The new Bulgarian Law for marks and geographical indications (LMGI) will facilitate and speed up a number of procedures in the intellectual property field. State Gazette No. 98/13.12.2019 published the new LMGI intended to replace the 1999 law of the same name. As early as the public consultations regarding this change it was pointed out that the adoption of a brand new law (as opposed to amending the old one) is necessary ‘given the volume of the proposed amendments, as well as the fact that the changes are significant and complex and reflect the dynamic of the development of the practice of applying LMGI while simultaneously they implement new material norms and procedural rules’. According to the same motives, the new Law for marks and geographical indications ‘will ensure the harmonization of the applicable domestic legal protection of those objects of industrial property in accordance with the requirements of the European legislation’.

The first procedural change does away with the requirement that persons be represented by Bulgarian industrial property representatives before the Patent Office. The new wording of Art. 3 LMGI also allows persons to be represented by representatives who are entitled to perform the same function in other EU member states.

It should be noted that Art. 42, para. 1 removes the possibility to apply for trademark registration at the Patent Office premises, but this oversight will probably be rectified. The Law also envisages the compilation of administrative fees due in the trademark registration procedure. Furthermore, a number of requirements have been refined – regarding the form and ramifications of a license agreement; using the mark as collateral, enforcement; registration of collective and certificate marks; opposition etc.

The time periods for the Patent Office’s actions have been slashed in a number of cases (the period for formal examination has been cut from 2 to 1 month; and the period for substantial examination has been reduced from 3 to 2 months, for example), however, a number of time periods to be observed by applicants have met the same fate (the time period for declaring changes to the address and name of the trademark owner has been reduced from 3 to 1 month etc.). All of these changes should shorten the basic procedure for registration of trademarks by 1/3, down to 8 months. The most significant cuts have been to the substantial examination of applications for registration of geographical indications – from 18 to 2 months.

The law refines the definition of a ‘trademark’ and adds a few new absolute grounds for refusal aimed at the ex officio protection of plant varieties, traditional terms for wine etc. Of particular note when it comes to relative grounds for refusal is the provision of Art. 12, para. 7 LMGI, which introduces protection for merchants who have opposed an application for a trademark consisting of or containing the merchant’s firm, which has been used in Bulgaria before the application date for identical or similar goods or services. The only protection provided to merchants under the old LMGI was the request for invalidation of an already registered trademark, without the possibility to do so during opposition. In keeping with the spirit of this change, the law introduces the new right of the trademark owner to forbid third parties to use a registered trademark in their commercial or firm name. It should be noted that without the consent of the trademark owner the preparation for committing other infringements (for example manufacturing of labels etc.) is now considered an infringement itself. The category of persons entitled to file claims against the offender has been drastically increased, and the law introduces an entirely independent claim for cessation of activities against middle-men where the activities in question facilitate breaches of LMGI rights.

The regime for enforcement of customs measures for protection has also been fully revamped. Until now, these measures were implemented pursuant to the provisions of the Ordnance for the border measures for protection of intellectual property rights. The new LMGI subjects the protection regime entirely to Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003. Even though nominally still in force, the Ordnance should be considered implicitly repealed given that all the cases where it was previously applied are now explicitly under the purview of Regulation No. 608/2013.

Last but not least, the new LMGI establishes greater administrative-penal responsibility for breaches of the law, while fines and penalties for the various violations have been increased by 3 to 6 times.

The transitional and final provisions of the law also replicate parts of the aforementioned innovations into the Law for patents and registration of utility models, the Law for industrial design, the Law for copyright and related rights and others – regarding the right of European industrial property representatives to represent persons before the Patent Office, as well as regarding the measures for protection by customs authorities.

Obretenovi Law Firm’s team is ready to assist you in pursuing the new avenues the law provides to your business.