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News-Archiv

09.03.2011
News-Archiv, GUS & Osteuropa

Amendments of the Bulgarian Law on Marks and Geographical Indications

by "Interius" Attorneys at Law & Patent and Trade Mark Attorneys interius@nat.bg


On March 10, 2011 amendments of the Bulgarian Law on Marks and Geographical Indications (LMGI) will come into force, which will bring substantial changes to the current trademark registration system. The most important of them which might need your immediate attention are with regard the introduction of opposition proceedings.

According to the current LMGI the Bulgarian Patent Office carries out a full ex officio examination on both absolute and relative grounds.

After March 10, 2011 no ex officio examination on relative grounds will be carried out anymore. The Patent Office will carry out only a formal examination of the application and a material examination of the mark on absolute grounds only. If no opposition is filed an application, which passes the examination on absolute grounds, will automatically proceed to registration.

The term for filing an opposition will change from two months currently to three months after publication of the application. The time frame for filing an opposition against an International Registration, which will for the first time now also be published in the Official Bulleting of the Bulgarian Patent Office, will be between the sixth and the ninth month after the publication of the IR.

An opposition may be filed by the owner of an earlier trademark and by the licensee in the case an exclusive license has been recorded against the earlier TM registration (currently an objection can be filed by anyone). An opposition may also be filed by the real owner of a non registered mark, which has been used in the commercial activities on the territory of Bulgaria prior to the date of filing the application. The party filing the opposition becomes party to the proceedings and both the party filing the opposition and the applicant may present proof, arguments and arguments/comments regarding the other party’s arguments. The well known character of an earlier mark may be used as an argument during the opposition proceedings.

The Registry of the well known marks/marks with reputation will be abandoned. The well known character of a mark / mark with reputation may be proven before the Patent Office during an opposition/cancellation action and does not necessarily have to be proven in a separate proceeding before the Sofia City Court.

The opposition procedures as provided in the law are as follows:

The oppositions will be considered by a newly formed Opposition Division with the BPO. After the opposition is filed the applicant is informed of the filed opposition and both parties are given a three months term (extendable twice by another three months) to reach a settlement. If no settlement is reached the applicant is given a two months term to reply. The reply by the applicant is sent to the party filing the opposition and this party is given a one month term to reply to the applicant’s reply. The party filing the opposition may need to provide proof of use of the mark on which they rely for the opposition, if it has been registered for a period longer than 5 years. This requirement will also be introduces after March 10, 2011 as until now proof of use only had to be presented only in case of a cancellation action against a trademark. The term for the BPO to render a decision is six months after the conclusion of the correspondence between both parties.

The decision of the Opposition Division can be appealed before the Disputes Department within three months from receipt by each party. As until now the decision of the Disputes Department can be appealed before court in two instances.

If an opposition is filed and the same is rejected as ungrounded the party filing the opposition may not file a cancellation action based on relative grounds against the registered trademark.

A cancellation action against a mark registered in breach of the relative grounds for refusal may only be filed by persons, who did not file an opposition and by parties, who filed an opposition but which opposition was rejected as inadmissible. The fee for a cancellation action is expected to be higher than the one for an opposition.

The above mentioned amendments will apply to applications filed after March 10, 2011 and to applications, which have not yet been published to this date.

The new version of the LMGI also introduces official fees for filing an opposition.

The new Tariff of the Patent Office is not yet published. It is expected that the Tariff will be approved by the Council of Ministers in due time before March 10, 2011.

A Draft for a Decree for the Order for Drafting, Filing and Consideration of Oppositions is prepared. It has to be adopted by the Council of Ministers.