How do I register a trade mark in Bulgaria and the European Union?

The name, logo and distinctive signs of a business are often among its most valuable assets. Through them, customers recognise its products and services, associate them with a certain level of quality and distinguish them from competitors’ offerings.

However, using a name in the course of trade does not automatically provide the full protection afforded by a registered trade mark. Nor does a company name (trade name), a domain name or a social media profile replace registration.

To obtain registered trade mark protection, the right territory and the appropriate goods and services must be chosen, a check for earlier rights should be carried out and an application meeting the applicable filing requirements must be filed with the competent office.

What is a trade mark?

A trade mark is a sign capable of distinguishing the goods or services of one undertaking from those of other undertakings.

The following, for example, may be registered as a trade mark:

• words and names;
• personal names;
• letters and numerals;
• images and logos;
• combinations of words and graphic elements;
• the shape of goods or of their packaging;
• colours and combinations of colours;
• sounds;
• other signs that can be represented clearly and precisely on the register.

Businesses most often register a word mark or a figurative mark containing word elements. A word mark protects the name itself, regardless of the specific font and graphic design. A figurative mark containing word elements protects the combination of words and graphic elements as represented in the application.

If the name has value in its own right for the business, a word mark usually offers more flexible protection. Where the distinctiveness stems mainly from the logo, registration of a figurative mark, with or without word elements may be appropriate. In some cases, filing separate applications for both the name and the logo is justified.

What rights does registration confer?

The proprietor of a registered trade mark obtains the exclusive right to use it for the goods and services for which it is registered and to object to the use of identical or similar signs where there is a likelihood of confusion on the part of consumers.

Depending on the case, the proprietor may object to:

• the affixing of the sign to goods and packaging;
• the offering and sale of goods under the sign in question;
• use in advertising and business documentation;
• use as part of a domain name or an online shop;
• the import and export of goods bearing the sign;
• use on social networks and platforms;
• the registration of a later similar trade mark.

A trade mark may be assigned, licensed, inherited and used as an asset in an investment or in the sale of the business.

Registration does not, however, confer an unlimited monopoly over the word or the image in all fields. Protection is tied to the goods and services specified and to the territory for which the trade mark is registered.

National trade mark or EU trade mark?

Bulgarian businesses have two main options:

1. a national trade mark, registered with the Patent Office of the Republic of Bulgaria;
2. an EU trade mark, registered with the European Union Intellectual Property Office (EUIPO).

National trade mark

A national trade mark has effect only within the territory of Bulgaria. It is suitable where the business is directed mainly at the Bulgarian market and there are no plans to enter other countries in the near future.

Its advantages are the more limited territory to be searched, the lower initial costs and a more limited territorial scope for assessing potential conflicts.

EU trade mark

An EU trade mark provides unitary protection in all Member States on the basis of a single application and a single registration. There is no need to file separate applications in each country.

It is suitable for e-commerce, international services, software companies, manufacturers and businesses that already operate, or plan to operate, in more than one European market.

The unitary character of the EU trade mark also carries a risk. An earlier right in just one Member State may become grounds for opposition to the entire application. The search before filing an EU trade mark application should therefore cover a considerably wider range of rights.

The choice should not automatically be made in favour of the larger territory. The most appropriate strategy depends on the actual markets, the budget, the likelihood of conflict and the plans for developing the business.

What do we need to check before filing the application?

One of the most common mistakes is to file an application first and only afterwards check whether earlier similar trade marks exist.

The preliminary search should cover:

• identical names;
• signs with a similar spelling;
• similarity in sound;
• conceptual similarity;
• translations and transliterations;
• trade marks for identical or related goods and services;
• relevant company names, domain names and other earlier rights.

The check is not limited to searching for an exactly identical word. Two trade marks may be considered similar even where they differ in individual letters, graphic design or additional words.

For example, adding a descriptive term such as “group”, “shop”, “studio” or “Bulgaria” is not always enough to distinguish the new trade mark from an earlier protected name.

Likewise, the fact that the chosen word was not found in an ordinary internet search does not mean that it is available for registration.

Can any name be registered?

No. To be registered, a sign must have distinctive character and must not fall within the grounds for refusal provided for by law.

Problems may arise with signs that:

• directly describe the kind, quality or intended purpose of the goods;
• are customary in the trade sector concerned;
• consist solely of commonplace or promotional expressions;
• may mislead consumers;
• are contrary to public policy or accepted principles of morality;
• contain protected coats of arms, flags or official symbols without authorisation;
• do not make it possible to establish clearly what exactly is being applied for.

A name such as “Fast Deliveries” for courier services, for example, may be perceived as descriptive and lacking sufficient distinctiveness. The more directly a sign describes the product or service offered, the harder it is to monopolise it through registration.

A strong trade mark is usually original and enables the consumer to associate the sign with a specific commercial origin, rather than simply to obtain information about the product.

Who should be the applicant?

The applicant may be a natural person or a legal entity.

