“Bojinov and Bojinov” represents one of the largest manufacturers of soluble drinks in Central and Eastern Europe, and a leader on the market of juices, nectars and non-alcoholic drinks in Poland, Czech Republic, Slovakia, Hungary and Bulgaria, in connection to a proceeding for deletion of a trademark registration on the basis of similarity with an earlier trademark, and identity/similarity of goods, which leads to confusion of consumers.
Sofia Administrative Court has issued a resolution by means of which the court has granted the complaint of the holder of the trademark against a resolution of Patent Office for its deletion for class 30 goods, due to a similarity with an earlier trademark, the complaint having been regarded as reasonable, taking into consideration the following motives.
At the evaluation of the visual similarity between the processed trademark and earlier trademarks, the court has accepted that the essential significance lies in the visual similarity in the significant elements of the trademarks. The processed trademark is a composition of word and graphic elements and a combination of colours that contains a distinctive word element – “La Festa”, which synonymously connects the processed trademark with the family of trademarks of the appellant.
The earlier trademark also represents a composition of descriptive elements, between which there is the word “frappe”, due to which this trademark has a low degree of distinction per se.
The court accepts that the differences in the compared trademarks make them distinctive to a sufficient degree, and that the differences exclude the possibility of confusion of consumers.

The containers were selected for inspection in accordance with the “risk analysis” method. The quantity seized – 49 000 kg (8 004 individual packages, each of about 6 kg), was intended for a Bulgarian company owned by a Greek citizen. The detergent was probably meant for the Greek market because the inscriptions on the packages are in Greek. Upon a laboratory analysis of samples, the trademark holder has confirmed that the detergents are counterfeit and manufactured without their knowledge and consent. The same has undertaken the respective legal actions pursuant to EU Regulation 1383.

Source: Bulgarian Customs Agency

The tendency in the past five years has remained relatively unchanged, the goods subject to counterfeiting are mainly apparels and textiles. In contrast to the preceding review period, there is a significant increase in the number of counterfeited labels and packages bearing famous trademarks, as well as in the number of seized mobile phone accessories, toys, car spare parts and car accessories. Big quantities of pharmaceuticals were detained in 2011, some of which were shipped via mail.

The counterfeit goods originate mainly from China, Turkey, Hong Kong and Dubai.

Source: Bulgarian Customs Agency

During the operation, big exchange and market places in the district cities of Sofia, Plovdiv, Varna, Burgas, Ruse and Pazardzhik were inspected by teams with participants from the following state authorities: the Bulgarian Patent Office, the Bulgarian Food Safety Agency, the Commission for Consumer Protection, the National Revenue Agency, the Bulgarian Customs Agency, and the structures of GDBOP.

Counterfeit goods of a value of over 5 million BGN were confiscated from inspected storehouses and commercial outlets and a number of administrative violations were established. Statements with regard to administrative violations in the amount of over 500 000 BGN were drawn as well as pretrial proceedings were initiated.

Source: The Bulgarian Patent Office

The SAC supports the conclusion of the court of first instance that the mark METRO has been famous for the territory of Bulgaria since 18.03.1999, the date on which the first two stores of the retail chain opened their doors, as well as due to the intense advertising campaign which started as early as October 1998.

The initial application for registration at a national level was filed by the company Rahovets-2007 – Gorna Oryahovitsa on 06.03.2008. It contained 113 pages amongst which historical documents, photos and maps, kept mainly at the Museum of History of Gorna Oryahovitsa, as well as evidence of the history of the product, its continuous presence, relation to the city of Gorna Oryahovitsa, qualities and market reputation. According to historical data, Gornooryahovski Sudzhuk was produced more than two centuries ago, and it won its first medal at a fair in Paris in 1900.

