HOW WILL THE BULGARIAN LEGISLATION CHANGE AFTER THE EXPECTED AMENDMENT OF FIRST DIRECTIVE OF THE COUNCIL

trademarksHow will the Bulgarian legislation change after the expected in 2014 amendment of First Directive of the Council to approximate the laws of Member States relating to trademarks (89/104/EEC)

In the article „Changes in legislation regarding the protection of trademarks in the European Union“ we discussed the European Commission proposals to amend the FIRST DIRECTIVE OF THE COUNCIL to approximate the laws of Member States relating to trade marks (89/104/EEC) and REGULATION (EC) No 207/2009 OF THE COUNCIL from 26.02.2009 regarding the Community trademark.

Within the current exposition, we will discuss only the issue what changes in the Bulgarian legislation will be required due to the amendments in First Directive to approximate the laws of Member States relating to trademarks.

1. Modification of the trademark definition

It is planned, the requirement the trademark applied for to be capable of being represented graphically for the purpose of registration, to be dropped out (art. 3 of the Directive). The aim is a greater flexibility in allowing applications for nontraditional trademarks, like aroma, sound, etc., but at the same time, there should be established precise rules about formal requirements for such trademarks, because still, they should be easily recognized and accepted by third parties and law enforcement authorities.

Since art. 9 of the Law on trademarks and geographical indications (LTGI), requires the trademark to be a sign, that can be graphically represented – the adoption of this text in the Directive will lead to a change in the national legislation.

LTGI should be amended, as well as the Regulation for drafting and examination of trademark applications.

2. Changes in the rights granted by a trademark

Rights granted without affecting earlier rights

The project directive provides for the introduction of a clear provision, indicating that the owner of a trademark cannot claim his rights against the use of an identical or similar sign, which is already the subject of an earlier right, which is in accordance with article 16, par.1 of the TRIPS Agreement. The text contains exact clarification, that claims for finding an infringement shall not affect earlier rights.

This amendment must be explicitly introduced in the national law, respectively it will lead to a change in the current legislation.

Cases of double identity

To the substantial part of the infringement finding, in case of double identity is added also the requirement to prove the damage to the earlier trademark in relation to its functions of a commercial identifier, but namely:

А trademark proprietor is entitled to prevent the use of а sign when –

the sign is identical with the trademark and is used for goods and services, identical with the ones, for which the trademark is registered and when this use affects or is likely to affect the function of the trademark to guarantee the origin of the goods or services to consumers .

This amendment must be explicitly introduced in the national law, respectively it will lead to a change in the current legislation.

Use as a commercial or business name

According to the court 10 art 5, paragraph 1 of the directive is applicable when the general public perceives the use of a company name as concerning (also) the goods and services, offered by the company. Therefore, it is appropriate to consider the use of the commercial name of the protected trademark as unlawful act, if the requirements for use in terms of goods or services are met.

Use in comparative advertising

A trademark proprietor will be able to forbid the use of the trademark in comparative advertising, if the requirements of Directive 2006/114/EU for misleading and comparative advertising are not met.

This amendment must be explicitly introduced in the national law, respectively it will lead to a change in the current legislation.

Consignments from commercial suppliers

The project directive provides for an explicit text, according to which, the import of goods in EU can be prohibited even if only the sender operates for commercial purposes – the aim of this ban is to guarantee the right of the trademark proprietor to prevent the import of goods, located outside the EU, which have been subject of sale, offer for sale, advertising or delivery to private consumers, and to counteract the ordering and sale of counterfeit goods, in particular, via the Internet.

This amendment must be explicitly introduced in the national law, respectively it will lead to a change in the current legislation.

Goods brought into customs territory

In the spirit of the European court decisions on the Nokia and Philips lawsuits (C-495/09 and C-446/09) the proprietors will have the right to stop and cease goods, passing through the EU territory in transit, even if the goods are not destined for the territory of the Union.

This amendment must be explicitly introduced in the national law, respectively it will lead to a change in the current legislation.

Preparatory acts

Trademark proprietors will also be able to prohibit the distribution of labels and packing, if it is possible to make reasonable assumption that they will be used in relation to goods.

This amendment must be explicitly introduced in the national law, respectively it will lead to a change in the current legislation.

3. Limiting the operation of a trademark

The proposal for a directive provides for the following editing of art. 14 – Limiting the operation of a trademark:

1. А trademark shall not entitle the proprietor to prohibit a third party from using in the course of commercial activity:

а) his own personal name or address;

b) indications which are devoid of any distinctive character or concern the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of offering a service, or other characteristics of goods or services;

c) the trademark, when use of the trademark is necessary in order to indicate the intended purpose of a product or service, in particular as accessories or spare parts;.

Thus, the possibility to freely use a company name when it could infringe a right on a registered trademark, drops out of the first hypothesis, providing a limitation of trademark rights.

Also, there is an explicit definition of what use cannot be considered as consistent with honest practices.

This amendment must be explicitly introduced in the national law, respectively it will lead to a change in the current legislation.

4. Protection of geographical indications and traditional terms – their inclusion as absolute grounds for refusal

It is envisaged that the absolute grounds for refusal will be extended to include conflict situations connected with protected geographical indications, traditional names of wines and foods with traditionally specific character.

Since LTGI art. 11 currently provides that only the presence of an earlier geographical indication is an obstacle to the registration of a trademark, there will have to be included traditional names of wines and foods with traditionally specific character too, respectively this change will lead to an amendment in LTGI.

