The Bg Marks Law (BgML)-1999 was amended in early 2010 and the amendment entered into force a year later on 10.03.2011. It took another year for the Bg Patent Office (BgPO) to set the tracks for implementing the new provisions. The latter had not been tested in courts yet to have judicial precedents.
These two pages deal only with amended oppositions procedure and its relevance for cancellation claims against identical or similar marks.
1. The BgML introduced in 2010 a sophisticated opposition procedure against marks applications which breach the similarity ban with earlier marks. Art.38 “b” provides that the owner of an earlier mark has the right to oppose the application of an identical/similar mark within the three months term when that application is published in the BgPO journal. Then a domino procedure develops b/n the owner of the earlier mark, the application title holder and the PO ending with a PO resolution on the opposition.
2. The problem is that any subsequent cancellation action against the identical or similar mark under art.26 can be launched only if there had been an earlier opposition under art. 38”b” while the mark was still being applied for- art.12 BgML.
In other words, if one has missed the three month term for opposing an application of a similar/identical mark he would not be allowed to launch a cancellation claim against that wrong mark after its registration.
So the opposition under art. 38”b” becomes an absolute litigation premise for fighting a breaching TM similarity.
3. The above implies the grave importance for all TM owners to follow and read carefully the BgPO Journal to be able to attack/oppose the embryo application of a breaching mark.
If one misses that publication and the respective opposition term and option, the breaching mark grows up safe.
It means the defense against a similar mark becomes relative and a function of the earlier mark owner’s discretion and/or vigilance. Such a failure to react is considered a tacit confirmation of the breaching application.
This is a resolute change from the law framework before 2010 when the similarity of an application was an absolute barrier for the PO to register the applied mark regardless of the earlier mark owner’s reaction- see the pre-2010 wording of art.12 BgML.
4. In its current wording art.12 still provides for an express consent of the earlier mark’s owner to the similar application implying that the rule for express consent still stays unchanged.
But that is just an appendicitis of the earlier wording since no one would need an express consent if the passive one has already been assumed- by failure to oppose the similar application within the three month term of the BgPO publication.
When you extinguish the remedy tool/the action against a similar application due to non-opposition, you do not need the express consent at all.
5. The above should be well realized by all holders of registered TMs in Bg and they should know that the defense of their interests against similar marks is no longer an official function of the BgPO but solely a function of their continuous vigilance on the Bg PO journal and the quick discretion to react.
We are well aware that this principle is not unique on international level but the local specific wording of the law may easily deteriorate into a practice that may turn Bulgaria into a new-type safe haven for TM pirates.
6. We know that the relative defense against similar/identical marks is usually assigned to the parties concerned but preconditioning that defense on a pre-registration opposition and that pre-registration opposition being pre-conditioned by an indefinite surveillance of the Bg PO journal makes this law framework outstanding. It reminds us of the fable where the stork and the fox hosted each other for dinner where the guest was deliberately unable to enjoy the host’s meal- the fox offered the stork a flat dish and the stork offered the fox a bottle.
The courts may well contribute to some corrective interpretation of the new wording but it will take no less than three to five years to push such a case from bottom to top of the judicial scale. And the effort should be of highest quality.
November 2012 Valentin Braykov