctiveness of the mark as a result of use has been provided in respect of the goods or services for which the mark has been filed for registration. It is important to note: the refusal of the application for registration of a trademark will be overcome if the proprietor of the mark proves that the mark has acquired distinctiveness as a result of use only in the event that the mark has been refused on the grounds of Art. 11, Para.1, p. 2, 3 and 4 of the LMGI. The acquired distinctiveness of the mark as a result of use in relation to the goods or services for which it has been filed for registration will be examined in detail in a separate publication;
- when consent has been given by a competent authority. It is also important to mention here that the refusal of an application for registration of a mark will be overcome in the event that the proprietor of the mark provides a consent of the relevant competent authority only in those cases where the mark is refused on the grounds of Article 11, Para. 1, items 8, 9, 10 and 11 of the LMGI;
- when the applicant of a trademark, that contains a previously filed or registered under the LMGI geographical indication, is entered user of the geographical indication the provision of Article 11, paragraph 1, item 12 of the LMGI does not apply;
- when the applicant restricts the list of goods and/or services in the application to those meeting the specification of the registered good and/or services under the European Union law or International agreements to which the EU is a party, geographical indications, food with traditionally specific character and traditional names for wines, if the trademark has been refused on the grounds of Article 11, Paragraph 1, items 12, 13, 14 of the LMGI.
In which cases would the registration of the mark be completely or partially refused?
A decision will be taken for refusal of the registration of the mark either completely or partially where, as a result of the substantive examination carried out, the inadmissibility of the registration has been established and within three months the applicant:
- Has not responded;
- Has objected unfoundedly;
- Has not presented evidence of acquired distinctiveness under Art. 11, para. 2 of the LMGI;
- Has not obtained the consent of the competent authority according to Art. 11, para. 3 of the LMGI;
- Has not restricted the list of goods and/or services.
In the event of partial refusal, the applicant may, within one month of receipt of the decision or during the appeal proceedings against the decision, file a request for division of the application. The decision on full or partial refusal shall be taken by the state expert, who shall carry out the substantive examination no later than one month after the expiry of the three-month period for objection.
An appeal against the decision on the full or partial refusal of the trademark registration
An appeal against the decision on the full or partial refusal of the registration of a trademark may be lodged within two months of notification of the decision. The appeal against the decision for full or partial refusal is considered by the Board of Appeal at the Patent Office of the Republic of Bulgaria. In the event that the appeal is well-founded, the decision shall be reversed and a new decision shall be issued where the application shall be returned for reconsideration or the mark to be registered or the proceedings resumed. When a decision to refuse the re-examination of the application is revoked, a substantive decision is taken. Where the appeal is unfounded, a decision is affirmed to confirm the decision for refusal of the registration of the trademark. Where the examination of appeals assesses the existence of grounds for refusal of registration of a trademark other than those in the contested decision, or the existence of grounds for refusal of registration for goods or services other than those refused, the decision under Art. 47, para. 3 of the LMGI is canceled and the application is returned for reconsideration.
The decision of the Board of Appeal to confirm the decision refusing registration may be appealed before the Administrative Court – Sofia City within two months from the notification.
Due to the above-mentioned peculiarities, it is advisable to seek the assistance of an intellectual property expert with experience in this matter when drafting and submitting a response (objection) against a refusal of a trademark on the absolute grounds for refusal. The team of the law firm of Krasimira Kadieva will gladly assist you in the preparation and filing of a response (objection) against a refusal on absolute grounds by providing professional advice and preparation of all necessary documents, not only when you have filed an application for registration of a national trademark at the Patent Office of the Republic of Bulgaria, but also an European Union trademark at the European Union Intellectual Property Office (EUIPO).
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 aims to provide more information about the refusal of registration of a trademark on absolute grounds. 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.