The Official Section of the State Gazette No. 98 of December 13, 2019, promulgates the new Law on Marks and Geographical Indications (LMGI), which was adopted by the National Assembly on November 28, 2019. The law comes into force three days after its promulgation. The Council of Ministers shall, within 6 months from the entry into force of the law, adopt the by-laws on its implementation. Pending their adoption, the by-laws governing the implementation of the repealed Law on Marks and Geographical Indications shall apply, insofar as they are not contrary to the law.
The new LMGI was adopted in connection with the commitment of the Republic of Bulgaria to transpose into the national legislation Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of Member States relating to trademarks. Furthermore, the adoption of the law aligns the legislation with the requirements of Regulation (EU) 1151/2012 of the European Parliament and of the Council on agricultural and food quality schemes.
I. Scope
Firstly, it is important to note that the new LMGI applies to applications for registration of marks and geographical indications for which no decision has come into force until its entry into force. In addition, the new LMGI applies to applications for revocation and cancellation of registration of marks and geographical indications on which no decision has come into force until its entry into force.
II. Changes related to trademarks
- Change of the definition of “trademark”
Among the most significant changes in the change of the legal definition of a “trademark”. Under the new law, “a mark is a sign capable of distinguishing the goods or services of one person from those of others and may be represented 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 to the holder. Such signs may include, for example, words, including the names of persons, letters, numbers, figures, the shape of the goods or their packaging, colors, sounds, or any combination of such signs.
It is noteworthy that the requirement for a graphic representation of the mark has been removed from the definition of a “trademark”, which was previously required by the repealed Law on Marks and Geographical Indications. Under the new law, it is permissible for the mark to be represented in any way that allows it to be reproduced in a clear, accurate, autonomous, easily accessible, understandable, sustainable and tangible way by using publicly available technology.
By removing the requirement for graphic representation of the mark, it is possible to register new types of marks, such as multimedia marks, holograms, mark containing movement and other types of marks, as long as the applicant can file the mark applied for in any suitable form, using publicly available technology, as long as it can be reproduced in the register in a clear, accurate, self-contained, easily accessible, understandable, durable and objective way to enable competent authorities and the public to define clearly and precisely the subject matter of the protection granted to its holder.
It is important to note that the mark for service is missing.
Under the new LMGI, the mark is a trademark, collective mark, and certification mark.
- Changes as regards to the absolute grounds for refusal
Several changes have been made to the absolute grounds for refusal.
2.1 It is envisaged that no sign shall be registered if it consists exclusively of the shape of the goods or any other characteristic which derives from the nature of the goods themselves; the shape of the good or other characteristics necessary to achieve a technical result, and the shape of the good or other characteristics that give significant value to the good. According to the repealed Law on Marks and Geographical Indications, the prohibitions concern only the shape of the good. The addition of “other features” is dictated by the removal of the requirement for a graphical representation.
2.2 The provisions of Article 11, paragraph 1, p. 12, 13, and 14 contain a reference to the European Union legislation and international agreements providing for the protection of geographical indications, traditional specialties, and traditional wine names respectively.
2.3 A new ground of refusal has also been introduced to refuse the registration of a trademark consisting of or reproducing in its essential elements, the name of an earlier plant variety registered under national, European Union or International law, under which the Republic of Bulgaria and the European Union are parties granting legal protection of the plant varieties when the mark and the plant variety refer to identical or closely related species.
- Changes as regards to the relative grounds for refusal
3.1 Regarding the relative grounds for refusal, one of the changes relates to the trademark with a reputation by extending the protection beyond goods and services which are not identical or similar to those for which the earlier trademark is also registered as well as for identical and similar goods and services. Also, in the case of the repealed Law on marks and Geographical Indications, the mark should have been known in the territory of the Republic of Bulgaria, while in the new LMGI the mark has to be known in the territory of the Republic of Bulgaria, or in the case of a European Union trademark – within the territory of the European Union.
