Fighting similar trademarks in Bulgaria

One of the biggest changes was the introduction of proper trademark opposition proceedings in Bulgaria, as it was one of a handful of European countries that did not provide an adequate means of challenging new trademark applications.

Background

Before the Bulgarian Trademark Law (BTL) was changed to allow proper trademark opposition proceedings, it did off er a watered-down version. Th e Bulgarian Patent Office (BPO) previously carried out ex officio examinations on absolute and relative grounds.

Trademark applications would be registered only if they successfully passed a substantial examination on relative grounds. The law said that objections to new trademark applications could be filed if they were based on absolute and relative grounds.

However, the law also said that an opponent could not be a part of the opposition proceeding and an objection would not be sent to the trademark applicant. Furthermore, an objection would only be considered by an examiner during an ex officio examination of an opposed mark.

It would be left to the examiner’s discretion whether to take an opposition into account during examination, or not. No separate decision on the objection would be taken and there would be no opportunity for the opponent to appeal an examiner’s decision.

Better late than never

The BTL was substantially amended on March 10, 2011. As a result of these amendments, the BPO does not carry out ex officio examinations on relative grounds. The BPO now carries out examination on absolute grounds only.

Once a trademark application meets the formal requirements and successfully passes the examination on absolute grounds, it is published in the Official Bulletin of the BPO. After the publication of a trademark application, anyone can file an objection against its registration, based on absolute grounds.

At the same time, any owner of a prior trademark can file an opposition against the registration of an identical or similar trademark application that is filed for identical or similar goods and/or services. This new opposition procedure is applied to all pending trademark applications, but not those that were published before March 10, 2011.

According to the amended law, an opposition against a trademark application can be filed by:

• The owner of a prior trademark;

• The licensee of an exclusive licence;

• The owner of a trademark when its mark has been applied for by its agent or representative without its permission; and

• The genuine owner of an unregistered mark that is used in Bulgaria. What should be noted here is that, an opposition in Bulgaria can be filed on the basis of prior trademark rights and on the basis of prior trademark use in Bulgaria.

However, this remains a possibility only, because it is not clear how the BPO will approach prior trademark use in Bulgaria.

In fact the BTL, despite being amended, does not explicitly outline the possibility of acquiring trademark rights by use. Moreover, neither the BPO nor the courts has any experience in protecting so-called ‘unregistered trademarks’.

It is unclear how this will be approached. Patent attorneys and trademark owners are waiting to see what will be the BPO’s practice.Terms for opposition According to the amended BTL, an opposition can be filed:

• Against a national trademark application within three months from its publication in the Official Bulletin of BPO; and

• Against an international registration that designates Bulgaria between six and nine months from its publication in the Official Bulletin of BPO. No extensions of these terms are currently available.

Opposition procedure

The new trademark opposition procedure in Bulgaria is similar to the opposition procedure at the Office of Harmonization for the Internal Market. It should be noted that the BPO will not carry out an examination on relative grounds, even if the applicant requests this. Moreover, the BPO will not:

• Notify trademark applicants of the existence of identical or similar marks that have already been applied for, or registered for identical or similar goods and/or services; or

• Notify owners of prior marks of identical or similar new trademark applications that are filed for identical or similar goods and/or services.

According to the BTL, a notice of opposition is not acceptable. A complete opposition should be filed at the BPO. It should include all arguments and evidences, including the evidences that show that the prior mark is a well-known mark, if the opposition is based on such a claim. The opposition will then be forwarded to the applicant.

The so-called ‘cooling off ’ period—the three-month term in which the parties involved in an opposition proceeding could come to an agreement—begins on the date that the BPO sends a notification to the parties. This term can be extended twice and each extension is for three months.

If the parties involved decide to settle an agreement, the opposition proceeding will be closed. If no agreement is reached, the trademark applicant has to reply to the opposition within two months of receiving the BPO’s notification. The applicant’s reply is then sent to the opposing party, which has to respond within one month.

Non-use attack

The applicant can use an opposition proceeding to attack its opponent on the basis of non-use. The applicant can request the opposing party to present evidences for use in Bulgaria of the prior mark basis for opposition.

The evidences should be related to the five-year period prior to the publication date of the opposed trademark application. It is important to note that a non-use request has to be filed as part of the trademark applicant’s first reply to the BPO.

The opposing party has to file evidences of use within two months, and this term can not be extended. The trademark applicant has one month to respond to the evidences that is filed by the opposing party. If the opposing party fails to present sufficient evidences for real use of the prior mark, its opposition will be refused.

Decision on opposition

The BPO will issue a decision on each opposition proceeding and this decision can be appealed by either the trademark applicant or the opposing party. The BPO’s Opposition Department’s decision will be issued within six months of the end of the correspondence.

A decision on an opposition can be appealed before the BPO’s Dispute Department within the three-month term from the receipt of the notification. Further appeals could be filed before the court.

Reasons for filing an opposition

The last amendments of the BTL have changed the trademark system in Bulgaria. Now, trademark owners can no longer rely on the BPO and the quality of its ex officio substantial examinations. Therefore, it is very important that trademark owners become aware of this substantial change.

Nowadays, trademark owners should include Bulgaria in their trademark watching list so that they can protect their trademark rights in Bulgaria. Otherwise, even identical trademark applications that are filed for identical goods and/or services will be registered in Bulgaria, and owners of prior trademarks will lose their legal right to oppose registrations of such trademarks.

In these cases, the only avenue available to trademark owners will be cancellation actions.