Absolute grounds for refusal of registration of a trademark

Author: Boyana Boyadzhieva

Registered trademarks are critical assets that help businesses distinguish their goods or services from those of their other competitors, while giving them the right to oppose the use of similar and/or identical marks to their mark by others for identical or similar goods and/or services within the territory where the mark is registered.

However, not all trademark registration applications go through the registration procedure without any problems (comprehensive information on the registration procedure of a national trademark with effect in the territory of the Republic of Bulgaria can be found in the publication “Trademark Registration“) and are often refused on absolute grounds during the substantive examination at the Patent Office of the Republic of Bulgaria.

This article deals with the absolute grounds for refusal by reviewing the main circumstances for which a trademark application may be refused.

I. What is a trademark?

The definition of a trademark can be found in Article 9(1) of the Trademarks and Geographical Indications Act (TGIA). According to the provision, a trademark is a sign (word, figurative, three-dimensional, sound or combined), the main function of which is to distinguish the goods or services of one person from those of other persons, and in order to be able to perform this function, this sign should be presented in the State Register of Trademarks in a manner that allows to clearly and accurately determine the subject of protection. Such signs may be words, including the names of persons, letters, figures, numbers, drawings, figures, the shape of the goods or of their packaging, colours, sounds or any combination of such signs.

II. What is the substantive examination at the Patent Office of the Republic of Bulgaria?

Once the filed trademark registration application passes the formal examination, where the Patent Office experts check whether the application is filled in correctly, whether the provided list of goods and/or services is classified correctly, etc., the Patent Office proceeds to the substantive examination.

The purpose of the examination is essentially to establish whether the sign applied for registration as a trademark meets the legal requirements laid down in Art. 11(1) of the TGIA. In the event that the examination establishes that the mark applied for falls within the scope of Article 11 of the TGIA, the registration will be refused and the application will not be published in the Official Buletin of the Patent Office. The refusal may be total (for all goods and/or services on the list) or partial (for part of the goods and/or services on the list). The refusal shall be well reasoned by stating all the grounds for the refusal, and the applicant shall be given a period within which to reply.

It is important to note that such a refusal can be overcomed and the mark can proceed to the next stage of registration if it is proved that the mark has acquired distinctiveness as a result of its use (more information on proving acquired distinctiveness of a mark can be found in the publication “Proving acquired distinctiveness of a mark as a result of use“).

III. Absolute grounds for refusal of registration

Absolute grounds for refusal of registration of a trademark are based on the inherent characteristics of the trademark applied for and are independent of external factors, such as prior rights by third parties. The purpose of absolute grounds is to ensure that the essential function of trade marks is fulfilled, namely that only trade marks which will be capable of distinguishing the goods or services of their proprietors from those of others will be allowed to be registered.

Therefore, it is extremely important to consult with a specialist before proceeding with the application for registration in order to verify the existence of a risk of refusal in accordance with the requirements of Article 11(1) of the TGIA, and to provide advice on how to change the mark in a way that would facilitate the successful overcoming of any issues that might arise during the substantive examination.

For the sake of clarity, the lines below will discuss the various absolute grounds for refusal, accompanied by practical examples.

(a) Article 11, para. 1, item 1 – no sign shall be registered which is not a trademark within the meaning of Art 9, para. 1.

As already mentioned, in order for a sign to constitute a trademark within the meaning of Article 9(1) of the TGIA, it must meet the following requirements:

1. To be a sign;

2. Be able to distinguish the goods or services of one person from those of other persons;

3. Be capable of being represented in the State Register of Trade Marks in a manner that allows the competent authorities and the public to clearly and accurately identify the subject matter of protection.

Practical example: Itis currently not possible to register a particular smell as a trademark because the subject matter cannot be clearly and precisely defined. This means that there are still no techniques that unambiguously, accurately and clearly eliminate all elements of subjectivity in the process of identification and perception of the mark applied for.