For a start-up business, it should be decided in advance whether the trade mark will belong to a founder, to the operating company or to another person who will license it. Filing the application in the name of the wrong person or entity may later lead to conflicts between shareholders, founders, investors or related companies.

If the logo was created by a designer or an advertising agency, the copyright in it should also be dealt with. Paying for the creation of the logo does not always mean the automatic assignment of all the rights necessary for its use and registration.

Before filing, it is also advisable to check that the sign does not contain a name, image or other protected element belonging to a third party.

How is a trade mark registered in Bulgaria?

An application for a national trade mark is filed with the Patent Office of the Republic of Bulgaria in person, by post or electronically.

It must contain at least:

• a request for registration;
• the applicant’s details;
• a clear representation of the trade mark;
• a list of the goods and services;
• the documents and the regulations governing use that are required for special types of trade mark.

After filing, the Patent Office assigns the application a filing date and checks whether the necessary fees have been paid. An examination of formalities is carried out, along with a check as to whether the sign meets the statutory requirements for registration. An official description of the stages is published on the Patent Office’s website.

If irregularities or grounds for refusal are identified, the applicant is given the opportunity to submit observations, to remedy any deficiencies that can be remedied or to restrict the list of goods and services.

Where the application meets the requirements, it is published. A three-month period begins to run from publication, during which proprietors of earlier rights may file an opposition.

If no opposition is filed, or an opposition is finally rejected, the procedure moves on to registration and the issue of a registration certificate.

How is an EU trade mark registered?

An application for an EU trade mark is filed with EUIPO, which has its seat in Alicante, Spain. The procedure is usually conducted electronically.

EUIPO checks:

• whether the application meets the formal requirements;
• whether the goods and services are correctly worded;
• whether the sign has the necessary distinctiveness;
• whether there are any absolute grounds for refusal.

If the application passes the examination, it is published. Publication starts a three-month period for proprietors of earlier rights to file an opposition. EUIPO expressly states that an opposition must be filed no later than three months after publication of the application. More on the opposition procedure.

In the absence of an opposition, the application may proceed to registration relatively quickly. If a dispute arises, the procedure may take considerably longer and involve an exchange of observations, proof of genuine use of the earlier trade mark and an assessment of the likelihood of confusion.

What is opposition?

Opposition is a procedure by which the proprietor of an earlier right objects to the registration of a later trade mark.

A dispute most often arises where:

• the signs are identical or similar;
• the goods and services are identical or similar;
• there is a likelihood of confusion on the part of consumers as to commercial origin.

Once an opposition has been filed, the parties may negotiate an amicable settlement. The applicant may restrict the list of goods and services, the parties may conclude a coexistence agreement or the application may be withdrawn.

If no agreement is reached, the office rules on the dispute. Depending on the outcome, the application may be registered in full, restricted or refused.

How long does registration last?

National trade marks and EU trade marks are registered for a period of 10 years from the filing date of the application.

Protection may be renewed an unlimited number of times for further periods of 10 years each, on payment of the relevant fee. A trade mark may therefore remain protected indefinitely if it is renewed on time and used in accordance with the law.

The proprietor should keep track of the renewal deadline. The offices may send notifications, but responsibility for timely payment remains with the proprietor.

Does the trade mark actually have to be used?

Yes. Registration must not serve solely to block a sign with no intention of using it.

If, for an uninterrupted period of five years, the trade mark has not been put to genuine use for the registered goods or services, it may become vulnerable to revocation proceedings. The proprietor may also be required to prove its use in opposition proceedings against a later application.

Evidence of use may take the form of:

• invoices and contracts;
• packaging and labels;
• advertising materials;
• publications and catalogues;
• sales data;
• photographs of products;
• content from websites;
• documents relating to the relevant territory and period.

The trade mark must be used in the form in which it was registered or in a variant that does not alter its distinctive character.

The most common registration mistakes

Among the most common mistakes are:

1. filing an application without a preliminary search;
2. choosing a descriptive or non-distinctive name;
3. registering only the logo when the main value lies in the name;
4. specifying incorrect classes or more classes than necessary;
5. an overly narrow list of goods and services;
6. filing the trade mark in the name of the wrong person;
7. failing to deal with the copyright in the logo;
8. disregarding foreign rights when applying for an EU trade mark;
9. missing communications and procedural time limits;
10. failing to monitor later similar applications.

The registering office does not constantly monitor the market on the proprietor’s behalf. After registration, it is the owner who should monitor new applications and the use of similar signs and take action in good time.

Conclusion

Registering a trade mark does not begin with filling in a form, but with correctly determining the sign, the proprietor, the territory, and the goods and services that need to be protected.

A national trade mark is suitable for a business focused mainly on Bulgaria. An EU trade mark provides unitary protection in all Member States, but requires a broader preliminary search and carries the risk of earlier rights from any part of the EU being invoked against it.

If you wish to protect a name, logo or other distinctive sign, we can carry out a preliminary search, determine the appropriate classes, prepare and file the application, and represent you in responding to examination objections, opposition proceedings and other trade mark disputes before the Patent Office and EUIPO.