The registration of a national trade mark applied for at the Bulgarian Patent Office (BPO) or an EU trade mark applied for at the European Union Intellectual Property Office (EUIPO) can be stopped in two ways: (1) by filing third party observations or (2) by filing an opposition against the application.
If the opposition is successful, registration of the trade mark will be refused.
Third party observations
Natural or legal persons as well as associations of manufacturers, producers, service providers, traders and consumers may submit written observations to the Office against a trade mark application claiming that there is an absolute ground for refusal under Article 11 of the Trade Marks and Geographical Indications Act (Trade Marks Act) or Article 7 of Regulation 2017/1001.
In the Bulgarian Trade Marks Act, the third party observations are called „objection“, whereas the opposition is also referred to as „opposition“.
Unlike third party observations, an opposition against the application for a trade mark cannot be filed by any third party, but only by a person who has a legally established prior right that would be jeopardised if the trade mark application were to be registered.
The opponent is the person who files the opposition. In most cases, an opposition against the registration of a trade mark is filed by the proprietor of an earlier trade mark which is identical or similar to the contested application, or the goods and services for which the earlier trade mark is registered are identical or similar to those of the contested application.
It should be noted that not every similarity between the trade marks and/or their goods/services is problematic, but only the similarity where there is a risk that consumers would confuse or at least associate the contested application with the earlier trade mark.
Art. 52 in conjunction with Art. 12 of the Bulgarian Trade Marks Act (for a Bulgarian national trade mark) and Art. 46 in conjunction with Art. 8 of Regulation 2017/1001.
Proceedings before the Bulgarian Patent Office (BPO)
The opposition procedure is governed by the Trade Marks Act and the Ordinance on the Procedure for Filing and Examining Oppositions under the Trade Marks Act.
An opposition against a trade mark application may be filed within three months from the date of its publication in the Bulletin of the Bulgarian Patent Office.
The opposition must be filed in two identical copies, unless it is filed electronically and is signed with a qualified electronic signature.
The opposition must contain a statement of grounds. The objection must be accompanied by proof of payment of the administrative fee if payment is made by bank transfer. The fee charged by the BPO for the examination of an appeal is currently BGN 350.
Submissions of the parties and exchange of documents
The BPO informs the applicant of the contested trade mark that an opposition has been filed. If the opposition filed passes the examination for admissibility and formal correctness, the opponent and the applicant will each receive a notification in which they are granted a three-month period to reach an agreement, the term of which begins on the day the notification is sent. This period may be extended once by three months upon written request by both parties, accompanied by proof of payment of the relevant administrative fee. Currently, the fee is BGN 20.
Simultaneously with the notification of the possibility of reaching an agreement, a copy of the opposition is sent to the applicant of the contested trade mark together with the evidence, if any, submitted.
If no agreement is reached, the applicant will be granted a period of two months to reply to the opposition and any evidence submitted.
If the applicant submits a reply to the opposition, this must be submitted to the opponent for comment within one month.
Proof of actual use of the earlier trade mark
Together with his reply, the applicant may request that the opponent be required to prove that his trade mark has actually been used for the goods or services for which it is registered and on which the opposition is based. The obligation to prove actual use only applies to the period of five years prior to the filing date or the priority date of the application for the contested trade mark application. This means that proof of actual use can only be requested from opponents whose trade mark was registered at least five years before the filing or priority date of the contested trade mark application. If the opponent cannot prove the actual use of his trade mark, he has the option of proving the existence of important reasons for non-use.
If the actual use of the earlier trade mark is not proven or if no evidence is provided that there are legitimate reasons for non-use, the opposition will be rejected.
If use is proven for only some of the goods or services of the earlier trade mark, the opposition will only be examined in relation to these goods or services.
Further replies and observations
If the opponent submits a response within one month of the applicant’s reply, it shall be submitted to the applicant for further reply within one month of the notification, provided that it presents new facts, circumstances and/or evidence relevant to the opposition.
After expiry of the time limit for the applicant’s second reply, the Opposition Division examines the opposition, the applicant’s replies, the opponent’s comments and, where appropriate, the evidence submitted. The examination of the opposition is limited to the legal basis of the opposition and the relevant grounds.
Decisions on appeals must be made within three months of the end of the investigation proceedings.
The Opposition Division shall decide
1. to reject the opposition or
2. to refuse registration of the contested trade mark in whole or in part.
The decision of the Opposition Division does not award costs incurred in the proceedings before the BPO!
An appeal may be lodged with the Appeals Division of the BPO within two months of notification of the decision of the Opposition Division.
The decision of the Appeals Division is subject to judicial review before the Sofia City Administrative Court, and the decision of the latter may be appealed before the Supreme Administrative Court.
Proceedings before the EUIPO
The opposition procedure against an EU trade mark application is quite similar to the procedure before the BPO, with detailed provisions in the aforementioned Regulation 2017/1001 and Delegated Regulation 2018/625.
Attention is drawn to the following differences:
- Within the three-month period from publication of the trade mark application in the EUIPO Bulletin, it is sufficient to pay a fee of EUR 320 and file a notice of opposition, which does not have to be substantiated at this stage;
- Once admissibility and formal regularity have been established, the opposition is forwarded to the applicant and both parties have two months to reach an amicable agreement;
- this period may be repeatedly extended up to a total of 24 months with no official fees owed;
- after the expiry of the period for reaching an agreement or if no agreement is reached, the so-called „adversarial phase“ of the proceedings commences;
- a two-month period begins for the opponent to submit the facts, evidence and comments in support of the opposition or to substantiate the one already filed;
- after expiry of above two-month period for the opponent, another two-month period begins for the applicant to respond to the opposition and to request proof of genuine use of the earlier mark, if the conditions for this are met;
- the decision of the Opposition Division may award costs to the opponent, if the opposition is upheld in its entirety or to the applicant, if the opposition is rejected in its entirety;
- if the opposition is only partially successful, each party shall bear its own costs;
- the decision of the Opposition Division is subject to appeal before the so-called Board of Appeal of the EUIPO, and the appellant must file the appeal within two months of notification of the decision and pay a fee of €720;
- thereafter, the appellant has another two months to substantiate the appeal;
- the decision of the Board of Appeal may also include an award of costs;
- an appeal against the decision of the Board of Appeal may be lodged with the General Court of the EU within two months of notification.
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