(b) Article 11, para. 1, item 2– a trade mark which is not distinctive shall not be registered.

This provision plays a crucial role in maintaining the integrity of the trade mark register by ensuring that only signs that can perform the essential function of a trade mark, namely to distinguish the goods and/or services of one person from those of another, can be registered. In order to assess whether a mark is distinctive, particular attention is paid to the mark and its relationship to the goods and/or services for which it is applied for and to the relevant public. Very often in practice we see that this ground for refusal of registration is almost always supported by one of the other grounds for refusal in the decisions of the examiners of the Patent Office.

Examples of marks lacking distinctive character:

• Terms denoting only a particular positive or attractive quality or function of the goods and/or services shall not be registered if they are used alone and/or in combination with other descriptive terms, such as “MULTI“, “SUPER“, “ECO”.
• Extensions of top-level domains – “com”, “bg”, “net”, as well as abbreviations of the legal form of legal entities – “Ltd.“, “EOOD“, “AD“, “Ltd.”, “GmbH” are not registered.
• Signs which are a single letter, a single digit, a punctuation mark, a money sign or, in general, any sign which is commonly used in commerce for certain types of goods or services shall not be registered. Examples of signs that are not perceived as indicative of commercial origin are: the “C” sign for “fruit juices”; “$” for “financial services”; “+” for medical services, etc.
• Marks representing combinations of letters that are difficult to pronounce and difficult to remember, such as “LSCCMREB“, shall not be registered for any goods and/or services.
• Signs representing excessively long and difficult-to-remember word combinations, such as ‘Produced by the Ivanov family during the summer of 2011 in Melnik, at the heart of the Pirin Mountains with a lot of hard work and love for you!”
• Signs made up of simple geometric shapes and figures, such as a circle, line, rectangle or standard pentagon, cube, cone, cylinder are not registered. Such a sign made up of a simple geometric figure or shape cannot in itself convey a memorable message to users, who will therefore not perceive it as a mark.
• Three-dimensional marks representing the shape of the goods themselves or their packaging, such as a three-dimensional mark representing the shape of a mineral water bottle for the goods ‘mineral water’, shall not be registered.
• Signs representing single colours or simple colour combinations without a specific, distinctive arrangement or pattern shall not be registered unless it can be demonstrated that they have acquired a distinctive character as a result of their use on the market. For example, the colour yellow cannot be registered because consumers are not in the habit of making assumptions about the origin of goods on the basis of their colour or the colour of their packaging.
• Signs representing slogans of an advertising and praise nature shall not be registered. For example, ‘The most fragrant washing powder on the market‘, ‘Nowhere can be found a better product than ours‘ cannot be registered.

(c) Article 11 para. 1, item 3 – a mark, consisting exclusively of signs or indications, which have become customary in the spoken language or in established commercial practice in the Republic of Bulgaria in respect of the goods or services claimed shall not be registered.

Signs or indications which have become customary in the spoken language or in established commercial practice are those which are associated with the goods and/or services claimed and not with their commercial origin. This provision is intended to keep the register free of signs that are considered customary or standard in a particular sector or industry, ensuring that exclusive rights are not granted to terms or symbols that should be freely available for use by all businesses in a particular field.

Examples of marks that consist exclusively of signs or indications that have become common in the spoken language or in established commercial practice:

• Signs or indications which did not originally have a meaning or which have had a meaning different from that given to them at a later stage in connection with their use for a particular good and/or service shall not be registered. Examples of marks which have become common or generic are: ‘ASPIRIN‘; ‘CELOPHAN‘, ‘ESCALATOR‘.
• Abbreviations that have entered informal language or jargon and have therefore become common in commerce, such as “USB“; “TV“; “QR“, shall not be registered.
• Common shapes or packaging with which consumers associate a good, such as a tablet shape or a beverage bottle shape, which are commonly used by different manufacturers and are not considered to be distinctive of a company’s product, shall not be registered.
• Symbols or icons which have become common or frequently used in the designation of the goods and/or services concerned and are commonly used to indicate a function or feature, such as a waste bin icon for an erase function in software applications or a figurative sign representing a depicted lightning bolt in a vertical position, shall not be registered, as this depiction would be identical to the international symbol known as the ‘high voltage symbol’.

