Marks

Updated last 26.03.2021

In this section you can find the following information:

• What is a mark?
• What are the types of marks?
• What is the function of the trademark?
• What conditions must a trademark meet in order to be registered?
• What protection do trademarks provide?
• What is the validity period of the trademark?
• What geographical scope of the trademark I should choose – national, European or international?

What is a mark?

A mark is a sign that is capable of distinguishing the goods or services of one person from those of other persons and can be represented graphically in such a way, that it is possible to clearly and accurately determine the subject of the protection, granted by the registration (art. 9, para. 1 of the Marks and Geographical Indications Act (MGIA)). Such signs may be:

• Words, including personal names;
• Letters;
• Numerals;
• Drawings;
• Figures;
• The shape of the article or the packaging thereof;
• A combination of colours;
• Sound signals; or
• Any combination of such elements (e.g., logos).

What are the types of marks?

Marks may be:

• Trademarks – the trademarks are used for marking goods or services, produced or offered at the market by the trademark owner. The trademarks could be owned and held by two or more persons, and the consent of all owners is required for any disposal thereof;
• Collective marks – these are marks, indicated as such at filing the application for registration, which is owned by an association of producers, merchants, persons rendering services, which are qualified in accordance with the applicable law, as well as by association of legal entities – subjects of the public law, and which is intended to distinguish the goods or services of the association members from the goods and services of other persons. The right to a collective mark is not transferable. Persons, who are not association members, can not receive permission for the use thereof;
• Certified marks – these are marks, indicated as such when filing the application for registration and which is intended for distinguishing the goods or services, in relation to which the owner thereof certifies the material, the goods’ production method or the manner of rendering the services, the quality, the precision and other features thereof, with exception of the geographical origin, from the goods or services, which features are not so certified.

What is the function of the trademark?

• These distinguish products or services of a company from those of another – Marks distinguish not only products and services, but also the companies that offer them.

• These are used for advertising purposes, promoting sales – Marks are used as a method to attract clients’ attention. A mark serves this purpose well, when inspires the client and produces a sense of confidence in the product/service. This is the so-called communication purpose of marks.

• They are connected to specific qualities of the product or service – Marks serve as a guarantee of the quality of products and services. Very often a mark is used by more than one company through license agreements. The licensees are obliged to comply with the quality standards of the mark owner.

What conditions must a mark meet in order to be registered?

• A mark clearly and accurately presents the object of protection – the sign, you want to register, as a mark must be presented in such a manner that the object of protection can be clearly and accurately defined. The sign must be a clear word, logo, musical composition on a music sheet, etc.

• The mark has a distinguishing nature – the sign must be capable of distinguishing the goods/services, bearing such mark from other goods and services. If you are producing strawberries, you cannot register the mark “strawberry“. If you are a clothes manufacturer, you may use the word “strawberry“.

• The mark contains no elements, which may mislead the consumer – you cannot register the mark “Sugar-free“ for products, containing sugar. This principle applies also to marks, which could mislead the customer in terms of the quality and origin of the product/service.

• The mark does not literally describe the characteristics of the goods/services, for which it is intended – signs or indications, showing the type, quality quantity, purpose, value, geographical origin, time or method of production of the goods, the method of provision of the services or other characteristics of the goods or services, cannot be registered as Marks.

• The mark has already been applied for or the sign is popular in the verbal or written communication on the territory of the country;

• Marks, contradicting public order or good moral – you cannot register a mark, containing obscene, offensive words, etc.

More about the reasons for refusal to register a mark may be found in art. 11 of the MGIA.

What protection do trademarks provide?

The mark owner may use it, dispose of it and prohibit third parties to use a sign without his consent in their business, which:

• Is identical to a mark and is used for goods/services, identical to that for which the mark is registered;
• Due to its identity or similarity to the mark and the identity or similarity of the goods/services of the mark and the sign, there is a risk of creation of confusion in consumers, including the possibility to relate the sign to the mark;
• Is identical or similar to the mark regardless of its usage for goods or services, which are identical or similar to those, for which the mark is registered, when the earlier mark is popular on the territory of Republic of Bulgaria and the unjustified use of the sign would result in unfair advantage from the distinctive manner or popularity of the earlier mark or would damage them.

Persons, who do not own rights to the mark are prohibited (art. 13 of the MGIA) from:

• Fixation of the sign to goods or to the packaging thereof;
• Offering the goods bearing the sign for sale, placing such goods on the market or storing such goods for those purposes, and offering or rendering services under the sign;
• Importing or exporting goods bearing the sign;
• Use the sign as a commercial or company name or as a part of a commercial or company name
• Using the sign in business papers and in advertisements.

What is the validity period of the trademark?

The validity period of the registration of the mark is 10 years starting from the date of filing the application and may be renewed for unlimited number of subsequent 10-year periods (art. 20 of the MGIA).

What geographical scope of the mark I should choose – national, European or international?

Trademarks have territorial application, which means that the exclusive rights are only granted and exercised within the geographical borders of the country, where these are registered. There are three methods, you can use to register a trademark in one or more countries:

Through registration with the Patent Office in Bulgaria

Important to know

The application must refer to a single mark, intended for goods and/or services of one or more classes in the International classification of goods and services (art. 42, para. 2 of the MGIA). Even before you file the application, you must find out the class/es of the respective goods/services. In order to facilitate candidates, the Patent Office has developed the first of a number of training videos, presenting the centralized portal for the classification of goods and services in the area of marks and providing guidelines for using the portal.

Through registration with the EU Intellectual Property Office

You can find detailed information on the marks registration procedure on European level on the official website of the EU Intellectual Property Office.

Important to know
	These and many other resources are accessible in Bulgarian on the official website of the EU Intellectual Property Office.

Fee	You can find information on the fees, payable for the registration here.

Through registration with the World Intellectual Property Organization in accordance with the Madrid Agreement

You can find on the official website of the Patent Office of Bulgaria detailed information, explaining:

• What is the Madrid Agreement for the International Registration of Marks;

• What are the advantages of the international protection of marks on international level;

• Who can apply for registration for international protection;

• What is the validity period of the protection;
• What are the rules and procedures for the submission of an international application (you can find short instructions on the international registration of marks here.

Important to know
	On the official website of the World Intellectual Property Organization you can find guidelines on the completion and submission of the application for international protection, all necessary documents and the fees, you will have to pay.

For more information
	For more information on the marks and the related regulatory framework please refer to the website of the: Patent Office; European Union Intellectual Property Office; World Intellectual Property Organization.