Cases
October 2011
Decision of the Sofia Appellate Court, Commercial Division, pursuant to Art. 76, par. 1, item 1 and item 2 of the LMGI
THE EXISTENCE OF A LEGAL DEFINITION FOR THE TERM “IMPORT” IN THE LMGI EXCLUDES THE APPLICATION BY ANALOGY OF THE PROVISIONS OF THE CUSTOMS LAW, WHERE THE TERM “IMPORT” IS DEFINED AS ONE OF THE NINE TYPES OF CUSTOMS REGIMES APPLIED TO GOODS CROSSING THE BORDERS OF THE REPUBLIC OF BULGARIA. WITHIN THE MEANING OF ART. 13, PAR. 2, ITEM 2 OF THE LMGI, PLACEMENT OF GOODS UNDER THE REGIME “TRANSIT” OR ANOTHER TYPE OF CUSTOMS REGIME, SHALL ALSO BE CONSIDERED AS “IMPORT” OF THE GOODS, RESPECTIVELY USE OF THE MARK UNDER WHICH THE GOODS ARE DESIGNATED.
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.
August 2011
Decision of the Sofia City Court
on a bad faith claim pursuant to Art. 26, par. 3, item 4 of the LMGI
THE COURT ACCEPTED THAT THE DEFENDANT IS A BAD FAITH PARTY, WITHIN THE MEANING OF ART. 26, PAR. 3, ITEM 4 OF THE LMGI, ON THE BASIS OF THE PRESENTED CORRESPONDENCE EXCHANGED BETWEEN THE DEFENDANT’S REPRESENTATIVE AND THE PLAINTIFF PRIOR TO THE REGISTRATION OF THE CONTESTED MARK IN THE NAME OF THE DEFENDANT, WHICH PROVES THE DEFENDANT’S AWARENESS OF THE FACT THAT THE MARK IN QUESTION IS PROPERTY OF ANOTHER PARTY.
The Law Office of Bojinov & Bojinov represented a Taiwanese company, which has its trademark for machine and hand tools established on both the world and Bulgarian markets since the beginning of the 90s. The purpose of the proceeding was the ascertainment of bad faith on the part of a Bulgarian company at the time of filing of an application for a trademark, which is similar to the mark registered in the name of the Plaintiff.
Having considered the collected evidence jointly and severally, the court established that the Defendant is engaged in the import of ironware, instruments, electrical materials, i.e. its activity is identical with that of the Plaintiff.
The court accepted that the Defendant had acted in bad faith, within the meaning of Art. 26, par. 3, item 4 of the LMGI, as the same had been aware of the use of the mark by another party, on the Bulgarian market as well, and had made an attempt to conduct joint business activities with the Plaintiff prior to the date of registration of the contested mark, which is evident from the presented correspondence between the Defendant’s representative and the Plaintiff.
In view of the evidence, the court rejected the thesis of the Defendant that the mark was a result of a random idea and accepted as established, in respect of the Defendant, that the latter had acted in bad faith toward the Plaintiff when filing the application for registration of the challenged mark.
June 2011
Decision of the Supreme Administrative Court in relation to an appeal against a Decision of the Commission for Protection of Competition under Art. 35, par. 2 of the Protection of Competition Act
THE COURT ACCEPTS THAT ACTIONS ON THE PART OF THE APPELLANTS PRIOR TO THEM BECOMING AWARE OF THE EXISTENCE OF EARLIER REGISTRATION FOR A TRADEMARK COULD NOT BE QUALIFIED AS VIOLATION OF ART. 35, PAR. 2 OF THE PROTECTION OF COMPETITION ACT DUE TO THE FACT THAT UP TO THAT MOMENT, THE APPELLANTS HAD BEEN ACTING IN GOOD FAITH
Bojinov & Bojinov represented Bulgarian manufactures and distributors of dairy products in a proceeding before the Commission for Protection of Competition under Art. 35, par. 3 of the PCA, as well as in a subsequent appellate proceeding against the decision of the Commission before a three-member panel of the Supreme Administrative Court.
