The recent case-law from the General Court and the Court of Justice demonstrates that 3D marks that represent the shape...
Bulgaria has finally adopted the new Law on Marks and Geographical Indications. The new act was necessary because of the many changes introduced by Directive (EU) 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trademarks.
As a whole the law brings clarity to certain aspects that were previously confusing. Most procedures are now explained in more details, especially the recordal of licenses, the requirements for proof of famous marks and marks with reputation, the forms of use of a trademark, which now includes use in comerative advertising.
Here are some of the most significant changes to the current legislation that are significant in both procedure and substantive law:
- The definition of what is a trademark is updated to reflect the changes made on EU level. This means that the need for graphical representation of the mark is abolished, leaving room for new non-traditional marks to be applied for.
- To make the procedures before the Bulgarian Patent Office expedient almost all time limits are shortened, some significantly.
- The trademark owner would find it difficult to object to the use of non-distinctive elements/marks and when the earlier mark was not put to genuine use.
- Even is the owner of an earlier mark cannot object to the registration of a younger one, the owner of the younger registration cannot prevent the use of the earlier mark. Therefore, there is the chance of coexistence on the market.
- The procedure for opposition now gives an incentive to the parties to reach an amicable agreement by refunding half of the opposition fee if the parties solve the matter within the cooling-off period.
- New evidence, which were not submitted in due time, would not be allowed.
- Bad faith is introduced as ground for opposition. The decision of bad faith, however, should be made by the Court, not the BPO.
- The defendant in an infringement law suit would have the option to stop the proceedings by filing request for revocation of the earlier mark due to non-use.
The new act is a step forward to the modernization of the legislation and the catching up with the market reality. However, the changes most certainly require attention and understanding. Few aspects would also need further clarification and interpretation from the courts, especially the scenario in which two similar marks coexist on the market, possibly creating likelihood of confusion, and none of the owners could do anything.