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New law on trademarks in Bulgaria

Bulgaria: New Law on Trademarks and Geographical Indications entered into force on December 17, 2019

A new Law on Marks and Geographical Indications (LMGI) entered into force on December 17, 2019 in Bulgaria. The new LMGI aims to transpose Directive (EU) 2015/2436 into the national legislation, as well as to bring the national legislation regarding geographical indications in line with the provisions of Regulation (EU) No. 1151/2012, Regulation (EC) No 110/2008, and Regulation (EU) No 251/2014.

The new law is applicable to all applications and invalidation proceedings for which no decision has entered info force as of December 17, 2019.

The main changes can be summarized as follows:

Definition

In accordance with Directive (EU) 2015/2436, the requirement for “graphical representation” has been abolished. Instead, the sign should be capable of being “represented in the State Register of Marks in a way that allows the subject of the protection provided by the registration to be clearly and accurately determined.”

Usage in the course of trade

The scope of the term “usage in the course of trade” is now broader and it also includes (i) using the sign as a trade or company name or part of a trade or company name; (ii) using the sign in comparative advertising in a manner that is contrary to the corresponding provisions of the Law on Protection of the Competition.

Absolute grounds for refusal

The prohibition to register a mark related to the shape of the goods has been extended also to “other characteristics”, which is a result of the removal of the requirement for graphical representation.

Further absolute grounds for refusal has been added referring to the local and EU legislation and international agreements regarding geographical indications, traditional speciality guaranteed, traditional names for wines and plant variety.

Relative grounds for refusal

Some new relative grounds for refusal (and consequently – grounds for filing an opposition) have been added, namely: (i) bad faith – however, the bad faith of the applicant should be established by a court decision; (ii) company name used in the course of trade, (iii) geographical indications.

With regard to trademarks with reputation, it has been explicitly specified that protection will cover not only dissimilar goods and services, but also goods and services identical and similar to the goods and services of the earlier mark. Furthermore, if is now clarified that if the earlier mark is an EUTM, the reputation should refer to the territory of the EU (and not Bulgaria).

With regard to trademark applications filed in the name of the agent or representative of the real owner, the new law provides that the registration will not be refused if the agent/representative can justify its actions. Furthermore, the real owner might as well request the application to be transferred to its name, instead of being refused, as a result of the opposition proceedings.

Oppositions

The following novelties have been introduced with regard to opposition procedures:

  • the three-month term for filing oppositions against the Bulgarian designation of IRs will start running after two months following the date of publication of the IR in the local bulletin (and not after six months, as according to the old law)
  • if an agreement between the parties has been reached during the cooling-off period, ½ of the opposition fee will be returned to the opponent, under its request
  • requests for proof of use of the earlier mark will be admissible if the earlier mark has been registered for more than 5 years as of the date of filing/the priority date of the contested application (and not as of the date of filing of the opposition, as according to the old law)
  • if the opposition is directed only against a part of the goods, the applicant can divide the application. The new (divided) application should contain the goods/services of the initial application, which have not been opposed.

No registration fees

The new LMGI abandons the two-stages payment of official fees. If no oppositions have been filed (or an opposition has been found ungrounded), the application will be registered and the registration will not be a subject to payment of registration fees. A single fee should be paid at the beginning.

With regard to the new system of payment of official fees, a new Tariff of Fees is expected to be published soon.

Appeals and invalidation procedures

The appeal and invalidation (cancellation and revocation) procedures have been prescribed in more details. In particular:

  • it is specified that the date from which the five-year grace period for non-use for IRs is calculated is the date of publication of the IR in the local bulletin
  • it is explicitly specified that the holder of the mark against which a cancellation request has been filed can request proof of use of the earlier mark, if the earlier mark has been registered for more than 5 years as of the date of filing of the request for cancellation. If as of the date of filing of the contested mark/the priority date more than 5 years have passed from the registration of the earlier mark, then the proof of use should also cover 5 years before that date.

