This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.

The draft amendment to the current Bulgarian trademark law, which provides for major changes to trademark registration procedures, has passed the first round of voting in the National Assembly.

Historical change

The sustainable development and the stability of the market economy in the last decade, as well as the necessity for further harmonisation of the national law with the practice of the Office for Harmonization in the Internal Market, necessitated various amendments to the current Bulgarian trademark law. The major change is an historical one and concerns the registration procedure and the opposition procedure.

The current registration procedure

Traditionally Bulgaria has had high, strict and conservative requirements for registering a trademark compared to countries with liberal registration requirements and without a detailed preliminary examination. Hence the Bulgarian Patent Office (BPO) is obliged to examine the mark ex officio in respect of the absolute and the relative grounds for refusal, regardless whether an opposition has been filed by an interested party or not. This means little effort on the part of owners of prior rights is required.

On the other hand, companies wishing to register new trademarks have to face a long and exhaustive registration procedure, especially in the wake of Bulgaria's accession to the EU when a vast number (ca. 350,000) of earlier Community trademarks extended their validity automatically to the territory of Bulgaria and had to be taken into consideration by the examiners at the BPO.

Upcoming amendments

This situation is about to change with the proposed amendments, which provide for a registration procedure identical to that of a Community trademark. The BPO must examine the application only in respect of the absolute grounds for refusal, publish and register the mark, unless a notice of opposition to registration by an owner of an earlier mark or by the licensee under an exclusive license agreement had been filed within three months of publication.

The transitional and final provisions of the draft law provide for an 18-month period (following publication of the adopted new law in the State Gazette; exceptionally long) after which the provisions concerning the change of the registration procedure will enter into force. This is further proof of the importance of the change. Within this period various clarification campaigns are to be conducted. These will aim to familiarise the parties concerned with the new procedure and adjust their trademarks management policies to the new registration regime, which requires close monitoring of the competitors' trademark strategies and a better protection of their own marks.

Other major changes

Other major changes include the following.

  • Shortened terms, which will lead to faster registration proceedings.
  • Abolition of the separate register of well-known marks maintained by the BPO, which was introduced in 2006 against the advice of the experts. Because it is inconsistent with the nature of the well-known marks, the register has not been a success.
  • A more detailed and accurate definition of the term "earlier mark" as per Art. 8 (2) of the Community Trade Mark Regulation No. 207/2009.
  • Abolition of the provision which divided the marks in trademarks, service marks, collective marks and certificate marks in accordance with the internationally used unified term in the area of trademarks matters.
  • Introduction of a new absolute ground for refusal of trademarks that include badges, emblems or escutcheons other than those covered by Art. 6ter of the Paris Convention and which are of particular public interest.

Conclusion

The impending amendments to the Bulgarian trademark law will require much greater efforts on the part of trademark owners who want to prevent the registration of new marks similar to their own. In the future their rights will only be considered if they file an opposition. Owners of existing trademarks are strongly recommended to install watch services which inform them about new trademark applications that might conflict with their own rights.

The situation is about to change with the proposed amendments, which provide for a registration procedure identical to that of a Community trademark.

This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.

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.