Use is not a requirement in claiming protection of the reputation of a trademark
SOFIA CITY ADMINISTRATIVE COURT FLIPS BPO PRACTICE AROUND WITH CRUCIAL DECISION
The Bulgarian Law on Trademarks and Geographical Indications (LTGI), in consistency with the practice all over Europe and in compliance with EU Legislation provides that the existence of a trademark that enjoys reputation on the territory of Bulgaria can be used as grounds for refusal of registration of another identical of similar mark, even for goods and services that are not identical or similar to those covered by the reputable trademark, if the use without due cause of the sign applied for can be detrimental to or take an unfair advantage from the distinctive character or the repute of that trademark. To add a little twist, since 2007 and up until recently, a special procedure was in place for recognizing both well-known and reputable trademarks (the idea being that this procedure would take place only once, and the trademark in question would receive a “well-known” or “reputable” status for a period of 5 years, during which there would be no need to prove such status on a case-by-case basis). This special procedure is now revoked, but the outstanding cases still linger on and can have a great impact on the current practice and the perception of the institutes of well-known marks and especially of trademarks enjoying reputation.
The case in question was started with a request before the BPO by Danone Serdika, represented by the attorney Vasil Pavlov, for recognition of a status “trademark with reputation” of a trademark for a number of goods and services different from those the mark is used for. The very same trademark has already been recognized as a well-known trademark for milk and dairy products by the BPO. Evidence of the high reputation of the trademark was presented before the BPO (essentially – the same evidence used in the proceedings for claiming well-known status). However, the BPO rejected the request (in consistency with its practice up to that point), stating that the evidence provided proved existence of reputation of the trademark, but only concerning the goods “milk and dairy products”, and did not prove that the trademark enjoyed reputation for the goods and services for which the “trademark with reputation” status was requested. No evidence that the trademark was ever used for those goods and services was provided. Therefore, according to the BPO, it did not have a “mark enjoying reputation” status for the requested goods and services and the request was rejected.
This decision was appealed before the Sofia City Administrative Court. The attorneys Vasil Pavlov and Alexandra Semerdjieva (who joined the case before the court) pointed out their long withstanding position, that requesting evidence that a mark that has already obtained a status of a well-known for different goods/services was used for goods and/or services, for which the status “trademark with reputation” is claimed, is complete non-sense and contradicts the principle and purpose of this institute, since it’s intended to be used as grounds against the registration of similar signs, but for goods/services that were not similar to the ones covered by the reputable trademark’s registration. The logic of the Law called that reputation needed to be proven for some goods for which the trademark is registered and used, but that reputation would be enough to claim that the trademark enjoys protection as “trademark with reputation” for other goods/services, not similar to them (if the other conditions of the law were met – chance for detriment or taking unfair advantage of its distinctive character and reputation).
The Court reviewed the case and confirmed the position of the appellant. It pointed out that the purpose of the institute of “trademark with reputation” was to extend protection of a trademark that was famous to the consumers beyond the goods and services for which it was registered (and therefore – used), in order to prevent detriment to its distinctive character and reputation or obtaining an unfair advantage from them through use of a similar trademark for goods that the reputable trademark does not cover. Therefore, the conclusions of the BPO lacked common sense and had no legal grounds in the Law. On those considerations, the Court overturned the decision of the BPO and upheld the appeal.
This decision (already in force) is vital for it finally provides a weapon overturning a pointless and illogical practice of the BPO that severely limits the protection, provided by trademarks that have taken years of efforts and investments for achieving high reputation among consumers.