04-02-2013 (Newsletter Issue 4/13)
PTO to Abolish ‘Class Heading Covers All’ Approach
As of March 1, 2013, the Bulgarian PTO has changed its approach when interpreting the scope of protection when class headings are used in lists of goods and services in trademark applications and registrations.
National trademarks are not registered under the “class heading covers all” approach but under the “means what it says” approach, meaning that the national trademark applicants listing class headings has to clearly indicate whether they are seeking protection for all goods or services that fall within a particular class or only for the specific goods or services mentioned in the class heading.
The change follows the Court of Justice of the European Union’s June 19, 2012 decision in the IP Translator ‘class headings’ case (C-307/10 – Chartered Institute of Patent Attorneys v Registrar of Trade Marks), after which all national PTOs in the EU and OHIM agreed to unify the approach.
Currently 17 out of 26 PTOs in the EU use the “means what it says” approach, while the other nine PTOs, including the Bulgarian PTO, use the “class heading covers all” approach where the class heading provides protection for all goods or services included in the alphabetical list of the class.
The differences in the interpretive approaches have led to legal uncertainty and lack of predictability in cases of claiming priority and seniority and in revocation, cancellation, examination and opposition proceedings.
The Bulgarian PTO has introduced the following basic rules:
- If the applicant wishes the scope of trademark protection to cover all goods and services included in the alphabetical list of the particular class, the applicant must explicitly state on the application that “The application refers to all goods/services included in the alphabetical list of this class".
- If the applicant does not explicitly state that the scope of protection covers all goods and services in the alphabetical list of the particular class, the PTO will conclude that the applicant is seeking protection only for the goods or services mentioned in the class heading.
The change in the practice of the Bulgarian PTO does not affect trademark applications and registrations filed or processed prior to March 1, 2013.
09-01-2011 (Newsletter Issue 10/11)
Opposition System Introduced/Official Fees Reduced
The Patent Office of the Republic of Bulgaria has implemented the regulation on opposition procedure, which entered into force on June 11th, 2011. The new regulation outlines the procedure for drafting, submitting and examining the opposition notices. It applies to trademark applications filed or published after March 10th, 2011.
As the Patent Office does not carry out examinations as to the relative grounds for refusal of trademarks anymore, the official fees for filing and examination of applications for registration of trademarks are reduced. Please view current fees in the country survey (below).
Source: Patent Office of the Republic of Bulgaria,
Borislav Boyanov & Co., Bulgaria
02-21-2011 (Newsletter Issue 3/11)Amendments of Trademark LawSome important amendments to the Bulgarian Law on Marks and Geographical Indications (LMGI) enter into force by March 10th, 2011.
The Bulgaria Patent Office (BPO) performs only formality and absolute grounds examination by March 10th, 2011. Under the new system the search for prior trademarks will be dropped.
Furthermore, the opposition period will change from 2 to 3 months, effective from March 10th, 2011.
For more information please click here
Source: Zivko Mijatovic & Partners, Sofia, Bulgaria
01-01-2011 (Newsletter Issue 1/11)Bulgarian Trademarks Added to TMviewBulgarian trademarks can be now searched via the free online database TMview provided by the Office for Harmonization in the Internal Market of the European Union (OHIM). The tool enables trademark search on various official online database registers.
To access TMview please click here
09-15-2010 (Newsletter Issue 14/10)
Opposition Period Will Change
According to the amendments of the Bulgarian Trademark Law the opposition period will change from 2 to 3 months, effective from March 10th, 2011.
04-15-2010 (Newsletter Issue 9/10)
Adoption of Amendments to Trademark Law
On February 26, 2010, Bulgaria’s National Assembly adopted the draft Law amending the Law on Marks and Geographical Indications. The law was published in the Official Gazette on March 9, 2010 and enters into force in June 2010.
The draft law abolishes the previous practice of substantive examination and introduces opposition procedures. Previously, the Bulgarian Patent Office (BPO) had to examine the mark ex officio on both the absolute and the relative grounds for refusal, regardless whether an opposition has been filed or not.
Under the new system, trademark application will be examined on absolute grounds only and if it meets the requirements, it will be published in the Official Gazette of the BPO. Third parties have three months from the date of publication to file an opposition by submitting a written opposition.
This model corresponds to the examination procedure performed by the Office for Harmonization in the Internal Market (Trade Marks and Designs) - OHIM, which manages Community Trade Marks and Community Designs within the European Union. The transitional and final provisions state that the rules governing the opposition procedure will enter into force 12 months after the law’s promulgation in the Official Gazette.
Another novelty concerns the State Register of Trademarks and the State Register of Geographical Indications maintained by the BPO. The BPO will from now on maintain all files in paper and electronic form. The electronic form will be published on the official website of the BPO and will be available to everyone. The application for registration of a mark or geographical indication can now be filed electronically.
