BULGARIA: New Trademark Law Brings Significant Changes

Bulgaria’s new trademark law came into force on December 17, 2019. It transposes the European Union Trade Marks Directive 2015/2436 (the Directive) and includes many substantive and procedural changes, including the following:

• The graphical representation requirement no longer exists. Applicants can now claim sound, hologram, position, pattern, motion, multimedia, or other signs that can be reproduced on the trademark register.

• Among the new absolute grounds for refusal or invalidation are trademarks that cannot be registered pursuant to the EU legislation protecting the names of wines, traditional specialties guaranteed, or trademarks that consist of, or reproduce in their essential elements, an earlier plant variety denomination. Bad-faith filings are still not among the absolute grounds for invalidity despite the Directive mandating for this.

• There are also new opposition grounds. An opposition can be filed on the basis of earlier rights to a company name or a geographical indication. While bad-faith filings can be opposed, bad faith must be established in separate judicial proceedings, contrary to the Directive’s requirement for expeditious administrative proceedings. Prior use remains an opposition ground, although unregistered trademarks are not protected by exclusive rights.

• To combat counterfeiters, rights holders can now prevent the entry of infringing goods into Bulgaria even if they are not intended for sale in the local market, so long as the trademark is protected in the country of final destination. Affixing an infringing trademark to goods, and related preparatory acts, now also constitutes infringement.

• The starting date of the grace period for using an International Registration (IR) designated to Bulgaria has been clarified to address inconsistent practices among the Patent Office of the Republic of Bulgaria (BPO) and the courts. The grace period will be calculated from the date of publication of a grant notice in the BPO’s bulletin.

• The new law improves regulation of intermediary liability and obligations. It also amends the rules on administrative liability for infringement.

• Many statutory time limits have been shortened. For example, the three-month time period to oppose an IR designating Bulgaria begins two months after publication of the mark in the BPO’s bulletin, as opposed to six months after publication as was the case before.

• The rules on official fees have changed. A single basic prosecution fee has replaced separate filing and registration fees, and reimbursement of half of the opposition fee is now allowed when there is an early settlement.

By Dimitar Batakliev, Head of Office, PETOŠEVIĆ Bulgaria

This article first appeared in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).