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May 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.

April 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.

March 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.

February 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.