The trademark, as an object of industrial property, is a mark which is capable of distinguishing the goods or services of one person from those of other persons and may be represented in the Official Register of Trademarks in such a way that the subject matter of the protection granted by the registration can be clearly and precisely determined. Such marks may be, for example: words, including the names of persons, letters, numbers, drawings, figures, the shape of the goods or of their packaging, colours, sounds or any combination of such marks. Trademarks are regulated by the Trademarks and Geographical Indications Act (TGIA).
Nowadays, trademarks are an essential tool for the development, promotion and implementation of valuable commercial activities in the dynamic circulation of goods. Apart from being a mean of protection against unauthorised use of the mark by other traders, a trade mark constitutes an investment in itself, which is an independent asset of the commercial enterprise. Trademarks, as well as the registration applications themselves, may be the subject of transfer transactions, serve as security for a pending and future claim, as well as an independent object of a pledge under the Special Pledges Registry. This article will familiarize you with some of the types of trademarks, their features and the scope of their protection.
First of all, trademarks are classified into individual, collective and certification marks.
- An individual trademark serves to designate goods or services produced or marketed by the trademark owner. Trademarks can be jointly owned by multiple individuals, and any transfer or disposition requires the agreement of all owners.
- A collective trademark is one which is designated as such when the application for registration is made, which is owned by an association of manufacturers, traders, persons performing services who are legally capable under the applicable law and legal persons subject to public law, and which is capable of distinguishing the goods or services of the members of the association from those of other persons. The collective mark shall be used in accordance with the rules adopted by the association and submitted in writing to the Patent Office when the application for registration is filed.
- A certification mark shall be a mark which is designated as such when the application for registration is filed and which is capable of distinguishing the goods or services in respect of which the proprietor certifies the material, the method of manufacture of the goods or the manner of supply of the services, the quality, the accuracy or other characteristics thereof, excluding geographical origin, from goods or services the characteristics of which are not so certified. What is special about certification marks is that they are used by others with the authorisation and under the control of the proprietor of the mark. Its purpose is to establish external control over the quality of the goods and services offered.
Another classification feature for trademarks is their division according to their individualization.
1. The most common type of mark is the word mark. It consists of letters and/or words and/or numbers and/or other signs and combinations thereof. These are the majority of registered marks. Word marks may have a definite meaning or be artificially formed words. With a word mark, the word itself is protected - without colour and without specially lettered characters.
2. Figurative marks - these consist of freeform or geometric shapes and can be images of people, animals, objects, geometric shapes, etc. An example of a figurative mark is the three black stripes of Adidas.
3. combined marks. A combination mark incorporates figurative and verbal elements and/or colours. It is also possible to register the figurative or verbal element as separate marks and to participate together in the combined mark. A word mark will also be a combined mark when the word combination is written in a specific font. A typical example is the Coca-Cola drink mark. The specific font makes this mark combined as a combination of a word mark and a graphic mark.
4. 3D marks. They are embossed, volumetric and spatial. They usually consist of the shape of the product or its packaging. The Coca-Cola bottle is registered as a volumetric, embossed, three-dimensional mark because it is distinctive and the bottle itself does not derive from the nature of the goods themselves.
5. The next type are coloured marks. They consist of a colour or a combination of colours. In order for such a mark to be registrable, the colour must have acquired distinctiveness through its use in relation to a person's goods; even a single-colour mark will become registrable because it will be presumed to be distinctive. A typical example of this is the colour purple as a mark of 'Milka'.
6. Movement marks. These consist in changing the positions of the elements of the mark.
7. Hologram marks. Such marks provide a high level of protection as they are not imitable.
8. Sound marks. This is a mark that consists exclusively of a sound or combination of sounds. Thus, in 1994, an attempt was made to register the specific engine sound of Harley Davidson motorcycles.
9. Positional marks. These consist of the specific manner in which the mark is affixed or attached by gluing, stamping, burning and other means.
10. Multimedia marks. Consist of linked images combined by image and sound. A small video may be registered as a trademark for a good or service.
11. Other marks - these are marks that consist of characters for which there is not yet an established format of representation. These can be, for example, scent marks, taste marks, light marks, etc. For example, an attempt was made by Chanel to register their famous fragrance No 5 as a scent mark in the UK, but the application was rejected precisely because the scent of the perfume is the very essence of the product. However, some scent mark descriptions have met all the conditions and have been successfully registered. Such examples are: tennis balls with the scent of freshly cut grass, tires with a 'floral fragrance/smell reminiscent of roses'.
In order to be successfully registered, the law requires that the mark has the property of distinctiveness. The distinctive character of the mark must be present both at the time of application for registration and throughout the registration period. If distinctive character is lacking, this is the first absolute ground for refusal of registration of the mark. If the mark subsequently loses distinctive character, that is a ground for revocation. For example, the mark 'sport' could not be registered and protected because of lack of distinctiveness.
Another prerequisite for a trademark to be registered is that the sign must be capable of being reproduced repeatedly without alteration. On the other hand, the sign must be capable of being perceived objectively by persons.
According to the territorial scope of protection, trademarks are:
1. National - these are the marks applied for at the Patent Office and registered in the State Register. The scope of protection is limited only to the territory of the Republic of Bulgaria. The term of protection is 10 years, which runs from the date of filing the application and may be renewed an unlimited number of times.
2. The European Union trademark shall be registered with the EU Intellectual Property Office (EUIPO) under the terms and conditions of Regulation 2017/1001. The EU trademark shall have a unitary character. It shall be protected in the territory of all EU Member States. Any trademark registered with the EUIPO has effect on the territory of Bulgaria and its proprietor enjoys all the rights under the TGIA.
3. The third type of trademark according to the territorial scope of the trademark is the international trademark. International trademarks are those registered under the Madrid Agreement and its Protocol. International trademarks are protected in the territories of the countries designated at the time of registration or subsequent extension. Any Bulgarian national trademark may be registered as an international trademark. The application shall be filed through the Patent Office. A prerequisite for an international application is the existence of a registered or applied-for national trademark.
Discretion in the choice of the type and scope of the trademark is crucial for its subsequent use, since once applied for, no changes can be made subsequently as to its type and subject matter. Many factors should be taken into account in order to maximize the protection afforded by a trademark.
If you have any questions regarding trademark registration, please do not hesitate to contact us at office@peshkovski.bg.
This publication is for informational purposes only and does not constitute legal advice or legal consultation.
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