The court found reasonable the objection of the appellants that, during the consideration of the case, the Commission has not discussed the provision of Art. 13, par. 3 of the LMGI, according to which the exclusive right to a trademark has effect with regard to third fair parties as of the date of publication of the registration of the mark. The third party awareness of the fact of the registration of the mark prior to the date of publication is a circumstance which excludes the possibility for a third party to benefit from the provision of Art. 13, par. 3 of the LMGI.
The court accepted that the actions of the appellants, prior to becoming aware of the existence of registration of the mark, could not be qualified as violation of art. 35, par. 2 of the Protection of Competition Act due to the fact that up to that moment, the appellants had been acting in good faith
The court accepted that the penalties imposed by the Commission, with regard to the violation of Art. 35, par. 2 of the PCA, are too high as the comparatively short relevant term of 2 months has not been considered.
In view of the disproportion of the sanctions imposed, the Court held that the decision of the Commission should be overturned in the part imposing sanctions on the appellants and the Court also ruled on a significantly lower penalty.
April 2011
Decision of the Sofia Appellate Court pursuant to Art. 76, par. 1, item 1 and item 2 of the LMGI
CONSUMERS PERCEIVE A MARK AS A WHOLE, MEMORIZE ITS DISTINCTIVE ELEMENT AND DO NOT ANALYZE THE DETAILS. THE LIKELIHOOD OF MISLEADING THE CONSUMER IS COMPLEMENTED BY THE LIKELIHOOD OF ASSOCIATION WITH THE EARLIER MARK. TAKING INTO CONSIERATION THE INCREASED USE OF THE INTERNET IN ALL ASPECTS OF PEOPLE’S LIVES, A SIMPLE SEARCH ON THE SAME WOULD SHOW THE DOMAIN NAMES OF BOTH THE PLAINTIFF AND THE DEFENDANT.
The Law office of Bojinov & Bojinov represents a famous US company in the field of real estate, which has offices in more than 80 countries around the world and has established itself as one of the most influential agents with regard to real estate sales.
The above said company sought the legal assistance of Bojinov & Bojinov for the territory of Bulgaria in view of protecting the company’s rights concerning its highly distinctive brand against a Bulgarian company, which uses a very similar sign in respect of identical services, in violation of the honest commercial practice, and therefore creating a likelihood of confusion on the part of consumers for the territory of Bulgaria.
The Sofia Appellate Court established that the Defendant uses an infringing sign, which is very similar to the mark registered in the name of the Plaintiff, regardless of the existence of descriptive elements, such as BG EOOD, BG Ltd., Real Estate, etc., which accompany the sign in advertisements, blank forms, business cards, in relation to the activity of the Defendant – in particular real estate brokerage. Nevertheless, these elements do not impart sufficient distinctiveness to the sign of the Defendant. The common elements between the mark and the infringing sign leave the same visual, phonetic and semantic impression and therefore exists a real risk of association of the services rendered by the Defendant with the services covered by the trademark registered in the name of the Plaintiff.
On the grounds of the above arguments, the Sofia Appellate Court accepted that all of the prerequisites for finding of an infringement under Art. 76, par. 1, item 1 of the LMGI are present and therefore infringement on the part of the Defendant, of the exclusive right to the Plaintiff’s trademark exists. The Defendant was sentenced to terminate the use of the trademark at issue.
February 2011
Decision of the Bulgarian Patent Office concerning cancellation of a national trademark registered in violation of Art. 11, par. 1, item 4 of the LMGI
EACH INTERNATIONAL NONPROPRIETARY NAME (INN) DESIGNATES A PARTICULAR SUBSTANCE INCLUDED IN A PHARMACEUTICAL, I.E. THE INN IS A NAME OF A DESCRIPTIVE CHARACTER.
A TRADEMARK, WHICH CONSISTS EXCLUSIVELY OF AN INN BUT DOES NOT CONTAIN THE COMPANY NAME OF THE MARK OWNER, IS CONSIDERED TO HAVE DESCRIPTIVE CHARACTER AND IS NOT REGISTRABLE UNDER ART. 11, PAR. 1, ITEM 4 OF THE LMGI
The law office of Bojinov & Bojinov represents a famous pharmaceutical company, which has established traditions and a leading position on the market for vaccines, non-prescription medicines, and generics.
