Trade Mark in Bulgaria

Definition and regulation

Trade mark is a sign capable of distinguishing the goods or services of one person from those of other persons and can be presented graphically.

The subject matter concerning the registration of trade marks having effect on the territory of Bulgaria is governed by the national legislation regulating the registration by the order of the state internal laws, by the acts of the Community law, regulating the registration of the Community marks and by the international treaties to which Republic of Bulgaria is a party, regulating the registration of trade marks following the international order.

Basic acts applicable to the three regimes above for registration of trade marks on the territory of Bulgaria are as follows:

Marks and Geographical Indications Act (MGIA)
Council Regulation (EC) No 207/2009 of 26 February 2009 on the community trade marks
The Madrid agreement about the international registration of marks and the Protocol to the Madrid Agreement

Regimes of registration

Protection of the trade mark requires registration, respectively the registration to have effect on the territory of Bulgaria. The registration is possible via several ways according to the above-mentioned three regimes.

In the first place, to have a mark protected it must be registered under the Bulgarian MGIA. The registration procedure is carried out before the Patent Office of the Republic of Bulgaria located in the city of Sofia. Local physical and legal persons, as well as foreign physical and legal persons from States parties to international treaties whereto the Republic of Bulgaria is a party can file an application under this order. MGIA applies also for foreign physical and legal persons from other States on conditions of reciprocity. Each of those persons may file an application for registration of a trade mark of the goods or services offered by him either personally or through registered in the Patent office local industrial property representative. Persons not having permanent address or registered office in the Republic of Bulgaria are required to act before the Patent Office through a local industrial property representative.

Secondly, protection of a trade mark spreading out its effect on the territory of Bulgaria can be ensured via registration under Council Regulation (EC) No 207/2009. The registration procedure is carried out before the Office for the Harmonization in the Internal Market (OHIM), located in Alicante, Spain. The application for registration can be filed directly to OHIM or through the Patent Office of Bulgaria which will then forward it to OHIM. Such registration is effective on the whole territory of EU (on the territory of all Member States including Bulgaria).

The third way to have a trade mark protected on the territory of Bulgaria is via registration under the order of the international registration system, governed in the Madrid agreement and the Protocol to it. The procedure for registration is set before the World Intellectual Property Organization (WIPO), having its seat in Geneva, Switzerland. The application can be submitted through the Patent Office of any State party of the agreement and/or the Protocol which will then forward it to the International Office of WIPO. In the application Republic of Bulgaria should points itself as a State where the registration will be in force.

Filing an application or registration of a trade mark by the national order is a mandatory condition the trade mark to be registered via the international registration system.

Irrespective which of the above regimes for registration is chosen the rights to the trade mark will be protected on the territory of Bulgaria.

Registration under the national legislation of Bulgaria

The procedure for registration of trade marks according to the Bulgarian MGIA is initiated by filing of application before the Patent Office of Bulgaria.

During the last years the Bulgarian legislation regulating this procedure has changed in direction to modernizing and synchronizing with the European and international standards. At the beginning of year 2010 MGIA was amended and was adopted the so called “opposing system” which is active for registration of Community marks and is effective since 10.03.2011. This new system was introduced to force the holders of rights to earlier registered marks to use the services of competent experts who will follow the publications of the Patent Office and react in cases of violation of their rights by initiating opposing procedures.

In the “opposing system” the experts observe only the presence of the so called absolute grounds for denial of registration. The experts do not observe for the relative grounds for denial as it was according to the previous system.

The procedure for registration in force since 10.03.2011 is carried out as follows:

filing up an application for registration and payment of fees;
verification of the application with regard to its conformity with the formal requirements (including the payment of fees) and carrying out an expertise for the presence/lack of absolute grounds for denial;
when the application meets the formal requirements, the fees are paid and are not found any absolute grounds for denial of registration, the application shall be published in the Official Bulletin of the Patent Office and any interested persons which rights to the trade marks can be violated may oppose against the publication within a period of three months after the publication.
in case of opposing then an opposing procedure follows;
in case no opposing is initiated or if the opposition is rejected the Patent Office notifies the applicant that he shall pay in a term of one month fees for registration, publication and issuance of a document ensuring protection.
After payment of the fees a decision for registration of the mark is taken and then the mark is entered in a mark register, published in the Official Bulletin of the Patent Office and to the applicant is issued a protective document – certificate for registration.

Of course some complications in the procedure may arise such as incorrect drawing up of the application, not paying the fees on time, presence of the absolute grounds for denial, etc.
After its registration the trade marks is protected for a period of ten years as of the date of the application. The registration can be renewed illimitably for a new 10-year period.

The trade mark can be subject of deals, as well as of collaterals and pledges. The rights to the mark can be transferred and can be included in the insolvency estate. The proprietor of the trade mark can, without transferring his right, to give his consent to a third party to use the mark. The relations with the third party are settled in a licensing agreement. Transferring the rights to the trade mark, the allowed collaterals or pledges and the licensing agreements are entered in a State Register of marks. The rights to the trade mark are granted via exclusive and non-exclusive license. The licensor of an exclusive license has no right to grant licenses for the same subject matter to other persons. He has the right to use the mark only where this is explicitly agreed. The proprietor of the right as well as the exclusive licensee has the right of action for infringement in accordance with art.75 of MGIA.

Protection of the rights to the trade marks

The right to a trade mark includes the right of the proprietor of the mark to use, to transfer and to prohibit other parties without his consent to use the mark in their commercial activity by all means, as well as to prohibit other parties to use in their commercial activity a sign which is identical or similar to the registered trade mark.
The protection of the right to trade mark is accomplished via three ways:

Civil law protection: it is accomplished by bringing an action before court. The proprietor of the mark may claim cessation of the infringement, damages, as well as destruction of the infringing goods because of violation of his rights to the mark
Administrative law protection: it is accomplished mainly by the Patent Office and custom authorities. In case of violation of the rights to the trade mark the officials from the Patent Office are enabled to impose pecuniary penalties for each violation. The custom authorities co-operate in frustration of importation on the territory of Bulgaria of goods which will violate the right to a trade mark.
Criminal law protection: the violation of the rights to trade mark is qualified as a crime according to the Bulgarian legislation and the violator can be punished with an imprisonment.

Law Firm Dyulgerova and Penkova

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