The purpose of this article is to look at one of the most accessible IP rights, namely the trademark. We will look at the first steps in trademark registration, what types of trademarks can be registered and what the benefits are.
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Intellectual property is a valuable asset for any business and its protection brings benefits to any commercial enterprise. This is also why large companies invest huge amounts of money and effort in protecting intellectual property (IP). The most prominent examples of this are the hundreds of new patents registered each year by pharmaceutical companies as well as the millions invested by major brands in trademark protection.
However, according to a recent study conducted by the European Union Intellectual Property Office (EUIPO)1, only 10% of small and medium-sized enterprises (SMEs) in Europe have any registered IP rights, such as national trademarks, European Union (EU) trademarks or patents. 35% of SMEs indicated that they did not see any added value in registering IP rights and a further 19% specify lack of sufficient knowledge on the subject as the main reason. At the same time, almost all SMEs (93%) with registered IP rights noted the positive impact of IP rights on their business.
The purpose of this article is to look at one of the most accessible IP rights, namely the trademark. We will look at the first steps in trademark registration, what types of trademarks can be registered and what the benefits are.
A trademark is a distinctive sign or symbol that identifies and distinguishes the goods or services of an enterprise from those of its competitors. Such signs may be, for example, words, numbers, drawings, etc., including combinations of various elements. It is a little-known fact that under certain circumstances colours (e.g. Milka’s purple colour), sounds (e.g. McDonalds’ I’m lovin’ it), animation (e.g. the golden lettering at the beginning of 20th Century FOX movies) or holograms can be registered as trademarks. Of course, the most widespread are word and figurative marks, as well as marks containing a combination of word and figurative elements (called combined marks in Bulgaria).
Trademarks, in addition to their type, are subdivided by territorial protection into the following groups:
• National trademarks – the procedure is performed before the national authority (e.g. the Patent Office of the Republic of Bulgaria – BPO) and after successful registration grants protection in the territory of the respective country.
• EU trademarks – the procedure is performed before the European Union Intellectual Property Office – EUIPO and a successful registration grants protection in all member states.
• International trademarks – the procedure is performed within the World Intellectual Property Organisation – WIPO and provides protection in the territories chosen by the applicant (as of May 2023 it is possible to file an application in a total of 157 countries worldwide). The peculiarity of an international trademark is that a "basic" national or European registration is required on which the international application is based, i.e. regardless of the territories for which an international trademark application is filed, it is necessary to go through one of the two previous procedures beforehand.
The procedures for registering a national or EU trademark are roughly similar and take 4-8 months.
They always start with the filing of an application for registration of a trademark (national or European – at the BPO or EUIPO respectively) for certain goods and services (divided into 45 classes by the International Classification of Goods and Services)2, after which the relevant authority conducts a formal examination. Once the formal check is completed, a substantive examination is also carried out, checking whether there are absolute grounds for refusal. After successfully passing the examination stage, the application is published in the Official Bulletin of the concerned authority. The BPO normally issues 2 bulletins each month. From the date of publication of the application in the Bulletin, a three-month period for the submission of oppositions starts. After the expiry of the opposition period and in the absence of filed oppositions, the mark is registered for a period of ten years.
Once the 10-year registration period has expired, the mark may be renewed an unlimited number of times for another 10 years.
A successful opposition to an application for registration is a relative ground for refusal and constitutes an obstacle to registration. There are various grounds for filing an opposition. The most common would be filed by the proprietor of an identical or similar earlier trademark which is registered for identical or similar goods or services, where there is a likelihood of confusion on the part of consumers and where the marks have overlapping (even partial) territorial effect. Therefore, oppositions to an application for registration of an EU trademark may be based on earlier European trademarks and international trademarks as well as earlier national trademarks applied for in any EU Member State.
In the case of an opposition, the visual, phonetic and conceptual similarity between marks, as well as the similarity of the goods and services for which they are applied for/registered, is analysed. On the basis of this analysis, a conclusion is made as to the likelihood of confusion of the relevant public, after which, depending on the decision of the competent authority, either the opposition or the application for registration is rejected. Examples of other, less frequently used grounds for opposition are: similarity to a previous well-known trademark; bad faith of the applicant when filing the application established by a final court decision, etc.
