Trademarks

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.

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.

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.

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.

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.

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.

The Bulgarian Patent Office (BPO).

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.

Yes.

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.

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.

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

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

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.

No.

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

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

Typically, it takes up to one month.

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.

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.

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

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.

Yes.

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.

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

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

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.

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

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.

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.

No.

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.

See question 7.1.

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

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.

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.

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.

Ten years.

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

• 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.

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.

• 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.

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

No.

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

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

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

Yes.