Why Register a Trade Mark?

The Marks and Geographical Indications Act governs the conditions and procedure for registering trade marks, the intellectual property rights arising from registration and the protection of those rights.

Main Provisions

To begin with, registering a trade mark is not mandatory by law. It is done in order to acquire rights in the mark. The registration procedure is straightforward, the fees are affordable and, in our experience, registration takes 4 to 7 months on average.

On registration, the exclusive right to use the mark is recognised from the date on which the application was filed, not from the date of entry and publication in the State Register of Marks kept by the Patent Office.

A registered trade mark gives you rights and protection for 10 years, and this period may be renewed an unlimited number of times. Use of the mark is a condition for maintaining the registration. It may be revoked if genuine use has not begun within 5 years of registration or has been suspended for an uninterrupted period of 5 years.

What Rights and Protection Does Registration Give Me?

The Patent Office gives the following general answer, which our clients often find unclear.

“The right in a mark includes the right of its proprietor to use it, to dispose of it and to prohibit third parties, without the proprietor's consent, from using in the course of trade a sign which is identical or similar to it. The prohibition includes affixing the sign to goods or to their packaging, offering goods bearing the sign for sale or putting them on the market or stocking them for those purposes, offering or supplying services under the sign, importing or exporting goods under the sign, and using the sign on business papers and in advertising.”

The Marks and Geographical Indications Act answers this question comprehensively. Below, we focus on the main benefits of the rights that registration confers.

Rights Arising from Registration

The right of the proprietor of a registered trade mark includes the right

• to use it;
• to dispose of it;
• to prohibit third parties, without the proprietor's consent, from using the mark in the course of trade.

Disposal of the Mark

Disposal of the right in a registered trade mark includes

• assignment of the right in the mark;
• authorisation to use the mark by a written exclusive or non-exclusive licence agreement.

To have effect against third parties, such agreements must be entered in the State Register of Marks kept by the Patent Office.

Enforcement and Security

The right in a registered trade mark may be subject to enforcement by way of

• garnishment;
• a special pledge;
• security for a pending or future claim;
• inclusion in the insolvency estate in insolvency proceedings.

Prohibition of Use by Third Parties

The prohibition of use in the course of trade of a trade mark registered by another person includes

• affixing the sign of the registered mark to another's goods or their packaging;
• offering goods bearing the sign of a mark registered by another person for sale, putting them on the market, or stocking or holding them for those purposes, as well as offering and supplying services under another's sign;
• importing or exporting goods bearing the sign of a mark registered by another person;
• using the sign of a mark registered by another person as a trade or company name or as part of one;
• using the sign of a mark registered by another person in advertising in breach of Art. 34 of the Protection of Competition Act;
• using the sign of a mark registered by another person on business papers;
• using or affixing the sign of a mark registered by another person in preparation for possible future infringements, such as the design and production of packaging, labels, tags and any other means and materials to which the registered mark could be affixed.

Territorial Scope of Registration

Before registering your trade mark, you need to decide on the territorial scope of protection you want. The options are as follows.

• National registration – an exclusive right in the territory of the Republic of Bulgaria.
• European Union trade mark – rights throughout the European Union.
• Registration in a specific third country – rights only in the territory of the chosen country, under its national law.
• International registration – under the Madrid Agreement Concerning the International Registration of Marks and the Protocol relating to the Madrid Agreement.

If you need assistance with registering or protecting a trade mark, our intellectual property team can assist you at every stage of the procedure.