5. Protection of trademarks with reputation

Articles 5 and 10 of the project directive convert the extended protection of trademarks with reputation into mandatory provisions, in order to guarantee that in all member states the level of protection provided for national trademarks with reputation, is the same as for the Community trademarks, but namely:

To the relative grounds for refusal shall be added:

3. A trademark is not to be registered, or if it is registered, shall be declared as invalid, if it is identical or similar to an earlier trademark, regardless of whether the goods or services for which it is applied or registered, are similar to those for which the earlier trademark is registered, if the earlier trademark is famous and if the use of the later trademark without ground would lead to unfair advantage from the distinctive character or the reputation of the earlier mark, or would cause damage.

This text will not affect the national legislation.

To the rights of the trademark proprietor shall be added:

2. Without prejudice to the rights of the proprietors, acquired before the filing date or the priority date of the registered, the owner of the registered trademark has the right to forbid every third party to use in its commercial activity every sign for goods and services without his consent, when:

The sign which is identical or similar to the trademark, regardless of whether it is used for goods and services, which are not identical, similar or are not similar to the goods or services, for which the trademark is registered, if the latter is famous in the member state and if the use of this sign without ground would result in unfair benefit from the distinctive character or the fame/reputation of the trademark or would cause damage.

This change will lead to amendments in LTGI, since by the current moment such effective protection against dilution of the trademark has not been introduced.

6. Trademarks as an object of property

It is proposed the Directive to be supplemented by a set of rules relating to trademarks as objects of property and complying with the rules included in the regulation with the same orientation, but namely (art. 22, 23, 24, 25, 26 and 27):

Transfer of registered trademarks;

A specific provision is planned, according to which:

(2). The transfer of the whole company includes the transfer of the trademark, except for the cases when there is consent to the contrary or when circumstances clearly dictate otherwise. The present provision is applicable for the contractual obligation to transfer the company.

Since this is not explicitly provided in LTGI, it is recommended to be included in the hypotheses of art. 21.

Trademarks as an object of collateral;

These texts will not affect the national legislation.

Trademarks as an object of enforcement proceedings;

Since this is not explicitly provided in LTGI, it is recommended to be included.

Trademarks in bankruptcy proceedings

These texts will not affect the national legislation.

Trademarks as an object of license

The project directive provides for the following text: 4. In order to obtain compensation for the damage sustained by him, the licensee has the right to participate in the proceedings for finding an infringement, initiated by the owner of the trademark.

This change will lead to an amendment in LTGI, since such possibility does not currently exist.

Trademark applications as an object of property

The project directive provides for treating trademark applications as objects of property (art. 27 Trademark application as an object of property). This is not currently provided in the national legislation, wherefore this change will lead to an amendment in LTGI.

7. Collective trademarks

The project directive provides for a set of specific provisions for the registration and protection of collective marks, as well as their their clear distinction of certification marks.

Given the introduction of detailed provisions, regulating the regime for registration and operation of collective marks as Amendment of the rules for the use of the collective mark, Persons who are entitled to file aclaim for an infringement, Additional grounds for revocation and cancellation, which have not been provided for in our national legislation – this change will lead to an amendment of LTGI.

8. Determination and classification of goods and services

The project directive defines common rules for the determination and classification of goods and services. These rules are consistent with the principles established by the EU (Court decision from 19 June 2012 on the case „IP Translator“, C-307/10) , under which, the goods and services for which protection is sought, must be clearly and precisely defined by the applicant, in order to enable the competent authorities and companies to determine the level of protection afforded by the trademark. The common data in the description of the different classes of the Nice Classification can be used for the identification of goods and services, provided that such identification is sufficiently clear and precise. Furthermore, article 40 of the Directive explains, that the use of more general terms is to be interpreted as involving only the set of goods or services explicitly covered by the literal meaning of the relevant term.

This is not currently provided in the national legislation, therefore this change will lead to an amendment in LTGI.

9. Fees

According to the text of the proposed directive, a trademark application fee will be paid for one class, but not for three, as it is at the moment. The aim is to reduce the fees and to restrict the trademark protection in classes, where the trademark is not subsequently used.

Currently, in Bulgaria the basic fee for filing an application for trademark registration of 190 levs covers up to three classes, there shall be new fees for one class application and additional payment for each subsequent class, as, if the logic of the proposal is followed, an application of one or two classes should be less than 190 Levs.

10. Opposition procedure

As far as Bulgaria has introduced an opposition system for the registration of trademarks – the proposal in the Directive, which will lead to the introduction of this regime for the registration in all Member States, will not affect the national legislation.

11. Not using as an argument for defense in opposition proceedings

The objection about lack of real usage of the earlier trademark, on which an opposition is based, has already been introduced in the Bulgarian legislation, wherefore the change of the Directive, in this particular part, will not affect the national legislation.

12. Procedures for revocation and cancellation

In terms of the national legislation, it is stipulated the procedures of opposition, cancellation and revocation of a mark to be held before the respective administrations, but not in court for example.

Since in Bulgaria the cancellation and revocation are within the competence of the Patent Office – the proposal in the Directive, which will lead to the introduction of this regime in all Member States will not affect the national legislation.

13. Not using as an argument for protection in the course of revocation/cancellation proceedings

The objection about lack of real use of the earlier trademark, on which a request for cancellation is based, is a protection instrument, which is not introduced in the Bulgarian legislation, wherefore the amendment of the Directive in this particular part will affect the national legislation, as the amendment will have to be implemented in LTGI.

The changes of the Directive are planned to be in force during the spring of 2014. After the entry into force of the Directive, the member states will have two years to introduce the changes it provides, into their national legislation.

Author: Aglika Ivanova, Attorney-at-law

Partner in IP Consulting Ltd. consulting agency – www.ipconsulting.eu

Coordinator of the copyrights website www.copyrights.bg

Over the past ten years att. Ivanova has specialized Intellectual Property in Bulgaria and abroad, and has extensive experience in the field of law enforcement.

Contact: ue.gnitlusnocpinull@eciffo