Terms

In order to provide faster procedures, the new law provides shorter terms – both procedural terms for the parties in various proceedings and terms for the PO to issue decisions.

Confidential information

When parties present information to the PO in various proceedings, they could indicate and motivate that certain materials and documents contain trade secret and should be treated as confidential. In such cases, the PO will send a notification to the parties of the proceeding indicating the possibilities for obtaining a copy of the confidential materials. Decisions will be issued in two versions. The complete decisions will be kept in the files and the parties will be notified about the possibilities to be provided a copy. Short version of the decisions where the confidential information does not appear will be published online.

Enforcement and infringement

The new law explicitly provides that proof of use of the earlier mark can be requested within a lawsuit for trademark infringement, if the earlier mark has been registered for more that 5 years as of the date of filing of the lawsuit.

The administrative liability and fines have been increased.

Geographical indications

The new law provides that GI for agricultural products and foodstuffs that fall under the scope of protection of Regulation (EU) No 1151/2012, for spirit drinks that fall under the scope of protection Regulation (EC) No 110/2008, for products under Art. 92, par. 1 of Regulation (EU) No 1308/2013 and for aromatised wine products that fall under the scope of protection of Regulation (EU) No 251/2014, shall be refused. The registration of all existing GI for those products has been terminated.

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Djura Mijatovic will be participating in the INTA Leadership Meeting 2019

Djura Mijatović, our Managing Partner will be participating in the INTA Leadership Meeting which will take place November 19th-22th 2019 in Austin, Texas, USA.

Arrange a meeting by sending an email to djuram@zm-p.com.

The Leadership Meeting brings together INTA volunteers and leaders once a year to advance the Association’s objectives and goals. This meeting offers registrants an advanced-level educational program and the opportunity to conduct business and network with colleagues from around the world over four days in an amazing location. INTA is excited to bring the Leadership Meeting to Austin, Texas for the first time—“Live Music Capital of the World” and home to some of the best BBQ in America.

https://www.inta.org/2019Leadership/Pages/Overview.aspx

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Tomasz Rychlicki is a co-author in the Cambridge Handbook of Intellectual Property in Central and Eastern Europe

We are proud to announce that Tomasz Rychlicki, our colleague from the Polish ZMP office, has co-authored the chapter titled The Polish Struggle with the Concept of Copyrightable Work: A Brief Look at the History and Contemporary Issue featured in the recently published Cambridge Handbook of Intellectual Property in Central and Eastern Europe. Congratulations Tomek!

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Monica Novac will be participating in INTERPOL IP Crime Conference

Monica Novac from our Romanian office will attend the third edition of EUROPOL IP Crime Conference in Malaga, Spain, during June 17-June 19, 2019. The event will benefit of the attendance of several experts from law enforcement, private industry and academia and will focus on new modus operandi related to IP crime and the different and original ways to fight against it.

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ZMP at ETMD EP

ZMP at EUIPO Trade Mark and Design Education Programme (ETMD EP)

ZMP is proud to announce that Daniela Moreira from our Alicante office and Monica Novac from our Romanian office successfully completed the first edition of the EUIPO Trade Mark and Design Education Programme (ETMD EP). ETMD EP is a training program for IP practitioners extended for 9 months and covering approx. 150 hours of online and face-to-face tuition delivered by EUIPO staff, leading IP professionals and academics. The program focused on practical matters related to the prosecution, registration and post-registration of European Union trademarks and Community designs.

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ZMP at INTA 2019

10 Attorneys from different ZMP offices will be participating in INTA 2019

Following attorney’s will represent ZMP at this year’s INTA Annual Meeting:

Djura Mijatovic – Spain
Marija Markićević – Serbia
Tsvetomira Vasileva – Bulgaria
Joanna Szota – Poland
Vladimir Marenović – Serbia
Nikola Kliska – Serbia
Mina Jovanović – Serbia
Jovana Stefanović – Serbia
Metka Malis Furlan – Slovenia
Daniela Moreira Mangles – Spain

We are looking forward to seeing in you in Boston!

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