At the company’s request, was initiated a cancellation action before the Bulgarian Patent Office against the registration of a trademark, the sign of which comprises considerably of a part of the INN of a pharmaceutical substance indicating the type and characteristics of pharmaceutical product designated with the mark at issue.
The registration of the attacked mark contradicts the recommendation of the World Health Organization (WHO) addressed to its member states, including Bulgaria, according to which a registration of trademarks derived from an INN shall not be granted, because such action would provide the mark owner with exclusive rights to the registered name and would avail right to the mark owner to oppose its use by other manufacturers.
As an exception from the above principle concerns cases when the trademark consists of an INN used in addition with the company name of the manufacturer.
The Patent Office established that the attacked mark consists exclusively of a word element – a part of an INN, and does not contain the company name of the owner of the mark, therefore the Patent Office found that the mark was registered in violation of Art. 11, par. 1, item 4 of the LMGI and issued a decision for cancellation on absolute grounds.
January 2011
Decision of the Sofia City Court under Art. 50 of the LMGI in relation to Art. 33 – 34 of the LTMIS /repealed/
THE COURT ACCEPTS THAT BY USING A SPECIFIC COMBINATIONS OF COLOURS WITH REGARD TO ITS BUSINESS ACTIVITY A FIRM HAS ESTABLISHED A SIGNIFICANT IMPORTANCE OF THE SAME WITH REGARD TO THE OVERALL DISTINCTIVENESS OF ITS MARKS.
The Law Office of Bojinov & Bojinov represents a well-known company with regard to the protection of its trademark rights for the territory of Bulgaria.
A proceeding under Art. 50 of the LMGI has been initiated with reference to an appeal filed by the company against the administrative Decision № 47/ 05.03.2004 of the Patent Office of the Republic of Bulgaria, which rejected a request for cancellation of a registration for a combined mark containing yellow and green colors, with regard to goods in class 4: „fuels, oil products and lubricants”. The Appellant’s request for cancellation of the attacked mark is based on the rights over similar earlier combined marks, registered for identical goods and identical colour combinations. In the decision subject to appeal, it has been found that the attacked mark and the cited earlier marks create a different overall impression and have no phonetic and visual similarity to an extent that would lead to the confusion of the consumer.
The Court has accepted the conclusion of the trademark expertise, according to which the firm offering goods in class 4 has established an individual combination of colours, which is a distinctive feature distinguishing its goods from those of the competitors on the market, and contributing to the overall distinctiveness of the marks.
In view of the foregoing, the Court has found that the decision of the Patent Office should be overruled since it was issued due to an inaccurate application of the substantive law, and the case was returned to the administrative body for review.
December 2010
Decision of the Administrative Court – Sofia City with regard to art. 50b, par. 6 of the Law on Marks and GIs, concerning an appeal of an administrative decision refusing issuance of a decision on a request for a well-known mark.
THE DATE WITH RESPECT TO WHICH THE PETITIONER CLAIMS PRESENCE OF THE CONDITIONS NEEDED FOR A MARK TO BE DETERMINED AS WELL-KNOWN NEITHER ENGAGES THE ADMINISTRATIVE BODY, NOR SERVES AS A BASIS FOR THE ISSUANCE OF A REFUSAL PURSUANT TO ART. 50B, PAR. 6 OF THE LAW ON MARKS AND GEOGRAPHICAL INDICATIONS WHEN THERE IS FULFILLMENT OF THE CRITERIA FOR DETERMINING THE MARK AS WELL-KNOWN AS OF ANOTHER DATE
IT IS UPON THE ADMINISTRATIVE BODY TO DETERMINE, IN ACCORDANCE WITH THE COLLECTED EVIDENCE, THE DATE AS OF WHICH THE MARK WAS RECOGNIZED AS WELL-KNOWN
The proceeding under Art. 145 – Art. 178 APC, has been initiated with regard to an appeal filed against Judgment № 18-ОМ/27.03.2009 of the President of the Patent Office, which rejected the Appellant’s request for determination of a mark as well-known for the territory of the Republic of Bulgaria as of 01.01.1999.
The Appellant claims that the written evidence collected during the administrative proceedings, indisputably proves that the mark is “well-known”, and finds that the determination of the initial date, as of which the mark is to be considered well-known, is within the competency of the administrative body, in accordance with the presented proofs, and that the date indicated in the request for determining the mark as well-known may be used only as a reference point.
