Mar 26

Trademark registration

  Among the frequently asked questions that lawyers and law firms dealing with copyright, trademarks, industrial design, etc. (intellectual property law) receive from their business and corporate clients are those regarding the various types of registration procedures a trademark could go through and the legal protection provided by those registration procedures. Despite the introduction of a number of successful brands of foreign companies in Bulgaria, many of official importers of those trademarks are still not aware whether the trademark is granted legal protection for the territory of Bulgaria, what requirements should be fulfilled in order to provide such legal protection, how the trademark owner should give the licensee the rights of an ordinary or exclusive license over the trademark for the territory of Bulgaria, what steps need to be taken so that licensee rights are enforceable against third parties.

  It should first be noted that going through registration procedures for a national trademark in the Bulgarian Patent Office ensures the full range of trademark protection under the Trademarks and Geographical Indications Act but only for the territory of Bulgaria. By virtue of international law acts and European law on intellectual property, the only advantage a national registration of a trademark is entitlement to an earlier priority. Actual legal protection abroad, however, could not be granted to the owner of a national trademark on the merits of the national registration only.

  The next level of protection of a trademark requires its registration with the Office for Harmonization in the Internal Market (OHIM) with headquarters in Alicante, Spain. This type of trademark registration and the legal protection that it guarantees are described in detail in Regulation (EC) № 207/2009 of 26 February 2009 on the Community Trade Mark. In general, the registration of a trademark with OHIM ensures its owner protection throughout the whole European Union.

  The last level of protection of a trade mark could be achieved by registration of the mark as an international trademark. The main international treaty governing international trademark and its registration is the Madrid Agreement Concerning the International Registration of Marks. The competent authority to perform the registration of the international trademark is the World Intellectual Property Organization (WIPO) with headquarters in Geneva. Typical for this type of registration is that the international trademark is granted the respective legal protection, but for the previously specified designated Member States of the Madrid Agreement. For designated Member State for which the owner would like to take advantage of the protection a separate fee is to be paid.

  In terms of trademark license agreements that importers of foreign trademarks sign with their licensors it should be borne in mind that depending on the type of registration of the mark, license agreements must meet certain requirements under the relevant national, the European or international law, and the procedure for their registration with the relevant departments are to be followed. Without their registration, trademark license agreement are not enforceable against third parties, which is crucial for the trademark legal protection.

  Various procedures related to trademarks are to be followed either personally by the owner or by a local industrial property representative. Due to the significant complexity and duration of the proceedings, legal consultation with an attorney is recommended.