The new Trade Marks and Geographical Indications Act (TMGIA) was promulgated in State Gazette, Issue 98 from the 13th of December, 2019. The Act entered into force on December 17th 2019, and repealed the TMGIA which was applicable until that date. The new Act implements the requirements of Directive (EU) 2015/2436 of the European Parliament and the Council from 16th of December, 2015 to approximate the laws of Member States relating to trade marks.
- Amendments to the definition for trade mark
The new TMGIA amends the legal definition for “trade mark”. In particular, definition no longer contains a requirement for the possibility for graphical representation of the trade mark. Instead, the trade mark may now be presented in any manner, provided that the subject matter of protection, granted with the registration, may be clearly and precisely determined. This facilitates the registration of multimedia, sound, hologram and movement trade marks.
- New rights of the trade mark proprietor
The trade mark proprietor now has the right to prohibit the import of goods on the territory of Bulgaria, regardless of their final destination, if these goods originate from non-EU countries and a sign, identical or similar to the registered trade mark or a sign which may not be differentiated from the trade mark in its essential elements, is affixed to these goods.
The registered trade mark proprietor also has the right to prohibit the so called “preparatory acts”. Within the meaning of the TMGIA, such preparatory acts include: the offering or placing on the market, importing or exporting of packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark is affixed, where said means may be used in relation to goods or services in the course of trade. Another preparatory act, which may be prohibited by the proprietor, is the affixing of a sign identical or similar to the trade mark on packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark may be affixed, where said means may be used in relation to goods or services in the course of trade
- Amendments to the procedural provisions and shortening of terms
Aimed at the shortening of procedural terms and the acceleration of registration proceedings, the new TMGIA introduces numerous amendments to the procedural regulations. For instance, the two months term for the filing of an opposition against an international trade mark registration now starts to run from an earlier moment – two months after the publication of the application in the Patent Office Official Bulletin. On the other hand, the three months term for reaching an agreement may now be extended only once (and not twice as was provided for by the repealed TMGIA).
It is provided that the Patent Office shall make its decisions opposition proceedings within a three months term (until now this term was six months), following the completion of evidence and materials collection.
- Introduction of a single state fee for application and examination
The Patent Office will now collect only one fee for application and examination of the trade mark. Under the repealed TMGIA two separate fees – one for application and one for examination – were collected.
- Introduction of heavier fines and pecuniary sanctions
The amounts of the sanctions which will be imposed for infringements TMGIA are substantially increased. For instance, a physical person who, in the course of trade, uses goods or services with an affixed sign, identical or similar to a registered trade mark, will be sanctioned with a fine in amounts ranging from BGN 2000 to BGN 10 000, while sole traders and legal entities will be fined with between BGN 3000 and BGN 20 000. In comparison, for the same infringement the repealed TMGIA provided for fines between BGN 500 and BGN 1 500 for physical persons and between BGN 1000 and BGN 3000 for legal entities. In cases of systematic infringements, the premises where the infringements are being carried out will be sealed for a period of 3 to 6 months.
The new TMGIA applies to applications for trade marks and geographical indications registration, on which no decision has been made until the date of its entry into force.
With the new act’s entry into force, the registrations of geographical indications for spirit drinks within the scope of Regulation (EC) No. 110/2008, for some products under Regulation (EU) No. 1308/2013 and for aromatized grape and wine products within the scope of Regulation (EU) No. 251/2014, are terminated.