(d) Article 11, para. 1, item 4 – a mark consisting exclusively of signs or indications, indicating the type, quality, quantity, purpose, value, geographical origin, time or method of production of the goods, the manner, in which the services are provided or other characteristics of the goods or services shall not be registered.

The legislator prevents the monopolisation of signs and indications which directly describe goods and/or services, their characteristics or their intended use. Behind that ground is the public interest which would be affected if registration of a descriptive mark were allowed, since the person who registered it would acquire the exclusive right to a descriptive term which, by its very nature, must be free to be used by all, and that, in turn, would lead to an infringement of good morals and the free exchange of goods.

The special point here is that the link between the applied-for mark and the goods and/or services must be sufficiently direct, precise and specific that consumers understand it without further thought. It follows that if the user fails to directly associate the mark applied for with the particular goods and/or services, the mark should be registered. For example, marks that only direct the consumers to a certain characteristic of the goods and/or services without actually describing them directly will be registered – these are so-called associative marks.

Associative marks are expressions, phrases or other combinations of signs and/or indications which imply the nature of a particular good and/or service without actually describing the good and/or service directly, for example “Coppertone” registered for the good “tanning lotion” and “Citibank” for „financial services“ in cities.

Examples of descriptive trademarks:

• Marks indicating the type of goods and/or services, such as “Organic Coffee” for “coffee”; “COMPUTERS” for “computers”; “MANICURE” for “manicure services”, are not registrable.
• Marks indicating the quality of the goods and/or services, such as “PREMIUM“, “SUPERIOR“, “BEST” for all goods and/or services shall not be registered.
• Signs indicating the quantity of goods and/or services, such as “ONE KILOGRAM” or “0.333 L.“, shall not be registered;
• Signs that indicate the intended use of goods and/or services, such as “SleepAid” for sleeping pills or devices designed to promote a good night’s sleep, are not registrable.
• Signs indicating the value of the goods and/or services, such as “ICONOMIC“, “CHEAP“, “3 BGN” shall not be registered.
• Marks indicating the geographical origin of goods and/or services, such as “Venetian” for glass goods produced in Venice; “Rhodope” for “wool blankets”, are not registered.
• Marks indicating the time or method of production of the goods and/or services, such as “SPRING-SUMMER 2024” for a fashion collection; “1982” for “wines”; “HAND CRAFTED” for embroidery, jewelry or carpets, are not registrable.
• Marks indicating other characteristics of goods and/or services, such as “WATERPROOF” for watches or other electronics, “ALCOHOL-FREE” for soft drinks, are not registrable.

(e) Article 11, para. 1, item 5 – no sign shall be registered which consists exclusively of:

1. the shape of the goods or any other characteristic, that arises from the nature of the goods itself;

2. the shape of the goods or other characteristic, necessary to achieve a technical result;

3. the shape of the goods or other characteristic, that gives significant value to the goods.

This provision is divided into three distinct parts, each of which refers to a different type of shape or characteristic. It applies not only to three-dimensional shapes but also to other categories of marks, such as figurative signs representing shapes. The main purpose of this ground is to prevent proprietors from obtaining an exclusive and perpetual right to unlimited continuation in time, such as that conferred by a trade mark. This type of signs obtain protection through other intellectual property rights, such as patents and designs, for which the legislator has provided a limited period of protection. The monopolisation of functional or aesthetically significant features through trademark protection will make them inaccessible to all other businesses and will significantly restrict the market.

