I. Introduction
This publication will provide more information on the acquired distinctiveness of a mark as a result of use.
According to Art. 11, para 1, items 2, 3 and 4 of the Bulgarian Law on Marks and Geographical Indications and Art. 7, paragraph 1, items b, c and d of Regulation 1001/2017, the following shall not be registered:
– a trademark which is not distinctive;
– a trademark which consists exclusively of signs or indications which have become customary in the language spoken or in the established commercial practice in respect of the goods or services applied for;
– a trademark consisting exclusively of signs or indications indicating the type, quality, quantity, purpose, value, geographical origin, the time or method of production of the goods, the way in which the services are provided, or other characteristics of the goods or services.
In case the expertise on absolute grounds for refusal of the experts at the Patent Office of the Republic of Bulgaria, when an application for registration of a national trademark has been filed or at the EUIPO if a European Union trademark has been filed for registration, determines inadmissibility of the registration of the trademark in respect of all or part of the goods and/or services, the applicant shall be notified of the refusal of registration. The notification shall state all the grounds and reasons for the refusal and the applicant shall be provided an opportunity to lodge an objection.
When a refusal has been issued on the above-mentioned grounds laid down in the provisions of Art. 11, para 1, items 2, 3 and 4 of the Law on Marks and Geographical Indications and Art. 7, paragraph 1, items b, c and d of Regulation 1001/2017, the refusal can be overcome and the trademark may be registered, although it does not meet the requirements of those provisions if it is established that, as a result of its use, the trademark has acquired distinctiveness for the goods or services for which registration is sought before the date of application. This is enshrined in the provisions of Article 11, paragraph 2 of the Law on Marks and Geographical Indications, and Article 7, paragraph 3 of Regulation 1001/2017.
Art. 11, para 2 of the Law on Marks and Geographical Indications and Art. 7, paragraph 3 of Regulation 1001/2017 are rather an exception to the rules laid down in Art. 11, para 1, items 2, 3, and 4 of the Law on Marks and Geographical Indications and Art. 7, paragraph 1, items b, c, and d of Regulation 1001/2017.
II. Prooving of the acquired distinctiveness of a trademark through the use
1. What is the effect of proving the acquired distinctiveness of a trademark through use?
If an acquired distinctiveness is proved as a result of use, this means that although the trademark does not have an inherent distinctive character with regard to the goods and/or services for which it is applied for registration, due to the use of the mark on the market, a significant part of the relevant consumers perceives the trademark as identification for the origin from a specific person in relation to the respective goods/services. A trademark that has been registered because it has been proved that it has acquired distinctiveness as a result of use shall enjoy the same protection as any other trademark which, on examination, has been deemed suitable for registration.
2. Goods and services
An acquired distinctive character shall be proved for all of the goods and services for which the trademark has been filed for registration. In case only for some of the goods and/or services in the application the acquired distinctiveness as a result of use has been proved, the refusal on absolute grounds will be overcome only in respect of the goods and/or services for which the acquired distinctiveness has been proved, and for the remaining goods/services in the application, the registration of the mark will be refused.
3. Proving of acquired distinctiveness of a trademark through use
Evidence of the distinctive character acquired must be examined and analyzed in its entirety, the market share of the trademark is also essential, as well as the duration, frequency, and intensity of use of the trademark. The evidence should show that a significant proportion of the relevant consumers can distinguish the goods or services as originating from the specific person who has filed the mark for registration. It is important to note that evidence from countries outside Bulgaria, when proving distinctiveness for a national trademark, and respectively evidence outside the EU, when proving acquired distinctiveness in relation to an EU trademark before the EU Intellectual Property Office are irrelevant and will not be taken into account, unless from the evidence in question conclusions can be drawn about the use of the mark on the territory of the Republic of Bulgaria, respectively in the EU.
When proving distinctive character as a result of use, the evidence must prove that the distinctive character was acquired through use before the date of filing of the application for registration of the trademark in question. This, of course, does not mean that evidence after the filing date cannot be provided and taken into account, but it does allow conclusions to be drawn as to what the situation was on the relevant filing date. Therefore, such evidence should also be assessed and its weight determined.