Upon successful completion of the national registration procedure, on 09.12.2008, the case was referred to the European Commission for registration at a European level. The application was subject to publication in the Official Journal of the EU on 26.03.2010 and as of that date, the rest of the Member States and third parties were availed with a six month term to oppose the registration. Objections were raised only by Cyprus on the grounds that the name of Gornooryahovski sudzhuk resembles that of the famous sweet, made with lokum, called “sudzhu” – walnut kernels threaded together and dipped in lokum. Confusion on the part of consumers is hardly probable though, as one of the products is confectionery whereas the other is a meat product. On June 21^st, 2011, Cyprus withdrew its objections.

As of January 11^th, 2012, only three Bulgarian companies have the right to produce Gornooryahovski sudzhuk, from a total of 183 meat processing companies that have been delivering the product. The companies are members of the partnership RAHOVETS-2007, more specifically, ET STEFMARK – Stefan Markov, R.A. – 03 – Bobi OOD and Rodopa – Gorna Oryahovitsa-96 EOOD.

Six other famous Bulgarian meat products are currently awaiting recognition for the territory of Europe. Applications for registration as geographical indications have been filed also with regard to the jerked meat fillet “Elena”, meat roll “Trapezitsa”, meat neck “Trakiya” and “Panagyurska lukanka” (flat sausage from the region of Panagyurishte).

Source: Customs Agency

The subject matter of the proceeding before the Sofia Appellate Court is an appeal, lodged by the famous Japanese company C.K.K., against the decision of the Court of first instance, with which the Sofia City Court rejects the claims under Art. 76, par. 1, item 1 and item 2 of the LMGI against a Bulgarian company importing for the territory of Bulgaria goods designated under the mark of the plaintiff without the plaintiff’s consent. 

The Court of first instance dismissed the claims with the argument that the defendant did not actually “import” goods designated under the plaintiff’s registered mark, and that the goods at issue should have been placed under “transit” regime, as the same were intended for a Serbian company.

The appellate court accepted that the existence of the explicit provision of § 1, item 12 of the Additional Provisions of the LMGI, which gives a legal definition of the term “import” within the meaning of Art. 13 of the LMGI, excludes the application by analogy of the provisions of the Customs Act, where the term “import” is used in its sense of being one of the nine types of customs regimes under which the goods crossing the borders of Bulgaria are placed. 

The Sofia Appellate Court also found that within the meaning of Art. 13, par. 2, item 2 of the LMGI, the placement of the goods under “transit” regime shall also be considered as “import” of the goods, respectively use of the mark, for the goods are actually transferred across the border in this case as well. In view of the certainty that the goods at issue crossed the Bulgarian border, the defendant performed an action under Art. 13, par. 2, item 3 of the LMGI. 

On the grounds of above arguments, the Sofia Appellate Court overturned the decision of the court of first instance in its entirety and recognized as established, in respect of the defendant, the fact of infringement of the exclusive right over the plaintiff’s trademark. The defendant was sentenced to terminate the infringement.

The proceeding was initiated at the request of Navteq Corporation, USA, one of the leaders on the world market of navigation systems and software, which advertises its activity via the domain www.navteq.com, with a registration dating back to 2003.

On its part, the company SB Group EAD is engaged in providing geodesic and cartographic services, trade with devices for personal and auto navigation, under the mark “Naviteq”. The company registered the domain www.naviteq.net in 2005.  

The CPC deems that, regardless of the fact that the first part of the domain of SB Group EAD coincides with the word element of its registered combined mark “Naviteq”, the choice and use of a domain name, belonging to an established world market leader, creates actual prerequisites for the occurrence of confusion on the part of the consumer.

The CPC rejects the defendant’s argument that the mark, and respectively the domain name www.naviteq.net, originate from the generic name of the products – “navigation technologies”. In both domains, the final letter is q, not ch, the latter being the grammatically logical combination of letters. This spelling specificity of the used name “naviteq” is indicative of the registration of the domain name in bad faith. Furthermore, the defendant uses on the home page of the website only the name of its trademark.   

Source: Commission for Protection of Competition