In my article When and should I register a Name as a brand I discussed the issue in which cases you should keep your name as a trade mark and how to choose a name/logo.
In my article In which countries to register your own brand I discussed what trade mark to register – national, regional, and national or regional with international registration, correspondingly.
In this article we will present the procedure for the registration of a national Bulgarian trade mark.
Registration starts with the choice of a name/logo which you should register as a trade mark.
The check of your chosen name/logo is not an obligatory step of the registration procedure by law, but in our opinion, it is the most important and vital step and for this reason we strongly recommend all our clients check their chosen name/logo – if it is not identical or similar to earlier trade marks and/or applications for registration of trade marks. In this reference, you may contact us and we will be pleased to assist you.
This check may be made informally – by research within the database of the Patent Office or formally – by payment of a fee to the Patent Office to make such a check. The fee to be paid to the Patent Office varies according to the time for which we would like to have such check made.
If it appears that the name/logo chosen by you is similar or identical to earlier trade marks and/or applications for trade mark registration, we recommend you limit your selected goods and/or services so as to avoid any opposition on the part of the earlier trade marks/applications, and if that is not possible, to change your selected name/logo or to choose a new one in order to avoid any possible oppositions against your application by the owners of earlier similar and/or identical trade marks/applications.
As part of the check of a name/logo you should make an assessment if it does not have an indicative nature with respect to the goods and/or services, which you will designate/offer through the trade mark. For example, if you produce strawberries, you cannot keep the image of a strawberry or the word ‘strawberry’ as a trade mark, because they indicate the type and nature of goods that you produce and the Patent Office will reject your application, but if you produce computers, then there is no problem to keep the image of a strawberry or the word ‘strawberry’ as a trade mark of your produced computers.
After making a check for the name/logo, you should submit an application for trade mark registration and pay the due state fee to the Patent Office to make such check for you.
Patent Office makes an official check of the trade mark where to look for the so called absolute reasons for refusal, such as if the trade mark is not in conflict with the good morals (this is the case when it has depiction of obscene or forgotten words or symbols), if it has an indicative nature (as in the above example) and if it presents common symbols, national emblems and signs (for example, you may not keep as a trade mark the sign of conformity “CE”, which is placed on certain products designed for the EU trade market and represents the abbreviation of the French phrase “Conformité Européene”, which literally means “European conformity”).
If the Patent Office decides that there are no absolute reasons to reject your application for registration, then it will publish it in its official journal.
Patent Office does not watch officially for the presence of earlier and/or identical trade marks/applications.
For this reason, there is a three-month period that starts running from the date of publishing, within which the owners of earlier similar or identical trade marks/applications, if any, may file an opposition against your application for trade mark registration requesting that the Patent Office issue a refusal for registration of your trade mark, because it is similar or identical to theirs and could confuse consumers.
If an opposition is filed, the registration proceeding will be ceased until issuance of a resolution by the opposition department. The resolution of the opposition department, however, is not final and may be appealed to the dispute department at the Patent Office, whose resolution in turn is subject to a court supervision. To file an opposition and to make an appeal you should pay state charges and lawyer’s fees and representatives of industrial property. Except related to payment of fees and state charges, the whole opposition proceeding takes a lot of time and may last for about 3-4 years if the resolution is appealed to all of the above instances. That is why, we always advise our clients to check their selected name/logo for the availability of any earlier similar or identical trade marks/applications in order to avoid any possible oppositions and thus saving money and time and to register their trade mark quicker and successfully.
Another period of 3 months starts running as of the date of publishing of the application in the journal, within which each individual or legal entity is entitled to make an objection against their submitted application if they think that the Patent Office has not made a due check and the published application is in conflict with any of the so-called absolute reasons for refusal, described above, that should be under the official supervision of the Patent Office. Any objections are made at no cost.
If no oppositions and/or objections are files against the published application for trade mark registration within 3 months after its publishing or the objections and oppositions so filed have been rejected, the Patent Office shall serve a notice on the applicant to pay a fee for the trade mark registration, and after that it will register the trade mark and issue a certificate for its registration.
The registered trade mark is published in the journal of the Patent Office and is valid for 10 years, and after that it may be renewed many times for another consequent periods of 10 years upon payment of the respective fee.
Andon Nastev, Attorney-at-law
Petya Noycheva and partners law office