The new system aims to shorten the process of issuing trademark registration and to achieve full compliance with the relevant EU regulations.
Legal basis is the Law on Marks and Geographical Indications (LMGI) of September 14th, 1999 (in force since December 15th, 1999, last amendments of March 9th, 2010).
Bulgaria is a member of the Madrid Agreement and the Madrid Protocol and the European Community.
Trademark protection is obtained by registration on the first-to-file principle.
Nice classification, 10th edition
Registrable as a trademark is a sign which is distinctive and could be graphically represented such as words, including names of persons, letters, numbers, drawings, figures, the shape of the goods or of their packaging, combination of colours, sound signs or any combination of the such signs. Holograms can not be registered as it is considered that their representation is not constant.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed at the Bulgarian Patent Office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is acceptable in case of reciprocity, highly recommended is the special form available at the Patent Office.
Foreign applicants do not need a domestic registration.
The registration process includes:
1. A formal examination, 2. Examination on the absolute grounds – for trademarks filed under the national procedure, it will be conducted within three months after the formal examination; for international trademarks – within three months after the publication in the Official Bulletin issued by the Bulgarian Patent Office, 3. Publication of the application for opposition purposes, 3.1. In case an opposition is filed - opposition procedure and issuance of a decision to uphold or reject the opposition, and consequently, to register or refuse the trademark, or 3.2. In case no opposition is filed - registration of the trademark without any further examination on relative grounds.
Signs not deemed distinctive in the examination can be registered if the applicant can prove that distinctiveness has been acquired by use.
3 months following the date of publication.
It should be noted that, during the opposition procedure, the applicant may request a proof of use of the earlier mark, on which the opposition is based, if five years have passed from the date of its registration until the date of filing the opposition. In such case, the opponent is given two months for furnishing proof of use. If the opponent fails to provide evidence about the use of the earlier mark, the opposition is to be rejected.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
Oppositions against international trademarks should be filed between the 6th and the 9th month after the publication of the mark in the Official Bulletin issued by the BPO.
A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.
If the trademark has not been used within 5 years from registration or has not been used for a continuous period of 5 years, it may be subject to cancellation.
The official fee for filing a trademark application including examination is BGN 150.00 (approx. EUR 77.00) up to three classes. For each additional class, another BGN 40.00 (approx. EUR 21.00) are due. The publication of the application in the Official Bulletin of the Patent Office costs BGN 40.00 (approx. EUR 21.00). The official fees for registration of a trademark, issuance of a certificate for registration and publication of the registration in the official Bulletin are BGN 400.00 (approx. EUR 205.00).
Trademark Licence Agreement
In Bulgaria a licence agreement has to be in writing. Licensing of unregistered marks is not permitted. A trademark can be licensed for some or all of the goods or services covered and for all or part of the territory of the Republic of Bulgaria. Licences may be exclusive or non-exclusive. If not specified in the agreement, the licence shall be considered non-exclusive. In the case of an exclusive licence, the licensor himself can use the mark only if this is explicitly provided for in the licence agreement. The sale of a registered trademark does not automatically terminate the licence.
The following statutory provisions prescribe the terms of a licence agreement:
1. A licensee shall be bound to ensure the quality of goods if the trademark has become known to users before the conclusion of the agreement.
2. A licensee shall be bound to apply the mark on goods for which the licence has been granted.
3. A licensee shall be bound to inform the licensor about the extent of use within the agreed time period in the event that the licence fee depends on the volume of sales.
There are provisions in law for the voluntary recordal of a licensee with the Bulgarian Patent Office. The recordal can be initiated at the request of either of the parties. There is no time frame for a recordal. The licence agreement must be in writing but there are no other formalities. There is no prescribed content but the licence agreement shall contain details identifying the licensee and the licensor, the mark and its registration number and the duration of the licence. A list of licensed goods/services shall be explicitly mentioned in the agreement.
The following documents are required for a recordal:
1. A copy of the licence agreement or an extract with the signatures and seals of both parties
2. A power of attorney
The licence agreement becomes effective and enforceable against third parties from the date of recordal and is published in the Official Bulletin within one month thereafter.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings and he can call upon the owner to institute infringement proceedings. An exclusive licensee is entitled to institute an infringement action. He is not required to cite the trademark owner as co-defendant in any such proceedings. A licensee of a non-exclusive licence may bring an action only with the consent of the proprietor, unless otherwise agreed.
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We would like to thank the following law firms for their assistance in updating the information provided:
Patentcorrect Ltd., Sofia, BulgariaZivko Mijatovic & Partners
, Sofia, Bulgaria
Borislav Boyanov & Co., Sofia, BulgariaLicensing
Borislav Boyanov & Co., Sofia, Bulgaria
Patentcorrect Ltd., Sofia, BulgariaZivko Mijatovic & Partners
, Sofia, Bulgaria