Examples of the various grounds for Article 11, para. 1, item 5:

• A mark which consists exclusively of the shape from which the nature of the goods themselves derives, such as a three-dimensional mark in the shape of scissors for ‘scissors‘, is not registrable. The shape of the scissors is essential to the performance of its essential function and therefore the exclusive right of use should not be granted to a single manufacturer of scissors.
• A mark which consists exclusively of the shape of the goods which is necessary to achieve a technical result, such as a three-dimensional mark in the shape of a block of a children’s construction block, with protrusions on the top of the block and cavities in the inside of the block for splicing with the protrusions on the top of other blocks to create a wall for the goods “construction games”, is not registrable. If such a three-dimensional shape were to be registered as a trade mark, it would be difficult for the competitors of the holder of the latter to market alternative shapes which are not similar, because it is currently the only shape which allows the assembly of children’s construction blocks on top of each other to form a wall.
• A mark consisting exclusively of the shape of the goods which gives the goods significant value, such as a three-dimensional mark representing originally shaped cutlery (fork, spoon and knife) by means of the shape of gardening tools for ‘utensils’ goods, is not registrable. Due to their originality, these shapes add significant (artistic) value to the goods, focusing on the aesthetic or decorative aspects that are decisive for consumer choice. The purpose of this rationale is to prevent the grant of an indefinite monopoly on styles or designs which should be protected by other intellectual property rights such as designs (for a limited period of time).

(f) Article 11, para. 1, item 6 – a mark, that is contrary to public policy or to good morals shall not be registered.

Signs which, in terms of their individual characteristics, are disruptive, malicious, offensive, threatening, inciting violence and hatred, or contrary to public order and accepted principles of morality will also be refused on absolute grounds. In applying this ground, it must be considered whether the mark, specifically and in isolation, would be perceived by the average consumer concerned as an act against the fundamental moral norms of society. In carrying out the examination, the examiners at the Patent Office will be guided by the fundamental principles of the legal order in the Republic of Bulgaria, by means of which fundamental values are protected, respect for which should be ensured without fail.

Examples of marks contrary to public policy or morality:

• Signs that contain profanity, pornographic images, or discriminatory terms based on gender, race, color, ethnic or social origin, genetic characteristics, language, religion or belief, political or other opinion, membership in a national minority, property, birth, disability, age, or sexual orientation shall not be registered.
• Signs that include symbols widely known to promote hatred, such as Nazi symbols or other signs associated with hate groups, shall not be registered.
• Signs which contain in their composition and promote the use of illegal substances, e.g. “CANNABIS” for “tobacco” goods, shall not be registered.
• Signs that convey messages contrary to generally accepted ethical standards, such as promoting cruelty to animals or exploitation of humans, shall not be registered.
• Signs that contain the names or abbreviations of terrorist organizations or the names of leaders of such organizations shall not be registered.
• Signs which contain in their composition figurative elements of obscene gestures, such as a middle finger, shall not be registered.
• Signs of a blasphemous nature or those containing religious symbols, such as “Nativity of Jesus Christ“, shall not be registered.

(g) Article 11, para. 1, item 7 – a mark, which may mislead consumers as to the nature, quality, geographical origin or othercharacteristics of the goods or services shall not be registered.

The legislator prohibits the registration of signs which mislead the average consumer. The purpose of this provision is to ensure that trade marks which serve as indicators of commercial origin do not mislead consumers as to material aspects of the goods and/or services, such as the nature, quality or geographical origin of the goods and/or services, which would serve to guide the choice of the goods and/or services.

In accordance with the case law, the assessment of whether a mark is misleading is based on the following questions:

1. Does the average consumer, who considers himself to be reasonably well informed, moderately observant and careful in his choice of purchase, recognise the sign as carrying a specific, clear and unambiguous message relating to the nature, quality or geographical origin (or other characteristics) of the goods and/or services, phrased in such a way that it is not likely to be misleadingly used?

