A registered trade mark is not granted forever. Apart from lapsing if it is not renewed, the registration may also be brought to an end prematurely at the request of a third party – either by revocation or by a declaration of invalidity.
The two proceedings are easily confused, but they have different consequences. Invalidity (Article 36 of the Trade Marks and Geographical Indications Act, the „Trade Marks Act“) is based on a defect that already existed at the time of registration and takes effect from the filing date of the application, i.e. retroactively. Revocation (Article 35 of the Trade Marks Act), by contrast, is based on a circumstance that arose after registration and takes effect for the future – from the date on which the request for revocation was filed. This post deals with revocation.
Grounds for revocation
The registration of a trade mark is revoked at the request of any person where one of the three grounds under Article 35(1) of the Trade Marks Act applies:
1. Non-use. The trade mark has not been put to genuine use in the territory of the Republic of Bulgaria for an uninterrupted period of five years – either because the proprietor never started using it within five years of registration, or because use was suspended for five consecutive years – and there are no proper reasons for non-use.
2. Becoming generic. As a result of the acts or inactivity of the proprietor, the trade mark has become the common name in the trade for the goods or services for which it is registered.
3. Misleading use. Use of the trade mark by the proprietor, or with the proprietor’s consent, misleads the public as to the nature, quality, geographical origin or other characteristics of the goods or services.
Where a ground for revocation exists only in respect of some of the goods or services, the registration is revoked for those goods or services only.
Who may file for revocation?
Unlike invalidity on certain grounds, a request for revocation may be filed by any person – the law does not require proof of an own earlier sign or of a special legal interest. In practice, the request is most often filed by a competitor wishing to free up the sign for its own use, or as a defensive measure against an opposition or a request based on a mark that is not actually being used.
Legal basis
Article 35 in conjunction with Article 21 of the Bulgarian Trade Marks Act, together with the Ordinance on the Procedure for Examining Disputes under the Trade Marks Act.
Official Fee
The request must be accompanied by proof of payment of the administrative fee if payment is made by bank transfer or electronically. The fee currently charged by the Bulgarian Patent Office for the examination of a request for revocation is EUR 168.73.
Proceedings before the Bulgarian Patent Office
The revocation procedure is governed by the Trade Marks Act and by the Ordinance on the Procedure for Examining Disputes under the Trade Marks Act.
The request must be filed in two identical copies, unless it is filed electronically and signed with a qualified electronic signature. It must clearly identify the trade mark which is the subject of the proceedings, set out the legal grounds and the supporting reasoning, and include a list of the evidence enclosed.
First, the request is examined for admissibility and formal regularity: the Office checks whether there is a registration in force, whether the fee has been paid and whether the request is in order. If any irregularities are found, the applicant is given a period to remedy them.
Submissions of the parties and exchange of documents
The Bulgarian Patent Office informs the proprietor of the trade mark that a request has been filed. One copy of the request and the evidence are forwarded to the proprietor, who is granted a two-month period to file observations. Where the request is for revocation on the ground of non-use, the proprietor must, within the same period, also submit evidence of genuine use of the trade mark in the territory of the Republic of Bulgaria.
The observations and evidence are then forwarded to the applicant for comment within one month. Where necessary, the Disputes Division may exchange further correspondence, granting the parties a one-month period for comment.
Proof of genuine use
In revocation proceedings on the ground of non-use, the burden of proving use lies with the proprietor of the trade mark. The assessment takes account of the place, duration, extent and nature of the use of the mark for the goods or services for which it is registered.
Genuine use also includes use of the mark in a form that does not differ substantially from the registered form, as well as affixing the mark to goods or their packaging in Bulgaria solely for export purposes. Use with the proprietor’s consent is treated as use by the proprietor.
The proprietor may also rely on a proper reason for non-use. Where use is commenced or resumed within the three-month period preceding the filing of the request, it is disregarded if the preparations for that use were made only after the proprietor became aware that a request for revocation might be filed.
Earlier date of revocation
At the request of one of the parties and where there is a legal interest, the decision may set an earlier date of revocation – the date on which the ground arose. In the case of revocation for non-use, this earlier date may not fall within the five-year period following registration. Where such an earlier date is claimed, the proprietor is granted a two-month period to prove genuine use during the five years preceding the claimed earlier date.
Decision making
Once the time limits have expired, the Disputes Division examines the request, the observations and the evidence and prepares its opinion. The decision is taken by the President of the Bulgarian Patent Office, or by an authorised Deputy President, and may either
1. reject the request for revocation, or
2. revoke the registration in whole or in part.
Legal effects
Revocation takes effect for the future – from the date on which the request for revocation was filed (or from the earlier date set). This is what distinguishes it from invalidity, which takes effect from the filing date of the application. Revocation does not affect final court decisions in infringement actions or licence agreements, to the extent that they were performed before the revocation, unless otherwise agreed.
Judicial review
The decision on the request for revocation is subject to appeal before the Sofia City Administrative Court within two months of notification. The decision of that court may in turn be appealed before the Supreme Administrative Court.
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Do you have a question about the revocation or the protection of a trade mark in Bulgaria or in the European Union? Then simply contact us. Our fee is agreed individually and depends on the specifics of each case.