With the 13 December 2019 passage of the Marks and Geographical Indications Act (MGIA), Bulgaria implemented the EU's Trade Mark Directive (2015/2436), which was issued to harmonise national trade mark laws among member states.
Representing a substantial modernisation of Bulgarian trade mark law, the new act includes the following changes:
Improved concept for a “trade mark”
The graphic representation of the sign is no longer required for a valid trade mark application. Pursuant to the newly passed MGIA, trade mark representation can be made in any manner that enables determination of the clear and precise subject matter for which protection is sought.
This change, taking in account technological developments and the digital era, will facilitate the registration of motion or moving marks, hologram marks, sound marks, as it is now possible these to be represented in a multimedia format. Examiners will be able to directly view or hear representation on an object. It remains to be seen, however, whether the new technologies will allow the representation of signs based on taste, smell or texture.
Grounds for refusal of trade mark registration
The list of absolute grounds for refusal of trade mark registration has been amended to include revised and additional grounds for refusal. Signs consisting exclusively of the shape or another inherent characteristic of goods cannot be registered. In addition, signs cannot be registered if they infringe on national or EU legislation or international agreements involving the EU or Bulgaria (e.g. geographical indications, traditional terms for wine, traditional guaranteed specialities or plant varieties).
The wording for some of the relative grounds for refusal of registration is aligned with the Trade Mark Directive. Trade marks with reputations in Bulgaria, but also EU trade marks with reputations in the EU are protected against late applications in Bulgaria regardless of whether the goods or services applied for are identical or similar to those related to the earlier trade mark.
Opposition to applications made in bad faith can be filed, but the bad faith intent should be established in separate court proceedings. Action can also be taken against applications made by an agent or a representative of a proprietor who registered without authorisation. Opposition can now be based on multiple prior rights in the name of the same person.
Amended rules aimed at increased protection
Certain rules concerning the protection of trade marks have been improved in line with the Trade Mark Directive. The proprietor of a trade mark is now entitled to prohibit preparatory acts related to infringing activities, such as affixing an infringing sign on packaging, labels, tags or other materials.
The list of parties entitled to claim trade mark infringement has been slightly modified, to include the co-proprietor on a stand-alone basis and the actual proprietor of a trade mark registered without its authorisation. The beneficiaries of an exclusive or non-exclusive licence and the permitted user of a collective mark also enjoy the right to a claim, subject to the consent of the proprietor or its failure to act.
The list of possible claims now includes prohibition of the activity that could constitute an infringement. Notably, claimants now have a valid claim against the intermediary whose activity could facilitate infringement.
Certain procedural terms have been shortened for registration of a trade mark, opposition, invalidation and revocation of marks and geographical indications.
The new MGIA introduces a single-phase payment model where the entire fee for the requested services should be paid at the outset.
Other changes in the MGIA include the provision of detailed rules on the dossier of the trade mark or its geographical indication and access to it. The MGIA allows trade mark attorneys registered in other EU member states to interact with the Bulgarian Patent Office.
The list of infringing activities triggering administrative sanctions has been expanded to include bringing goods into the territory of Bulgaria from third countries that are known to infringe on trade mark rights. The unauthorised use of a geographical indication can also be sanctioned and the amounts of fines have increased as a result of the new legislation.
For more information on the MGIA and how it could affect your business, contact your regular CMS source or local CMS experts: Nevena Radlova and Tatyana Yosifova. The article is co-authored by Kalina Krastanova, Trainee at CMS Sofia.