Is it considered prior use, within the meaning of the law, when goods bearing the process mark have been imported in breach of the customs regulations?
Art. 97, par. 3 Civil Procedure Code (CPC) /repealed/
Art. 9, par. 2 Law on Trade Marks and Industrial Samples (LTMIS) /repealed/
Ruling of the Supreme Court of Cassation (SCC) on commercial case № 419/ 2010, issued on 10.11.2010.
By Court Panel composed of: T. Raykovska
D. Prodanova
T. Kalcheva
Reported by T. Raykovska
Is it considered prior use, within the meaning of the law, when goods bearing the process mark have been imported in breach of the customs regulations?
FOR THE PARTICULAR LEGAL DISPUTE IT IS OF NO SIGNIFICANCE WHETHER THE IMPORT HAS BEEN IMPLEMENTED IN CONFORMITY WITH THE APPLICABLE TAX AND CUSTOMS LEGISLATION, THE EVENTUAL VIOLATION OF WHICH COULD LEAD TO THE IMPOSING OF ADMINISTRATIVE RESPONSIBILITY.
The procedure under Art. 288 of the CPC has been instituted on the cassation appeal of the defendant against Judgment № 1142/23.07.2009 on civil case № 1276/2009 of the Sofia Appellate Court, upholding the first-instance Judgment of 04.02.2003 on civil case № 1037/1999 of the Sofia City Court, by virtue of which it was accepted as established, on the grounds of Art. 97, par. 3 of CPC /repealed/ in relation to Art. 9, par. 2 of LTMIS /repealed/ with regard to the defendant, that the plaintiff is the prior user of the process marks.
The appellant bases the admissibility of the cassation appeal under Art. 280, par. 1, item 1 of the CPC on the substantive question: “Is it considered prior use, within the meaning of the law, when goods bearing the process mark have been imported in breach of the customs regulations?”
SCC has judged that the provisions concerning the prior use, stipulated in Art. 9 and Art. 50, par. 2 of LTMIS /repealed/, do not include other prerequisites that could relate to the claimed violations of the tax and customs legislations, committed at the import of the goods, in order to be accepted that this non-observance results in certain aftermaths, with view to the application of the prior use.
The subject matter of the present procedure, classified by the decision-making body as a declaratory action under Art. 50, par. 2 in relation to Art. 9 of the LTMIS /repealed/ and 97, par. 3 of the CPC /repealed/, is the fact of use of the word sign by the plaintiff, i.e. of the non-registered mark, associating the latter’s origin with the prior user, and not the administrative violations related to the import of the goods on the territory of Bulgaria.
In view of the foregoing, the SCC ruled that the cassation appeal of the contested Judgment № 1142/ 23.07.2009 on civil case № 1276/ 2009 of the Sofia Appellate Court is inadmissible.
On the basis of the enforceable first-instance Judgment of 04.02.2003 on civil case № 1037/1999 of the Sofia City Court, the Patent Office of the Republic of Bulgaria has to issue decisions on the cancellation actions against the process marks filed on the grounds of Art. 2, par. 3 of the Provisional and Final Regulations of the Law on Marks and Geographical Indications in relation to Art. 9, par. 2 of LTMIS /repealed/ by the plaintiff – prior user, represented by Law Office “Bojinov & Bojinov”.
