MARKS - GENERAL INFORMATION
WHAT IS A TRADEMARK?
The mark is a sign that is capable of personalizing the goods and /or services of one person from those of the competitors on the market. Therefore, the main role and goal of the trademark is to individualize the products that are offered in some form to consumers.
One of the main functions of the trademark is to be able to identify the origin of a particular good and /or service. The mark can become a guarantor of the quality of the manufacturer's products and thus guide the consumers in their choice. The trademark can and should be used for advertising purposes. It becomes an intangible asset of the company and can be transferred or become the subject of a license.
The main functions of the marks determine their qualities, and in practice the opposite is true. From this circumstance follows the important conclusion that any sign that is able to distinguish on the market the goods and /or services of one person from those of other companies, it is possible to be used it as a trademark. For example a trademark can be: word combinations, personal names, abbreviations, numbers, graphic images (stylized paintings), volume shapes, color combinations, labels and all combinations thereof.
The advertising titles and messages can also be trademarks. In some countries, it is allowed single colors to be registered as trademarks. The newest and most modern types of marks are: three-dimensional signs (the product shape or packaging), motion images, holograms, sounds, smells, gestures, tactile marks (touch) and fluid.
The other objects of Industrial Property are: patents for inventions, utility models, industrial design, which are regulated by local and European legislation.
BASIC REQUIREMENTS FOR TRADEMARK REGISTRATION:
There are two types of requirements:
The first type is the requirement the trademark to distinguish the goods and /or services of one enterprise from those of other enterprises on the market. This is the main function of the mark - to have a distinctive character.
The second type is the requirement the trademark not to be misleading (which may lead to potentially harmful consequences), as well as it does not violate the public order and good manners.
Requirement for a distinctive character of the trademark
In order a sign to have the quality of a trademark, it must have a distinctive character. An image that does not have distinctiveness cannot fulfill the main function of the mark - to help consumers to identify the goods and make their real choice, so such a sign is not distinctive and its registration will be refused.
For example, the word “marmalade” cannot be registered for the goods “preserved and processed fruit” because it is descriptive of the goods in class 29, but on the other hand it is very distinctive in relation to the services referred to in class 43 (Nat. reg.№ 55746). Therefore, generic names, descriptive terms and other non-distinctive signs are not registrable as trademarks.
Appellations that may mislead consumers as to the origin, nature, quality, quantity or other characteristics of the goods marked with them, as well as their geographical origin, do not meet the requirements for registration as trademarks.
There is also a more special category of signs, which are also excluded from the possibility of registration as trademarks, due to the protection of the public interest and are left for public use by all persons. Such are, for example, those showing the geographical origin, national flags, coats of arms, abbreviations of public institutions or official organizations, etc.
DOES THE TRADEMARK REGISTRATION ENSURE RIGHTS?
The protection of a mark must be performed for specific goods and /or services in accordance with the current International Classification of Goods and Services. It is reasonable to note that they need to correspond to the goods and /or services placed on the market by the trademark applicant. The Nice Classification of Goods and Services is updated periodically through current revisions and operates in all WTO members.
The rights that arise for the owners of a registered trademark are clearly defined and strictly regulated by the law, and they are: the right of the owner to use the trademark in respect of the goods and /or services for which it is protected and the right to prohibit third parties to use it on the territory of the country without his consent.
Use of the mark
The guaranteed possibility of using the mark means that the owner of the already registered sign has the right to place it on the packaging or labels of the goods, as well as to use it in an appropriate way to indicate the services for which the trademark is registered. This includes, in practice: offering goods for sale, placing them on the market or storing them for such purposes, importing or exporting goods under that trade mark, and offering and providing services under that sign; and last but not least, the use of the mark in commercial documents and for advertising.
The prohibiting aspect of an exclusive right resultant from the registration of a trademark is the possibility for the proprietors of such marks to prohibit all others from offering on the market identical or highly similar goods and /or services to the registered ones, marked with an identical or similar mark, thus protecting consumers from being misled or damaging the image of an already existing trademark.
