Bulgaria: Trademarks Comparative Guide

1 Legal framework

1.1 What is the statutory or other source of trademark rights?

Trademarks in Bulgaria are regulated by the Law on Marks and Geographical Indications, as well as the EU Trademark Regulation (2017/2001).

Bulgaria is also a party to the Paris Convention and the Madrid Accord and Protocol.

1.2 How do trademark rights arise (ie, through use or registration)?

In Bulgaria, trademark rights arise through registration. In limited circumstances, there are avenues of protection available to unregistered trademarks against newer trademarks, subject to filing a trademark application and establishing prior use.

1.3 What is the statutory or other source of the trademark registration scheme?

The Bulgarian Law on Marks and Geographical Indications, as well as the EU Trademark Regulation (2017/2001), are the main sources. Official regulations are also issued, detailing the procedures for applications, oppositions and disputes. The Bulgarian Patent Office also follows the practice of the Court of Justice of the European Union.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

Any sign that can be depicted accurately in the state register of trademarks can be registered. In addition to the more traditional marks – such as words, names, letters, numbers, drawings, shapes, colours and combinations thereof – it is possible to register the more unusual sound, multimedia, position, hologram, pattern and motion trademarks.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

A ‘trademark' is a sign which is capable of distinguishing the goods and services of one party from those of another, and which can be depicted in the state register of trademarks in a way that allows the scope of protection afforded by the registration to be clearly and precisely determined.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

Certain designations – such as state coats of arms and flags, the names or images of cultural monuments, the names of plant varieties and geographical indications – are ineligible to be registered as trademarks. In addition, signs which are descriptive or otherwise lack distinctive character cannot be trademarks.

3 Registration procedure

3.1 Which governing body (ie, trademark office) controls the registration process?

The Bulgarian Patent Office (BPO).

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

The BPO charges BGN 520 for a trademark application in up to three classes. Each additional class costs another BGN 30. The issuance of a registration certificate costs BGN 50.

3.3 Does the trademark office use the Nice Classification scheme?

Yes.

3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

There is an option to apply for the alphabetical list of goods and services in a particular Nice class, or just for the heading of a class. In both instances, the protection obtained will be only for those particular goods and services that are included in these categories. It is always advisable to ensure that the client's particular needs are accurately reflected in the application by manually selecting the exact goods and services to be registered.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

There is no such express requirement and it is not necessary to file a declaration of intention to use. After the first five years post-registration, the trademark can be revoked on the grounds of non-use for five years.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

No. The BPO offers trademark searches as an information service; however, this is not part of the trademark application procedure.

3.7 What types of examinations does the trademark office perform other than relative examination?

The BPO will check for compliance with all formal requirements in relation to trademark applications and will conduct an examination on absolute grounds.

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

A trademark is ineligible for registration if it:

• violates public order or morals;
• is deceptive (ie, it could mislead users about the nature, quality, geographic origin or other characteristics of the goods and services);
• includes a coat of arms or national flag;
• consists of or contains official quality control or warranty symbols when relating to identical or similar goods;
• consists of or contains the name or image of cultural heritage objects designated by Bulgarian law;
• would breach Bulgarian and/or European law on geographical indications; or
• consists of or reproduces in its substantive elements the name of an earlier plant variety.

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

No.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

No. Objections and oppositions against the registration of a trademark can be filed only after publication of the application.

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

No. However, five years after registration, trademarks can be attacked on the grounds of non-use.

3.12 How much time does it typically take from filing an application to the first office action?

Typically, it takes up to one month.

3.13 How much time does it typically take from filing an application to publication?

It depends on whether any deficiency has been raised – for example, a correction of the list of goods and services.

If no deficiency has been raised, it typically takes up to one month.

4 Appeals

4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

If the Bulgarian Patent Office (BPO) determines that the trademark cannot be registered in relation to some or all of the goods and services, it will send the applicant a notice of refusal. The applicant has a three-month period in which to file an objection. The BPO then has a further month to issue a decision on whether the trademark will be registered.

If the application is refused, the applicant can appeal to а disputes chamber of the BPO. The decision of the BPO can be appealed further to the Administrative Court.

4.2 What is the procedure for appealing a trademark office refusal?

The decisions of the BPO can be appealed internally before a disputes chamber and can be further appealed before the Administrative Court.

4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?

Appeals against decisions of the disputes chamber can be appealed before the Administrative Court. The decision may be further appealed before the Supreme Administrative Court, whose decision is final and cannot be appealed.

5 Oppositions

5.1 Can a third party oppose a trademark application?

Yes.

5.2 Who has standing to oppose a trademark application?

The holder of an earlier trademark or other earlier rights can file an opposition on relative grounds.

Any natural or legal person can file an objection against the registration of the trademark on absolute grounds.

5.3 What is the timeframe for opposing a trademark application?

An opposition can be filed within three months of publication of the application in the Official Bulletin of the Bulgarian Patent Office (BPO).

5.4 Which body hears oppositions?

Oppositions are considered by an opposition chamber, consisting of three experts appointed by the chairman of the BPO.

5.5 What is the process by which an opposition proceeds?

The opposition must be filed in writing and fees paid with the BPO within three months of publication of the application in the Official Bulletin.

5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?

Yes. Opposition decisions can be appealed before a disputes chamber at the BPO, whose decision can in turn be appealed before the Administrative Court.

6 Rights of registered and unregistered marks

6.1 What, if any, protection is afforded to unregistered trademarks?

Unregistered trademarks enjoy some limited protection. The holder of an unregistered trademark that is used in the course of trade in the territory of Bulgaria for identical or similar goods can oppose a later filed trademark. In order to be permitted to file an opposition:

• the holder of the unregistered mark must apply for the mark to be registered; and
• the use of the earlier mark in trade must continue up to the filing of the opposition.