2. Is the consumer concerned likely to rely on that message and consequently purchase goods and/or services mistakenly believing that they have a particular characteristic that they may not have (i.e. is there an effective misleading or sufficiently serious risk of misleading)?

Examples of brands that mislead consumers:

• Signs or indications suggesting that the goods and/or services originate from a particular place that has become known for that type of goods and/or services, such as “Red wine of Tokaj” for the “wine”, shall not be registered where the applicant for the mark is a Bulgarian natural/legal person who produces wines in Asenovgrad.
• Signs or indications shall not be registered where the information carried by it is manifestly contrary to the nature of the goods and/or services applied for, such as ‘Elizabeth George leather bags‘ for the ‘faux leather bags; cloth bags’ or ‘Organic honey from the Rhodopes‘ for ‘glucose syrup used as a sweetener for food’.
• Marks that give a misleading impression of the quality of the goods and/or services, such as “Denny’s Gold Rings” for “gold-plated rings”, shall not be registered.

(h) Article 11, para. 1, item 8 – a mark, consisting of, or incorporating, the emblems, flags or other symbols, and imitations thereof, of a Member State of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as amended and supplemented pursuant to the Decision of the Council of Ministers on the accession of the People’s Republic of Bulgaria to the Lisbon Edition of the Convention (ratified by Decree No. 663 of the Presidium of the National Assembly –SG, 75/65), hereinafter referred to as “the Paris Convention”, as well as the emblems, flags or other symbols, abbreviations or names of international intergovernmental organizations, declared under Art. 6 of the Paris Convention shall not be registered.

This provision aims to prevent the misuse of coats of arms, flags or other symbols that are of significant public interest by ensuring that the trademark system does not allow the appropriation or disregard of symbols that are fundamental to national identity, sovereignty and international cooperation. The presence of such signs in the composition of a trade mark may mislead the average consumer as to the origin of the goods and/or services, such as that the goods and/or services concerned originate in the country or organisation concerned; that the goods and/or services designated by the sign are guaranteed by the country or organisation concerned; that the goods and/or services are administered by the administration or public bodies of the country or organisation concerned.

Such marks will be refused on this basis:

– National flags which are protected under Article 6ter of the Paris Convention, whether or not the Member States of the Union have notified them to the International Bureau of WIPO;

– Emblems, symbols and coats of arms contained in the list published by WIPO (https://6ter.wipo.int/struct-search?lang=en).

It is important to underline that such a sign can be registered when the relevant competent authority grants its consent for use.

Examples of marks consisting of or including coats of arms, flags or other symbols declared under Article 6 ter of the Paris Convention:

• Signs consisting exclusively of, or incorporating in their composition, the national flags of countries or their imitations which closely resemble them – for example, the tricolour of the Republic of Bulgaria – shall not be registered.
• Signs consisting exclusively of, or incorporating, coats of arms and state emblems and other heraldic symbols shall not be registered. For example, the use of the Coat of Arms of France.
• Signs consisting exclusively of or incorporating the official symbols of the European Union and its institutions which would be perceived by users as indicating a link between the applicant and the relevant European institutions, such as the twelve gold stars of the European flag, shall not be registered.
• Marks consisting exclusively of, or incorporating in their composition, commonly known abbreviations of international intergovernmental organizations referred to in Article 6ter of the Paris Convention, such as the United Nations (UN), the North Atlantic Treaty Organization (NATO), shall not be registered.

(i) Article 11, para. 1, item 9 – a mark, which consists of or includes signs, emblems or heraldry, other than those. declared under Art. 6, from the Paris Convention, and of particular public interest shall not be registered.

In order for this ground of refusal to apply, the examination must consider whether the presence of signs, emblems or coats of arms other than those declared under Article 6 ter of the Paris Convention in the composition of the mark can be recognised by the public and, if so, whether the public will make a connection between the mark and the country or organisation concerned and whether that recognition will influence the choice of the goods and/or services.

