My customers often ask me if and when they should register their name or their company’s name as a brand and if this is necessary for the names of the goods and services that they supply.
Trying to avoid the complex terminology and procedural formalities, I will try to answer the question asked in the title of this article.
The first thing that you should do is to answer the question which is the name under which you supply your goods or services?
If your name is Ivan Ivanov and you are a photographer, but you do not market your photograph services under your name – Ivan Ivanov, but under the name of Iv Style, then in this case it will be pointless for you to register your name as a brand, but to register Iv Style as a brand for the photograph services that you provide. However, if your services are provided under your name – Ivan Ivanov, then there is a point and you should also register your name as a brand for the services provided by you.
If you have a company manufacturing and marketing furniture and it is named VIVA EOOD, but you sell furniture bearing the name Iv, then it will be pointless for you to register the company’s name as a brand, too, but to register Iv as a brand for the furniture sold by you. However, if you offer furniture using the company’s name – VIVA, then you should also register your company’s name as a brand for the goods offered by that company.
When should you register the brand for the goods or services that you supply?
The short answer is: ‘as early as prior to your launch on the market/start a business’. Hostile competitors and imitators would not hesitate to use the name of a product or a service that has become popular on the market or just to harm your business. Without having a trademark, it would be impossible for you to defend your hard-earned reputation of the goods or services that you supply. It will be even harder, if somebody else books before you the name of the goods or the service that you supply, as in this case such ill doer may even prohibit you from selling the goods and rendering the services under this brand. So, do not wait!
What if you have missed to register a brand and what could you do to defend yourself at a later moment?
Name, whether belonging to a human or a company, falls within the category of the so-called subjective rights and as such it is used by the defense of a number of legal regulations and judicial means. One of the judicial means of defense is provided by the Bulgarian Marks and Geographical Indications Act. It reads that the right to a name arising earlier in time gives the right to its owner to file a request for deletion of the identical or similar brand arising at a later time, registered for goods or services as these offered by the individual or the company in question.
For this purpose, it should be proved that your goods or services are similar, but you have entered the market earlier.
The requests for deletion are considered by the Patent Office of the Republic of Bulgaria. Their processing usually takes about a year, and even longer in some cases.
The decision of the Patent Office is not final; it may be subject to appeal before the court taking usually about a year, two or three years, depending on the specific case.
The proceedings before the Patent Office and the court are related to costs, such as state and legal fees, and fees for industrial property professional representatives and lawyers, and the most important – they take too long.
All that may be avoided and saved if you, offering your goods or services, file an application in due time for registration of your company name or that of your goods and services as a brand – for the respective goods or services that you supply.
Registration procedure takes about a year if there are no oppositions filed against the application for brand registration and it is far not as expensive as you probably think. Once your application is submitted, your brand gets protected against hostile competitors and imitators.
One of the problems that may arise during the registration proceeding is that if the name you want to register as a brand is descriptive/narrative with respect to the goods or services your company supplies.
For example, if your company name is Furniture EOOD and it manufactures and sells furniture under the name of Furniture. In this case the Patent Office should reject the registration of the Furniture brand, because it will not be distinguishing with respect to the offered goods, and further, this may not prohibit all other entities manufacturing and selling furniture from using the word ‘furniture’ in this aspect.
In this case the brand could be registered not as a word mark, but as a combined mark – adding an image and/or other words to ‘furniture’, thus emphasizing a distinguishing feature of the brand against the supplied goods and/or services – furniture.
Andon Nastev, Attorney-at-law
Petya Noycheva & Partners Law Office