3.2 Some new provisions have been introduced to allow the opposition to be filed by:
- The actual owner of the mark, when the applicant acted in bad faith when filing the application, which was established by an enforceable judgment;
- А trader, when the mark applied for consists or contains his company name, which was used in the Republic of Bulgaria before the date of submission of the application for registration in connection with identical or similar goods or services;
- A person authorized under the relevant legislation where the use of the mark may be prohibited on the basis of a previously registered geographical indication.
3.3 Finally, attention should also be paid to Article 12, Paragraph 4, which is an amendment to Article 12, Paragraph 6 of the repealed Law on Marks and Geographical Indications. According to Article 12, paragraph 4 of the new LMGI, “opposition, filed by the actual owner of a non-registered trademark used in the commercial activity on the territory of the Republic of Bulgaria, a trademark is not registered when it is identical or similar to the unregistered trademark and is intended for goods or services which are identical or similar to those for which the unregistered trademark is used and in respect of which an application for registration has been filed, provided that the unregistered trademark was actually used before the date on which the trademark was filed and the application for registration or the priority date of the later mark and this use continues until the opposition is filed”
- Other changes
4.1 Upfront payment of the official fee: The whole amount of the state fee is paid at once at the beginning of the procedure (after the submission of the application for registration of the trademark).
4.2 Expanding the information on applications and registrations of trademarks in the State Register:
In the State Register of Trade Marks the information on applications and registrations of trademarks is expanded, including information about withdrawal of the application, termination of the proceedings under the application or refusal pursuant to Article 47, paragraph 3; information for splitting the application; information that the mark has been registered as a result of a proven distinctiveness in respect of part or all of the goods or services of the International classification of goods and services (ICGS) for which it was applied for; information on renewal of trademark registration; information on termination of registration of a trade mark; information on opposition filed – date of filing, name, and address of the person who filed the opposition, decision on the opposition; information about initiated proceedings for revocation or cancellation of the registration of the mark – the date of filing, the name of the person who requested the filing, decision; information on cancellation of trademark registration and the date from which it takes effect; information on replacement of the registration of a mark with an international registration; information about changing the name and/or address of the applicant, respectively the owner of the trade mark, transfer, license agreement, enforcement, special pledge, insolvency, etc.
4.3 Claim for a Conventional Priority: A claim for a Conventional Priority should be made by filing the application stating the date and country of the previous application and paying a state priority fee. Within two months of the date of filing, the applicant shall submit a priority document issued by the competent authority of the country in which the previous application was submitted. With the repealed Law on Marks and Geographical Indications, the claim for a conventional priority had to be made within two months from the date of filing and priority documents had to be submitted within three months of filing and priority fee had to be paid within this period (3 months after filing the application).
4.4 Claim for an Exhibition Priority: A claim for an exhibition priority should be made by filing the application, stating the date of exposure and the country in which the exhibition is organized and in which the state priority fee is paid. Within two months from the date of filing the application, the applicant shall submit a document issued by the administration of the exhibition, proving the date of exposure of the goods or services marked with the mark applied for. With the repealed Law on marks and Geographical Indications, the claim for exhibition priority had to be made within two months from the date of submission of the application and a document issued by the administration of the exhibition proving the date of exposure of the goods or services marked with the trademark file for registration should have been provided within three months of submission of the application. Also, the priority fee was paid within three months of submitting the application.
4.5 Deadline for filing of objections: According to Article 51, paragraph 1 of the new LMGI when there is an opposition filed, or objection against the registration of the mark or against the recognition of the effect of the international registration of a mark in the territory of the Republic of Bulgaria on the grounds of Article 11, for collective and certification marks – on the grounds of Art. 39, paragraph 5, respectively Art. 40, paragraph. 4 may be filed pending the completion of opposition proceedings.
4.6 Possibility for reimbursement of paid state fee: When depositing an agreement in opposition proceedings, according to Article 57, paragraph 3, the person who filed the opposition has the right to demand that half of the paid state fee to be reimbursed.
