Do pending court proceedings qualify for non-use of a trademark?
In November 2007, on behalf of one of the most successful Czech food-processing companies Bojinov & Bojinov has filed with the Bulgarian Patent Office (BPO) a revocation action on the grounds of Art. 25, par. 1, item 1 of the Law on Marks and Geographical Indications (LMGI), i.e. non-use of an attacked trademark for goods in class 32.
After two and a half years the BPO has granted the revocation action. The delay in the issuance of the decision of the BPO is due to the complexity of the case. In particular, the petitioner and the holder of the attacked trademark are parties to another pending proceeding concerning the same trademark.
Pursuant to Art. 25 of the LMGI the registration of a trademark shall be declared revoked if the trademark has not been put to genuine use for the registered goods within five years as of the registration date, or the use has been ceased for continuous period of five years, unless there is a proper reason for non-use.
The BPO has found that two of the three statutory requisites for revocation of the trademark are at hand – the five years grace period has expired prior to the filing date of the revocation action and the holder of the trademark has submitted no evidences for the use of the trademark within the relevant period November 7, 2002 – November 7, 2007.
With regard to the third statutory requisite, and namely the reasons for the lack of use of the trademark, the holder stated that the trademark has not been put to genuine use due to the pending court proceedings on invalidation action of the attacked trademark. The trademark holder claimed that in the event that the trademark is declared invalid, then its potential use shall be on no legal ground and in violation of an earlier right of protected designation of origin.
The BPO considered that such statement has no ground. Any use of the trademark by its holder shall be considered on legal ground until the decision on the invalidation of the respective trademark enters into effect, therefore the rights already enforced shall not be affected by the invalidation decision and may not be subject to sanction. Thus, if the trademark holder has submitted evidences for the use of the attacked trademark, such evidences may not have been used by the user of the protected designation of origin, since there has been no effective invalidation decision within the relevant period. Based on the above arguments the Chairman of the BPO has declared the attacked trademark revoked as of November 7, 2002.
The BPO’s decision is subject ot appeal before the Administrative Court of Sofia City.
