Amendments to Bulgarian Law on Marks and Geographical Indications in Force as of March 10, 2011

The Bulgarian Law on Marks and Geographical Indications (LMGI) amendments, in force as of March 10, have introduced the opposition system and brought about major changes to the trademark registration process carried out by the Bulgarian Patent Office (BPO).

The amendments regulate the examination procedure and define timeframes. The examinations are now performed faster by the BPO, within two months from the date of the payment of the application fee. The registration period is shortened, as the BPO does not conduct substantive examinations anymore. If a mark is not opposed within the opposition period, the registration is granted. The EU trademark conversion system is improved through a comprehensive ex officio examination and a clear definition of the procedures taking place at the BPO.

According to the amendments, the substantive examination is to be done ex officio on absolute grounds with respect to trademark applications filed after March 10. International trademarks designating Bulgaria are to be published in the Official Gazette issued by the BPO, along with the national trademark applications. According to the new procedure, as outlined in the amendments, an observation can be filed on absolute grounds within three months from the date of the applications publication. All natural and legal persons as well as consumers, service providers, producers, etc, are entitled to file an observation.

In this respect and within the same period of three months from the publication date, the following persons are entitled to file an opposition notice with the BPO:

• Earlier rights holders within the scope of Article 12 of the LMGI;

• Exclusive licensees;

• The owner of an unregistered trademark used in the course of trade on the territory of Bulgaria and for which a trademark application is filed;

• Trademark owner whose trademark is filed by an agent or a representative without his consent.

The new opposition proceedings are inter partes proceedings. A copy of the opposition notice is provided to the trademark applicant along with a three-month cooling-off period giving the parties the possibility of reaching an agreement. The cooling-off period can be extended twice upon the parties’ request. If an agreement is concluded, the opposition proceedings are terminated.

However, if the parties fail to reach an agreement, the trademark applicant has two months to provide a written response to the opposition notice. The applicant’s response is subsequently sent to the opposing party who then has to submit a reply within one month from the receipt of the applicant’s response. If the applicant fails to respond within two months, the Opposition Division is to issue a decision on the basis of the opposition notice.

Another defense tool is given to the trademark applicant for the first time in opposition proceedings before the BPO. An applicant has the possibility to request proof of use of the earlier trademark provided the five-year non-use grace period has expired. The earlier trademark holder has to submit evidence within two months.

The decision of the Opposition Division can be appealed before the BPO’s Disputes Department against whose decision an appeal can be filed before the Sofia Administrative Court.

The new opposition system will lead to the re-distribution of trademark protection responsibilities between the public sector and the private one. As a result it is expected that the registration process will be considerably accelerated.

Consequently, interested companies will be left to judge for themselves whether a certain mark can be a threat to their market position. This practically eliminates the subjective judgment of the BPO experts, who do not always have a picture of the current market situation. The trademark owners can therefore estimate on their own how much of an impact the identical or similar marks will have on their businesses.

The new system is fully compliant with the examination procedure performed by OHIM.

For more information, please contact Iana Roueva at our Bulgaria office.

Source: Bulgarian PTO