The Bulgarian Parliament will hold a second reading of a new draft Law on Marks and Geographical Indications this autumn after the MPs vacation period ends on 31st August.
The new draft law already successfully passed the first reading in plenary session of the Parliament held on 27 June 2019. However, further changes in the proposed piece of legislation are expected to take place between the first and the second reading.
The main purpose of the new law is to transpose the provisions of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks. Apart from the legislative measures provided for in the EU directive, which applies to all EU Member States, the draft law introduces other important changes in the legal regime of Bulgarian marks and GIs. Some of the new and controversial moments include:
- New procedural deadlines for submission of arguments and evidence – the draft law provides that when a decision of the Patent Office of the Republic of Bulgaria (BPO) is appealed in court, the appellant may submit new evidence and arguments, only if such appellant was unable to become aware and to provide the arguments or evidence before the BPO due to reasons outside its control. This deadline is designed to apply practically in all proceedings before the BPO, including refusals on absolute grounds, oppositions and cancellations. Such procedural estoppel at the administrative stage of the proceedings is rather uncommon and contrary to the principles of Bulgarian administrative law, thus causing serious discussions among IP representatives and lawyers.
- Earlier copyright as ground for invalidity of registered marks – the draft law provides that when a registered mark is challenged on the basis of earlier copyright and the mark owner disputes such copyright, the copyright holder must assert his rights in civil courts. Only after the civil court action is successful, the BPO would proceed to cancellation of the mark registration. This requirement to go through a court phase in order to achieve cancellation of a mark on the basis of earlier copyright has been criticized because it slows down considerably the cancellation proceedings. Some professionals also see in this proposal an attempt of the BPO to dispose of copyright-related proceedings by transferring them to the civil courts in Sofia (which are already clogged with cases).
- The draft law provides for substantially shorter deadlines for providing a response to different actions by the BPO in the registration, opposition and cancellation process. Whereas in some cases the shortened terms clearly speed up the proceedings, in other they may cause organizational trouble to right holders and their representatives. One such case is the term for provision of proof of use of a mark in revocation and opposition proceedings. The shortening of this term means that mark owners and their representatives would have far less time to gather all required evidence for real use of their mark in the relevant 5-year period. The gathering of such proof may be burdensome and time-consuming. This is especially true when the mark owner is a foreign entity, when the documents are in a foreign language and must be translated or when the volume of the documents proving use of the mark is significant.
- Elimination of national GIs protection – the new law provides for cancellation of GIs for agricultural products which have already been registered at national level. This measure, presented in the proposal as an EU law requirement, strongly resembles deprivation of rights that have already been granted and invested into. Bulgarian companies have registered GIs for agricultural products and have already invested into raising the consumer’s awareness and the GI product’s reputation. The rights acquired and the investments made may be nullified overnight by a simple change in the law and without any compensation for the former right holders.
All of the above and other hot topics in the new law are yet to be discussed in the Bulgarian Parliament before reaching of a (hopefully reasonable) compromise.
The full position of the author on the new draft law, as submitted within the public discussion procedure, may be read here (in Bulgarian): http://strategy.bg/PublicConsultations/View.aspx?@lang=bg-BG&Id=4075