The Defendant – the President of the Patent Office of the Republic of Bulgaria, disputes the appeal, by claiming that it is groundless and that the popularity of the mark should be estimated with regard to the date mentioned in the request of the Petitioner.
The court assumes that Judgment № 18-ОМ/27.03.2009 has been issued contrary to the substantive norms and the purpose of the law, dissolving conditions under Art. 146, item 4 and item 5 of the APC.
The court finds that the date with respect to which the petitioner claims presence of the requirements concerning a mark to be determined as well-known, neither engages the administrative body, nor serves as a basis for the issuance of a refusal pursuant to Art. 50b, par. 6 of the Law on Marks and Geographical Indications, when fulfillment of the criteria for determining the mark as well-known, as of another date, which precedes the date of application of an identical or a similar mark, is established.
This conclusion is imposed also by the amendment of Art. 20, par. 2, item 2 of the Regulation, which mandates the requirements of the Judgment for determining the mark as well-known or as a mark with reputation for the territory of the Republic of Bulgaria. According to the Regulation, the Judgment shall contain the date, as of which the mark was recognized as well-known or as a mark with reputation, i.e. it is upon the administrative body to determine, in accordance with the collected evidence, the date from which the mark was recognized as well-known.
In view of the foregoing, the ACSC overruled Judgment № 18-ОМ/27.03.2009 of the President of the Bulgarian Patent Office and sent the administrative file to the President of the Patent Office for reconsideration with regard to the request of the Appellant for determining the mark as well-known for the territory of the Republic of Bulgaria in connection with services in class 41, in compliance with the motives of the Judgment of the court. The same is subject to appeal by the Patent Office before the Supreme Court of Cassation.
November 2010
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”.
October 2010
Bad Faith Civil Claim under Art. 26, par. 3, item 4 of the Law on Marks and Geographical Indications
Decision on commercial case No. 2690/09, issued on 13.05.2010
By court panel:
Chair: Sv. Chorbadzhieva
Members: Lyudmila Tsolova
Veronika Nikolova
THE BURDEN OF PROOF IN CASES CONCERNING “BAD FAITH” AT THE APPLICATION PROCESS OF THE TRADEMARK DOES NOT LIE ENTIRELY WITH THE PLAINTIFF. FURTHERMORE, THE VERY LACK OF GOOD FAITH IS IN ITSELF A NEGATIVE FACT, THE ADDUCING OF WHICH REVERSES THE EVIDENTIAL LEGAL BURDEN.
Bojinov & Bojinov represents an Italian company in relation to a bad faith civil claim under Art. 26, par. 3, item 4 of the Law on Marks and Geographical Indications (LMGI). The Sofia City Court issued a favourable decision, which was subject to appeal before the Sofia Appellate Court.
The court of second instance upheld the judgement of the first court based on the following arguments.
The Sofia City Court established that the Defendant’s mark was identical to the Plaintiffs’ earlier marks and the goods covered by the compared marks were also identical. Based on the aforesaid, the Sofia City Court concluded that when filing the trademark application, the Defendant was aware of the existence of the plaintiff’s marks, and therefore such action contradicted the honest commercial practice and as such constituted an act of bad faith.
The intended purpose of Art. 12, par. 3, item 4 of the LMGI, is the imposition of a sanction on an applicant, who files a trademark application, despite the fact that he/she was aware that the sign was used by another party in the course of trade, and as such the action aimed to gain pecuniary and non-pecuniary benefits.
In view of the above, the Court concluded that a trademark application shall be considered as being filed in bad faith, if it is established that the applicant was aware that the use of the mark will cause harm to the owner of the earlier protected mark. The burden of proof rested with the defendant due to the fact that the lack of good faith is a negative fact. Moreover, the Plaintiff may not always present evidence concerning the exact date, on which the Defendant became aware of the Plaintiff’s mark. The very fact that the products bearing the Plaintiff’s mark were on the Bulgarian market, was sufficient prove to presume that the Defendant was aware of the existence of the earlier marks. The burden of overcoming the presumption of bad faith lied with the Defendant.
Since the Defendant as an applicant, was not a trader, but a physical person, it was concluded that by the act of registering the mark the Defendant’s aim was to dispose of it, as well as to prevent third parties from using the mark in the course of trade without his consent.