4.7 Possibility for a division of the application: The possibility of division of the application in case of opposition was not regulated 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 and services of the application for registration of a mark 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 subject of a divisional application can only be uncontested in the opposition goods and services included in the original application.
4.8 Possibility of a division of the registration: An opportunity has been introduced to divide the registration in Article 68, paragraph 1 of the LMGI, according to which provision the registration may be divided by the owner of the mark by declaring that part of the goods or services included in the initial registration will be subject of one or more separate registrations. Goods or services in the divisional registration shall not overlap with the goods or services which remain in the original registration or those which are included in other divisional registrations.
4.9 Renewal of the examination on the merits: Except for the cases under Article 75, paragraph. 2 and 9, pending the decision on the application, the inspection under Article 11 may be renewed ex officio by a state expert.
4.10 Changes in the name and address of the applicant or owner: The applicant, respectively the owner, of a trademark is obliged to notify the Patent Office of any change in his name and address within one month of the change. According to the repealed LMGI that period was three months.
4.11 Information on the expiry of trademark registration: Article 65, paragraph 7 provides that the Patent Office shall inform the owner or his representative of the registration expiry at least 6 months before that.
4.12 Administrative offenses and penalties: Article 127, paragraph 1 to 3 regulates the administrative offenses and specifies the amount of the fine or the property sanctions for committing the administrative offenses referred to in those provisions, as well as introduce new forms of administrative offenses. According to the new LMGI, the amount of the fine or property sanction has been increased significantly, with the fine ranging from BGN 2,000 to 10,000 and the property sanction ranging from BGN 3,000 to 20,000. In the repealed LMGI the fine was from BGN 500 to 1500 and the property sanction – from BGN 1000 to 3000. In case of a repeated offense, the fine is from BGN 3,000 to 15,000 and the property sanction is from BGN 5,000 to 30,000, while under the repealed law the amount of the fine was from BGN 1500 to 3000 and the property sanction – from BGN 3000 to 5000. In addition, under the new LMGI, the provisions governing administrative offenses and penalty also apply to goods that transit through the territory of the Republic of Bulgaria, while this was not the case with the repealed LMGI.
III. Changes to geographical indications
5.1 The registrations of geographical indications under the LMGI for spirit drinks, which fall within the scope of Regulation (EU) 110/2008 for products under the Article 92, paragraph 1 of Regulation (EU) 1308/2013 and for aromatized wine products falling within the scope of Regulation (EU) 251/2014 shall be ceased on the date of entry into force of the new LMGI.
5.2 Proceedings for applications for registration of a geographical indication for spirit drinks covered by Regulation (EC) No 110/2008, for products under Article 92, paragraph 1 of Regulation (EU) 1308/2013 and for aromatized wine products falling within the scope of Regulation (EU) 251/2014 or on applications for the registration of a user of such geographical indication under which the entering into force of the new LMGI has no effective decision, are terminated.
5.3 No administrative criminal proceedings shall be instituted and the proceedings that are already instituted shall be terminated for infringements of rights over registered geographical indications for agricultural products and foods covered by Regulation (EU) 1151/2012 committed before the entry into force of the new LMGI.
5.4 Within three days of the entry into force of the new LMGI, the Patent Office shall notify the International Bureau of the termination of national registrations of geographical indications on the grounds of which international registrations have been made.
5.5 Article 91 paragraphs 2 and 3 of the new LMGI provide for two entirely new grounds for termination of the legal protection of a registered geographical indication, namely: – when the legal entity is terminated – sole beneficiary without succession; – when the sole registered user of a geographical indication relinquishes his right of use. In the repealed LMGI was provided only one ground for termination of legal protection: when the relationship between the qualities or features of the product and the geographical environment is ceased. This ground has not been changed and is enshrined in the provision of Article 91, paragraph 1 of the new LMGI.
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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide more information about the most significant changes to the new Law on Marks and Geographical Indications that has been adopted. 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.