It is important to underline that such a sign can be registered when the relevant competent authority grants its consent for use.

Examples of marks which consist of or include coats of arms, flags or other symbols other than those declared under Article 6 ter of the Paris Convention:

• Signs officially recognized by the Geneva Conventions for the Protection of War Victims of 12/08/1949, such as the red cross, red crescent, red crystal, shall not be registered.
• Signs, emblems or coats of arms of particular public interest shall not be registered.

(j) Article 11, para. 1, item 10 – a mark, consisting of, or incorporating, official marks and the control mark and guarantee, where they are intended to mean identical or similar goods shall not be registered.

This provision covers cases where control and guarantee marks on articles are partially or wholly reproduced. Such marks and seals shall be protected only when officially accepted by States or by international control and warranty organisations.

It is important to underline that such a sign can be registered when the relevant competent authority grants its consent for use. In Bulgaria, the only national accreditation body for laboratories, certification bodies and control bodies that can give its consent is the Executive Agency “Bulgarian Accreditation Service”.

Examples of marks which consist of or include official control and guarantee marks and seals when they are intended to designate identical or similar goods:

• A mark certifying that a product meets the European Union’s health, safety and environmental protection requirements is not registered.

(k) Article 11, para. 1, item 11 – a mark, consisting of or incorporating a name or image of a cultural property or parts of a cultural property, defined in accordance with the Cultural Heritage Act shall not be registered.

According to the Cultural Heritage Act, the term “cultural heritage” encompasses the intangible and tangible immovable and movable heritage as a set of cultural values that are carriers of historical memory, national identity and have scientific or cultural value.

The status “immovable cultural property” is granted for:

• immovable cultural property with the category of “world significance” – with their inscription on the World Heritage List by the World Heritage Committee of UNESCO, upon the proposal of the Minister of Culture. There are ten cultural and natural UNESCO World Heritage Sites in Bulgaria – 1. Boyana Church; 2. Madara Rider; 3. Thracian Tomb of Kazanlak; 4. Thracian Tomb of Sveshtari; 5. Rock-Hewn Churches of Ivanovo; 6. Rila Monastery; 7. Ancient City of Nessebar; 8. Srebarna Nature Reserve; 9. Pirin National Park; 10. Ancient and Primeval Beech Forests of the Carpathians and Other Regions of Europe;
• group immovable cultural property with the category “national importance” (archaeological reserves, as well as other cultural property of exceptional value for the culture and history of the country) – by order of the Minister of Culture or his deputy minister after coordination with the Minister of Regional Development and Public Works, and when within the boundaries of the immovable cultural property fall protected areas under the Protected Areas Act or protected areas under the Biodiversity Act – and with the Minister of Environment and Natural Resources of the Republic of Bulgaria.
• all other categories of immovable cultural property – by order of the Minister of Culture or his/her deputy.

The status “movable cultural property – national treasure” is granted by the Ministry of Culture. For the restoration of the status of “national treasure”, written information from the respective museums and/or the Ministry of Culture should be requested.

Examples of marks that consist of or include the name or image of a cultural property or parts of cultural properties:

• The word mark “Kazanlak Thracian Tomb” is not registered;
• No image of the “Madara Rider” is registered, even in cases where it is further stylized;
• The trademark “PERPERIKON” is not registered;

It is important to underline that such a sign can be registered when the relevant competent authority grants its consent for use.

(l) Article 11, para. 1, item 12 -a mark, whose registration is in breach of Bulgarian law, European Union law or international agreements, to which the Republic of Bulgaria or the European Union is a party, providing legal protection of geographical indications shall not be registered.