Therefore, by registering a trademark, its owner may ban third parties to: put a mark identical or with high degree of similarity to his trademark on goods or packagings; to store or sell goods marked with the specific trademark, as well as to provide identical services under this name; to import or export goods branded with this mark and /or use it in commercial papers, websites and advertising.
Protection of a trademark
Moreover, based on the need to protect consumers against eventual misleading, the protection of trademark is considered to extend to the use of identical and /or similar trademarks for similar goods or services, provided that such use may confuse consumers about the type, quality, composition or origin of the goods and /or services they are marked with.
Restrictions on the exclusive rights over the registered trademark:
- Derived from the territorial principle - refer to the territory of the countries in which the trademark is registered;
- Derived from the scope of protection, which is determined by the list of specified goods and/or services for which the trademark is registered;
- Hypotheses in which consumers are likely to be misled by a trademark that is registered in violation of the absolute grounds for refusal.
IS THERE ANY DIFFERENCE BETWEEN A COMPANY NAME AND A TRADEMARK?
There is a misconception that the registration of a company with a certain name in the Trade Register automatically protects it also as a trademark. This, of course, is not true. It is essential for the customers to be aware about the differences between a company name (firm name) and a trademark.
The company (commercial) name is per se the name of a company entered in the Register according to the Commercial Law and whose activity is regulated by the relevant regulations, contracts, tax and other administrative services, and serves to personify the commercial entity.
The trademark is a sign regulated in the Trademark and Geographic Indications Act, which serves to identify the origin of the goods and /or services of a company, while distinguishing them from those of other persons on the market.
The company (firm) names can be used as trademarks and vice versa, but this does not make them interchangeable.
WHAT IS THE TERRITORIAL SCOPE OF EXCLUSIVE RIGHTS OVER TRADEMARKS?
As a main aspect related to the registration of the trademark, are the territorial rights that are obtained from the protection of the given mark. These rights apply only in the countries or regions for which the trademark is registered. In other words, if the registration of the given sign as a trademark is not carried out in a country, it will not be protected on its territory. This circumstance will allow any third interested party to use it.
TERM OF THE TRADEMARK REGISTRATION
The other main aspect related to the trademark registration is the term of protection. For all EU member states, including Bulgaria, this term is fixed at 10 years, and starts running from the priority date of the filing of the application at the Office. The registration of the trademark can be maintained indefinitely for subsequent periods of 10 years. This procedural action must be carried out in a timely manner, and the relevant maintenance fees to be paid.
HOW IS THE TRADEMARK PROTECTION OBTAINED?
Various factors determine the approach to trademark registration. They may depend on: potential and desired markets, the company's business strategy, financial capabilities and etc.. As a result of which, protection can be obtained in some of the three main ways:
- By national order - by filing an application for registration of a trademark at the relevant national Patent Office, which is for the territory of the given country.
Such procedure may be repeated in as many as and in which countries it is necessary before the local national authorities of interest. It should be noted that each such procedure is connected with respective fees and deadlines, which vary from country to country. These trademark applications must be in the relevant working language and be for specified goods and /or services from the current edition of the International Classification for Goods and Services. If the number of countries is large, this approach may turn out to be too slow and expensive
The Patent Office of the Republic of Bulgaria is the only body in our country at which applications for trademark registration can be filed.
- Internationally - the Madrid Agreement (and the Protocol related to the Agreement), of which the Republic of Bulgaria is a member, provides the opportunity to protect trademarks through one common application for international registration of the image in many countries around the world that are members of the Madrid system for international trademark registration. This specific procedure is conducted before the World Intellectual Property Organization (WIPO).
- European trademark registration system - all EU member states, including the Republic of Bulgaria, are part of the regional trademark registration system (EUTM), which operates throughout the European Union. Such an application may be submitted to the European Union Intellectual Property Office (EUIPO), through which the applicant can obtain reliable protection for all Member States of the European Union. For this purpose, it is necessary to submit to the Office one single application for registration of a European Union trade mark (EUTM), which is examined within 6 months period.