SHORTER TERMS AND HEAVIER SANCTIONS IN THE NEW TRADE MARKS AND GEOGRAPHICAL INDICATIONS ACT
18 December 2019
The new Trade Marks and Geographical Indications Act (TMGIA) entered into force on December 16, 2019. Part of the amendments to the previous Act are related to implementation of provisions of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks, while other changes aim to align our legislation with the EU regulations on geographical indications. A number of procedural rules concerning registration of trade marks and geographical indications have also been amended and supplemented.
Definition of a trade mark
According to the new definition of a trade mark the requirement for its graphical representation no longer applies. When applying for a registration of a trade mark, it is now permissible to represent it in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. This novelty would facilitate the registration of national sound, colour, motion, multimedia, hologram and alike trade marks, the application of which caused difficulties because of the graphical representation requirement.
By analogy with the EU trade marks, a single fee for application and examination has been introduced and it is payable at the beginning of the trade mark registration procedure, in contrast to the previous regime where fees were paid in two stages – one upon filing the application and a second one upon successfully completed registration of the trade mark. The amount of the fee, as well as the number of classes of the International Classification of Goods and Services covered by the basic fee, are to be regulated by a new Tariff of fees collected by the Patent Office.
Registering a trade mark is expected to take less time since the terms in the registration procedure are shortened for both the applicant and the Patent Office. Some of the terms in the proceedings related to opposition, revocation and invalidation of a trade mark are also shortened.
The term for filing an opposition against recognition of the effect of an international registration on the territory of Bulgaria remains 3 months but it starts running earlier – two months after the publication of the international trade mark in the Official Bulletin of the Patent Office.
New rights for the owner of a trade mark
It is envisaged that the owner of a trade mark will be entitled to prohibit the entry of goods on the territory of Bulgaria (regardless of the final point of destination, i.e. even in cases of goods in transit) where the goods themselves or their packaging originate from non-EU countries and there is a sign affixed to them which is identical with or similar to the registered trade mark in respect of such goods.
The owner of a trade mark will also have the right to prohibit the so called “preparatory acts”, i.e. production, placing on the market or storage of means and materials (e.g. packaging, labels, security or authenticity features or devices) to which the trade mark may be affixed and which are likely to be used for goods or services in the course of trade.
The new Act has increased the amount of fines imposed on natural persons (from BGN 2,000 to BGN 10,000), as well as the amount of property sanctions for legal entities and sole proprietors (from BGN 3,000 to BGN 20,000) in case of violation of the provisions of the TMGIA. According to the legislator, the purpose is to uniform the administrative penalties for trade marks and geographical indications infringement, on the one hand, and those provided for violating the Copyright and Neighbouring Rights Act, on the other, since intellectual property rights are affected in both cases. To this same effect, it is provided that in case of systemic violations, the premises where they occur is to be sealed for a period of three to six months.
Registration of geographical indications
With the new Act, the registrations of geographical indications under the previous TMGIA will be terminated regarding (i) spirit drinks covered by Regulation (EC) No. 110/2008, (ii) wines covered by Regulation (EU) No. 1308/2013, and (iii) aromatised wine products covered by Regulation (EU) No. 251/2014. The registration procedure for the products listed above, as well as for agricultural products and foodstuffs covered by Regulation (EU) No. 1151/2012 will only be carried out as provided for in the respective regulations.
Applicability of the new rules
In addition to all proceedings initiated after its entry into force, the new TMGIA will apply to the pending proceedings for registration, revocation and invalidation of trade marks and geographical indications, in which no decision has entered into force until December 16, 2019.
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