4. Standard of proof
The evidence should be clear and convincing and clearly show that the trademark has been used as a trademark of origin and that a significant proportion of consumers perceive the trademark as a way of identifying specific goods or services as originating from a particular undertaking.
5. Duration of use
The evidence shall show in a clear manner when the use of the trademark has started. The evidence shall prove that the use of the mark has been continuous or, if there is an interruption, the reasons for the interruption of the use shall be stated. The longer the use of the trademark, the more likely it is that the request for acquired distinctiveness through use to be respected.
6. Evaluation of the evidence
When proving an acquired distinctiveness as a result of use, the following circumstances are relevant and should be proved:
- the market share of the trademark in relation to the goods or services concerned;
- degree, geographical scope, and duration of the use of the trademark;
- the amount of investment made for promoting the trademark for the goods or services concerned;
- the part of the relevant consumers who, thanks to the trademark, recognize the goods or services as originating from a particular undertaking.
The main evidence that can help the above circumstances to be proved are the following:
- invoices;
- sales brochures;
- catalogs;
- price lists;
- annual reports;
- turnover data;
- advertising investment data and reports;
- advertisements (any kind of advertising), together with evidence of their intensity and scope;
- market research;
- customer surveys;
- affidavits.
Declarations and/or statements of professional associations, consumer organizations, competitors, and certification and award organizations: This evidence is one of the most important and has the greatest weight in proving the acquired distinctiveness as a result of using the trademark. In those documents, the trademark shall be clearly identified.
Opinion polls and surveys: If neutral and correct, public opinion polls and surveys on the degree of recognition of the trademark by the relevant consumers are also considered to be one of the most important pieces of evidence for proving acquired distinctiveness. This is because it proves how the mark is perceived by consumers. In order for a survey to be neutral and correct, guiding questions should be avoided, non-representative excerpts from the consumer group should be avoided, as well as unnecessary editing of the answers, as the probative value of the survey may be undermined.
Invoices, annual reports, advertising costs, magazines, and catalogs: Along with professional associations’ declarations, market surveys and opinion polls, invoices, advertising costs, magazines, and catalogs are the other categories of evidence that is important in proving acquired distinctiveness. The invoices prove the realized turnover and hence the market share of the trademark in relation to the goods and/or services. Investments in advertising are also important, as this promotes the trademark. The specific values of the realized turnover and/or the amount invested in advertising should be indicated separately and by years, as well as their connection with the respective trademark and the goods and/or services.
Declarations, affidavits, and written statements: Declarations, affidavits, and written statements are also considered valid evidence.
Documents from suppliers or distributors: This evidence is given less weight as it is considered that this evidence comes from suppliers and distributors to not present an independent point of view.
Cease and desist letters: Cease and desist letters of infringements against competitors for the use of the trademark is also considered valid evidence.
7. Determining the probative value of the evidence provided
In conclusion, it is important to note that in order to determine the probative value of a document, it is necessary to take into account its authenticity, as well as the person who has issued the document in question, the circumstances in which it was drawn up and whether the document is authentic. Furthermore, in order to prove the acquired distinctiveness of a trademark as a result of use, it is not sufficient to provide only one type of evidence, as in most cases, only one type of evidence without additional information is not sufficient to make conclusions about the use of a trademark. It is, therefore, necessary to provide as much different evidence as possible, which must indisputably indicate when the use of the mark started and the specific period(s) of use, in order to establish whether the trademark has acquired distinctiveness before the date of submission of the application for registration for the goods and/or services in the application.
Due to the above-mentioned peculiarities in the preparation and submission of a response (objection) against a refusal of a trademark on the absolute grounds, it is advisable to seek assistance from an intellectual property specialist with experience in this matter. The team of the law firm of Krassimira Kadieva will gladly assist you in proving an acquired distinctiveness of a trademark as a result of use.
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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide information about prooving acquired distinctiveness of a trademark through use. 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 attorney in Bulgaria Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.