This prohibition covers cases where the trademark application may conflict with earlier geographical indications. According to the TGIA, geographical indications are of two types:

• Appellation of origin – the name of a country, region or particular locality of that country, used to designate a good which originates there and whose qualities or properties are primarily due to the geographical environment, including natural and human factors. The definition itself suggests that it cumulatively requires (1) the presence of human and natural factors and (2) the existence of a causal link between those factors and the qualities or characteristics of the good. Certain agricultural products such as wines, cheeses, spirits, meat delicacies, etc. can be registered as designations of origin.
• Geographical indication – the name of a country, region or particular locality of that country used to designate a good which originates there and has a quality, renown or other characteristic attributable to that geographical origin. All that is required here is that the goods possess a quality, a reputation or other characteristic attributable to a particular geographical origin. Natural fossils and mineral waters are most commonly registered as geographical indications.

A conflict arises where a trade mark application for goods and/or services is identical or similar to a geographical indication and such use would mislead the public as to the geographical origin of the goods and/or services.

A useful database for searching and checking geographical indications in the European Union and beyond is https://www.tmdn.org/giview/.

Examples of trademarks whose registration is in compliance breach of legislation providing for legal protection of geographical indications:

• A sign that includes a protected geographical indication, such as ‘Champagne‘, ‘Scotch‘, ‘Slivenska perla‘, ‘Ouzo‘ ‘Bulgarian rose oil’, ‘Gornooryakhovski sudjuk’, ‘Prosciutto Amatriciano’, shall not be registered;
• A sign that includes a registered designation of origin, such as „Prosecco”, “Mavrud from Melnik“, Sungurlare Sauvignon Blanc“ and „Chardonnay Karnobat“ for wines, as well as “Strandzanski manov med“, “Bulgarsko kiselo mlуako“, “Parmigiano Reggiano” for goods of animal origin and “Strandzhanski bilkov chay“, shall not be registered;
• No sign shall be registered whose connotative meaning does not cast doubt on the link with a registered designation of origin or geographical indication, such as ‘PARMIDJANO REDJANO‘ for cheeses.

(m) Article 11, para. 1, item. 13 – a mark, whose registration is in breach of European Union law or international agreements, to which the European Union is a party, providing legal protection for foods of traditional specific nature shall not be registered.

This provision is essential to protect the authenticity and reputation of foodstuffs with a traditional special character. It ensures that consumers are not misled about the characteristics or origin of goods bearing such indications. Traditional Specialities Guaranteed means a specific product or food which:

• is the result of a method of production, processing or composition which conforms to a traditional practice for that product or that food, or
• is produced from raw materials or ingredients traditionally used for it.

What is interesting here is that, unlike geographical indications, there is no link between foods with a traditional specific character and a specific geographical area. Traditional’ refers to products with a proven use on the domestic market over a period (at least 30 years) that allows them to be handed down from generation to generation, while ‘specialities’ refers to products with specific production characteristics that clearly distinguish these products from other similar products in the same category.

Examples of trademarks that are in compliance breach of legislation providing for legal protection of foodstuffs of traditional special character:

• A sign which contains the name of a registered foodstuff of traditional special character, such as ‘Pastrami beef‘, ‘Jamón Serrano‘, ‘Troyanska Lucanka’, ‘Soujouk Tarnovo‘, ‘Kaiserovan vrat ot Trakiya‘, ‘Pizza Napoletana’, ‘Fillet Elena‘, shall not be registered.

A useful database for searching and checking traditional speciality foods is https://ec.europa.eu/agriculture/eambrosia/geographical-indications-register/tdt.

(n) Article 11(1)(14) – a mark, whose registration is in breach of European Union law or of international agreements, to which the European Union is a party, providing for the legal protection of traditional wine names shall not be registered.

Under European law, ‘traditional wine names’ are ‘names which designate the method of production or ageing, the quality, the colour, the type of place or a specific event linked to the history of a wine product with a protected designation of origin or a protected geographical indication or indicate that it is a wine product with a protected designation of origin or a protected geographical indication.

The provision aims to protect traditional terms used to describe wines, including terms that indicate the origin, quality or method of production of the wines.