Neither Bulgaria, nor the EU require periodic provision of proof or declarations of genuine use of registered trademarks to continue their validity (unlike other jurisdictions, such as the US). However, if a mark is not used for some or all of the registered goods and services for a period of 5 years, the possibility arises for third parties to request for revocation of the registration with respect to the unused goods or services.
In addition, the use of a particular registered trademark for filing an opposition may also require proof of genuine use if at least 5 years have elapsed since its registration. It is therefore important that the trademark is actively used.
First of all, you need to develop a clear concept of what the mark will look like, with the most common variants being figurative (logo), word or a combination. It is important to apply the mark in the form in which you will use it, as you may have to prove genuine use.
When developing your own trademark, there are certain general rules to consider for a successful registration. Non-exhaustive examples of such rules are:
Once the specific distinctive sign has been defined, it is necessary to determine the other parameters of the mark, such as territorial protection and the goods and services (classes) for which it will be applied. This is a very important stage because, on the one hand, the application should cover the widest possible range of goods and services, including those that the applicant intends to offer in the foreseeable future and the territories into which it will enter. On the other hand, the wider the scope of the mark (both in respect of territory and in respect of goods and services), the greater the risk of a successful opposition. Or to put it another way, a balance needs to be struck, given that there is no need to register an EU trademark if it will be used only in Bulgaria, as the number of earlier trademarks that can oppose the application by opposition increases (all EU trademarks + all national trademarks from EU jurisdictions). It is also not necessary to register a trademark for goods and services completely unrelated to the applicant’s commercial activities, as this would unnecessarily increase the risk of opposition in case the applicant does not intend to expand its activities in this direction.
After outlining the basic parameters of the mark, it is advisable to conduct a preliminary search for similar earlier marks which could potentially constitute an obstacle to registration. Depending on the results, measures can be taken to reduce the risk of a successful oppositions (e.g. adding an original figurative element such as a logo).
Any natural or legal person may submit applications in person, through an authorised Intellectual Property Representative (IPR) or an authorised attorney-at-law to both BPO and EUIPO. Persons from third countries (outside the EU, EEA and Switzerland) must be represented by an IPR or an attorney-at-law.
Registering a trademark provides its owner with added value in various forms, such as:
From a business perspective, the benefits can be much more significant, for example:
Administrative fees are payable to the competent authority and depend on the chosen territory of protection and the number of classes in which the trademark application is filed. The most relevant fees for Bulgarian natural persons and legal entities are as follows:
A grant fund has been set up at the initiative of the European Commission to help EU SMEs protect their intellectual property rights. The initiative is in its third year and covers the period from 23.01.2023 to 8.12.2023. The fund is managed by EUIPO.
The 2023 budget is EUR 27.1 million and the application procedure is relatively simple and entirely online. If the funding is approved, a voucher of up to EUR 1,000 is issued, which can cover up to 75 per cent of the administrative fees for both national and European trademark registrations. An important clarification is that the funding approval and the issuance of the reimbursement voucher must be obtained prior to the filing of the trademark application. Administrative fees must be paid by the applicant after which up to 75 per cent or EUR 1,000 of them are reimbursed after application to the Fund.
Once the voucher has been issued, the applicant has 2 months to “activate” it by filing an application for reimbursement of the fee in connection with a trademark application. This period may be extended once for a further 2 months. Within 6 months after a successful “activation” of the voucher, the applicant has the right to request reimbursement of all additional fees paid (these may be subsequent fees or fees from applications for new trademarks, i.e. one voucher may be used for several trademarks). In addition, no distinction is made between successful and unsuccessful applications, i.e. in the event of a successful opposition against an applied trademark (i.e. an unsuccessful registration), the applicant does not lose the right to reimbursement of the administrative fees.
Trademark registration helps to create and maintain the identity of a brand or business, achieve consumer recognition and stand out in a competitive market, so it is important to consider intellectual property protection in the overall business strategy of any company. In addition, thanks to the European Union’s initiative to support small and medium-sized enterprises and subsidies for the protection of their IP rights, trademark registration has become more affordable, and now is the time to take this step and maximise the benefits.
12022 Intellectual Property SME Scoreboard, one of the EUIPO’s flagship studies
2International classification of goods and services for trademark registration (Nice Classification)
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