It was concluded that it appeared that the only purpose of the Defendant was to gain benefits, by forcing the Plaintiff to pay a licensee fee concerning the import and distribution of the Plaintiff’s goods bearing the mark for the territory of Bulgaria. Another option for the Plaintiff would have been the discontinuation of the use of the mark on the territory of Bulgaria. In both cases, the registration of the defendant’s mark lead to violation of the principle of “do no harm” (“neminem laede”).
Based on the above, the Sofia Appellate Court concluded that the Defendant acted in bad faith when filing the trademark application and confirmed the Judgement of the Sofia City Court.
The Judgement at present is subject to appeal before the Supreme Court of Cassation.
September 2010
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.
August 2010
Cancellation action based on relative grounds of refusal
Bojinov & Bojinov has been asked by a company with an impressive portfolio of 200 premium and super premium brands in the spirit industry to initiate a cancellation procedure before the Bulgarian Patent Office against a national trademark, registered in violation of the relative grounds for refusal. The cancellation action was based on the client’s earlier rights to trademark registrations, which are similar to the attacked trademark to an extent that might cause likelihood of confusion on the part of the consumers.
The Bulgarian Patent Office has evaluated the arguments of the parties to the proceedings and it has accepted that there is in fact similarity between the compared trademarks, due to the identical and dominant word element, the similarity between the goods and services of the earlier trademarks and the attacked trademark. The Bulgarian Patent Office has issued decision for partial cancellation of the attacked trademark for the services claimed by the holder of the earlier trademarks.
The holder of the attacked trademark appealed the decision before the Administrative Court of Sofia City (ACSC). After having considered the arguments of the parties to the court proceedings, as well as the expert’s opinion on the similarity of the compared trademarks and the goods/services covered by them and the likelihood of confusion on the part of the consumers, the ACSC dismissed the appeal as not grounded.
July 2010
Bad faith infringement case in Bulgaria
Bojinov & Bojinov was approached to assist a large, renowned French company occupied in the entertainment industry to defend its trademark rights in Bulgaria. These have been infringed by a Bulgarian citizen, who has applied for and obtained from the Bulgarian Patent Office registration of the foreign well-known trademark.
On behalf of the client, Bojinov & Bojinov initiated civil proceedings before the Sofia City Court against the infringer claiming that he has acted in bad faith upon filing of the trademark application.
Since the first court instance rejected the bad faith claim, the plaintiff brought a complaint before the Sofia Appellate Court (SAC). In a judgment of February 2010, the SAC granted the complaint. The SAC ruled that the infringer has been aware of the fact that third parties are the holders of the exclusive rights to similar or identical trademarks, registered in other countries. Given that the infringer has been involved in the entertainment business since 1994, the SAC’s conclusion is that the infringer was aware of the well-known trademark and business of the plaintiff. The SAC upheld the complaint and rescinded the first instance judgment. The judgment of the SAC is subject to cassation appeal before the Supreme Court of Cassation.
June 2010
Assessment principals for determination of a mark with reputation
Bojinov & Bojinov represented a global brand with operations in more than 70 countries that is known for generations as a maker of sophisticated high quality writing instruments. A procedure for determination of the client’s trademark as a mark with reputation in Bulgaria has been initiated before the Bulgarian Patent Office.
The administrative body rejected the petition based on the argumentation that the represented evidences are not sufficient to prove that the mark has acquired reputation in Bulgaria as of the claimed date.
The decision of the Bulgarian Patent Office has been appealed before the Administrative Court of Sofia City (ACSC). In a judgment of February 2010, the ACSC granted the appeal. The ACSC ruled that the Bulgarian Patent Office has assessed the presented evidences from formalistic perspective. Due to the fact that the each evidence has been considered for itself, but not in conjunction with the other evidences, the administrative body has come to unjustified and incorrect legal conclusions. Based on the assessment of the evidences in conjunction, the ACSC’s conclusion is that the appellant’s trademark satisfies the statutory requirements for its determination as a mark with reputation in Bulgaria among the relevant consumers as of the claimed date. The ACSC remanded the case back to the administrative body for consideration in compliance with the motives of the judgment.