Examples of trademarks whose registration would be in compliance breach of legislation providing for the legal protection of traditional wine names:

• A sign containing a traditional name for a wine, such as ‘Rosenthaler‘, ‘Spätlese‘, ‘Fondillón‘, ‘Amarone‘, ‘Ramie‘, shall not be registered for the following goods: ‘wine, liqueur wine, sparkling wine, quality sparkling wine, quality flavoured sparkling wine, sparkling wine, sparkling aerated wine, partially fermented grape must, wine from raisined grapes, wine from overripe grapes’.

A useful database for searching and checking traditional names for wines is https://ec.europa.eu/agriculture/eambrosia/geographical-indications-register/tdt.

(o) Article 11, para. 1, item 15 – a mark, which consists of, or reproduces in its essential elements the name of an earlier plant variety, registered under national legislation, European Union law or international instruments, to which the Republic of Bulgaria and the European Union are parties, providing legal protection to the plant variety rights, where the mark and the plant variety refer to identical or closely related species shall not be registered.

This provision is intended to protect these names from potential conflicts with later trademarks, since their use would create a likelihood of confusion as to the origin or characteristics of the goods and/or services of the later mark. It applies only if the following conditions are met:

• A registered varietal name is available;
• The varietal name must have been registered prior to the application for registration of the trademark;
• The application for registration of a trade mark shall consist of or reproduce in its essential elements the earlier varietal name;
• The list of goods for which protection is sought in the application for registration of the trade mark shall include varieties of plants of the same species or closely related species as that protected by the registered variety denomination.

Plant variety names are names used to identify cultivated varieties or sub-varieties of living plants or agricultural seeds.

Examples of marks which consist of or reproduce in their essential elements the name of an earlier plant variety:

• A sign which consists of a registered varietal name, such as ‘Prunus avium‘ applied for in the goods ‘fresh cherries’, ‘Helianthus annuus‘ applied for in the goods ‘flowers’, ‘Triticum aestivum‘ applied for in the goods ‘raw wheat; raw wheat, fresh wheat’ or ‘Malus domestica (Suckow)‘ applied for in the goods ‘apples’, shall not be registered.

A useful database for searching and checking variety names is https://online.plantvarieties.eu/publicSearch.

IV. Conclusion

Absolute grounds for refusal of trademark registration play a crucial role in maintaining a fair trademark registry that balances the interests of trademark owners with those of consumers and the general public.

They guarantee protection only to marks that are capable of fulfilling the essential function of the mark – to distinguish the goods and/or services of the mark proprietor from those of others. Also, by setting clear and objective criteria for what constitutes a registrable trademark, the law ensures that the trademark register remains an instrument for promoting innovation, fair competition and consumer protection. Understanding these grounds is essential for anyone wishing to secure exclusive rights of use over their mark. It is therefore advisable to seek the assistance of an intellectual property specialist with experience in this area, who will be able to assess whether the chosen trade mark falls within the scope of Article 11 of the TGIA.

The team of the law firm of Adv. Krasimira Kadieva will be happy to assist you in the registration of your trademark by providing professional advice and preparing all necessary documents, as one of the most frequently ordered services in the past years in our practice are services related to the registration of trademarks.

This material prepared by Boyana Boyadzhieva aims to provide more information about the absolute grounds for refusal for registration of a trademark. 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 KrasimiraKadieva law office at 00359 882 308 670 or make an inquiry using the contact form on this website. Boyana Boyadjieva is a legal associate at the law firm. She holds a Master’s degree in Intellectual Property Law from the Queen Mary University of London. Prior to joining the team of the law firm, Boyana interned at the European Union Intellectual Property Office (EUIPO). Her professional interests are related to intellectual property, data protection, e-commerce, and contract law, and regularly attends conferences, practical courses, seminars, and webinars in these areas of law. She is fluent in English.