The use must be proven in the opposition proceedings.

Some protection is also afforded by Bulgarian trademark law for other names which are not registered trademarks – for example, earlier company names which have been used as trademarks in relation to identical or similar goods and services.

There can also be protection for well-known marks in the territory of Bulgaria under the Paris Convention – this status must be determined in court or by the BPO during the relevant administrative procedure.

In addition, the owner of a trademark can oppose a new trademark which has been registered in bad faith (bad faith must be proven in court).

Separately, the holders of unregistered trademarks can ask the Commission for Protection of Competition to fine any infringers based on the unfair competition provisions in Bulgarian law.

6.2 What legal rights are conferred by a trademark registration?

The trademark owner has the right to prohibit third parties from using in the course of trade an identical or similar trademark in relation to identical or similar goods and services; and where the earlier right has a reputation, also in relation to goods and services that are not identical or similar.

6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

No.

7 Enforcement and remedies for trademark infringement

7.1 What remedies are available against trademark infringement?

The trademark owner can file a civil suit to:

• determine the fact of the infringement;
• stop ongoing infringement or prevent prospective infringement;
• claim compensation from the infringer:
• • for all loss suffered and lost profits as a direct and immediate consequence of the infringement;
  • where there is insufficient data to determine the amount of compensation, for a sum of between BGN 500 and 100,000; or
  • for a sum equivalent to the value of the infringing goods, calculated at the retail price of non-infringing goods;
• have the infringing articles confiscated and destroyed; and
• have a summary of the court's judgment published in media outlets at the infringer's expense.

In addition to civil litigation, other avenues are available via the organs of the state:

• Administrative penalties: At the trademark owner's request or at their own initiative, the authorities can investigate infringements and carry out sting operations. If an infringement is identified, the goods can be confiscated and destroyed, and а fine can be imposed on the infringer.
• Customs control: When notified of a registered trademark, the customs authorities can stop suspected infringing goods at the borders. Such goods can be destroyed.
• Competition proceedings: The Commission for Protection of Competition can initiate unfair competition proceedings against an infringer and impose fines of up to 10% of its annual turnover.
• Criminal liability: Trademark infringement can be reported to the police and prosecuted under the Criminal Code. Such instances are not very common, but cannot be disregarded as an option.

7.2 What remedies are available against trademark dilution?

See question 7.1.

7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

The Commission for Protection of Competition can fine infringers based on the unfair competition provisions in Bulgarian law.

7.4 What is the procedure for pursuing claims for trademark infringement?

A trademark owner can file a civil suit against an infringer at the Sofia City Court. In certain circumstances, the plaintiff can also request injunctive relief, including:

• cessation of any infringing acts;
• confiscation of goods and evidence; and
• locking of premises where infringements may be taking place.

If the trademark owner is notified by the customs authorities of a potentially infringing shipment, it can ask for the goods to be destroyed. If the importer objects to this, proceedings must be filed in court to determine whether there has in fact been an infringement; depending on the outcome, the goods will be destroyed or released.

If the trademark owner seeks the administrative or criminal liability of the infringer, it can file a report with the Bulgarian Patent Office and the police. The authorities will act independently and at their own expense.

If the Commission for Protection of Competition opens unfair competition proceedings at the trademark owner's request, both the trademark owner and the infringer will be part of the proceedings. The commission's bespoke procedure will be followed.

7.5 What typical defences are available to a defendant in trademark litigation?

Some of the arguments that a defendant can raise in a trademark infringement case include the following:

• The marks are not identical or similar;
• The goods and services are not identical or similar;
• The earlier mark does not have a reputation or is not well known;
• There has been no use in the course of trade;
• The mark has been used in good-faith commercial practice, as part of the defendant's name or as a mark of origin of the goods and services;
• The trademark owner's right has lapsed through exhaustion or because it has tolerated the infringing behaviour for five years;
• The earlier trademark should be revoked for non-use; or
• There are grounds for invalidation of the earlier trademark.

7.6 What is the procedure for appealing a decision in trademark litigation?

Judgments of the Sofia City Court can be appealed before the Sofia Court of Appeal. Judgments of the Sofia Court of Appeal can be challenged before the Supreme Court of Cassation on points of law.

8 Maintenance and removal of registrations

8.1 What is the length of the initial term of registration and what is the length of renewal terms?

Ten years.

8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?

A request for renewal and documentation confirming payment of the renewal fees.

8.3 What are the grounds for cancelling a trademark registration?

• Cancellation on absolute or relative grounds;
• Surrender of rights; and
• Revocation:
• • on grounds of non-use;
  • because the trademark has become a common name for the registered goods and services; or
  • because the trademark has become misleading to the public through use.

8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?

The Bulgarian Patent Office can open cancellation proceedings on the initiative of the chairman if the trademark was registered in contravention of the absolute grounds for refusal under Bulgarian law.

8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?

• Anyone can request the cancellation of a trademark on absolute grounds;
• The holders of earlier rights can request the cancellation of a trademark on relative grounds; and
• Anyone can request the revocation of a trademark.

8.6 What is the procedure for appealing a decision cancelling a registration?

A revocation or cancellation decision can be appealed before the Administrative Court.

9 Licensing

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

No.

9.2 Must trademark licences be recorded with the trademark office or other governing body?

Yes, for a licence to be valid in relation to third parties, it must be recorded with the Bulgarian Patent Office.

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

No, although the trademark owner can enforce its trademark rights against a non-compliant licensee.

10 Protection of foreign trademarks

10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

Foreign trademarks can benefit from all of the protections afforded to unregistered trademarks if they fulfil the legal requirements for those.

10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

Yes.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.