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Opposition to trademark - Introduction to the new book of the lawyer Atanas Kostov

 

The book "Opposition to trademark" examines the new procedure for refusal on relative grounds, in force with the recent amendments to the Trademark Law (Law on Marks and Geographical Indications) from 10.03.2011. The book will be practically useful for wide range of lawyers, experts, working at the Patent Office, representatives of industrial property, commercial operators, students and citizens. Our aim is to explain various options for prevention, which gives the opposition of trademarks. Most of the materials in this book represent a synthesis of theory and practice, mostly of the OHIM (Office for Harmonization in the Internal Market) and the European Court of Justice, mainly due to lack of a national law for the time being. This approach was chosen to put light on the specifics of the procedure, not only nationally but also in Europe. I believe that both those decisions of the ECJ, which are motivated in detail with clearly established legal criteria concerning the opposition, would be directly applicable in practice and enforcement in Bulgaria, not only because their priority importance to the Bulgarian legislation, but mostly in connection with competent legal advice, which are offering.

Due to the reasons explained above, the introduction of the opposition procedure, in my opinion, is the result of positive legislative initiative of the Bulgarian Patent Office. However, opposition poses numerous theoretical and practical issues that have yet to seek their proper decision. Dynamic market realities and the fact that legislative processes at national and European scale have let to the need of modern mechanisms for identifying real force traders in a certain business areas, including intellectual property too and in particular - trademarks. We mention this for several reasons:

1. Because behind some of the trademarks registered in Bulgaria stand not real commercial interests. They have been registered just for the sake of it sake (in most cases for commercial purposes) and should be removed as unusable because of those reasons.
2. There are many fraudulent practices which must be ceased yet at the stage of application of trademark - application by representatives of the holder of the mark or improper application of already imposed trade but unregistered marks.
3. Competitive relationships require continuous efforts of control through adequate for the application of legal measures against potential competitors (for example, limiting the filing of similar trademarks for identical or similar goods and services).
4. Last but not least, the procedure itself in the Patent Office will be optimized by avoiding the subjective factor in the process of expertise as far to the similarities, as a relative ground for refusal of a trademark after a specific expert in the Patent Office, who was allocated file the trademark, and that decision depends on his subjective opinion. Thus, market players will have their own self-regulatory rights to the registered and applied for trademarks, respectively, thereby giving preference to a more practical and at the same time competitive approach towards the mark holders.
All this will lead, I think, to optimizing the work of the Patent Office itself, which will greatly improve its administrative capacity.

The aim of the Bulgarian legislator always to maintain Trademark Law in accordance with European and international law provides a sufficient basis for protection the rights of citizens, holders of trademarks. I believe that if this book provides the reader with new and useful theoretical and practical guidance on the procedure for opposition of trademarks and helps law enforcement in cases involving trademarks, it has achieved the desired effect.

Atanas Kostov, Author

Table of Contents:

• Preface
• The procedure for opposition to the trademark in the Bulgarian Patent Office. Theoretical and practical aspects.
• Opposition - basic concepts and content
• Legal procedures in opposition
• Specifics in the filed of opposition to the recognition of the international registration in the Republic of Bulgaria
• Cessation of proceedings in opposition
• Procedure on opposition at the Office for Harmonization in the Internal Market (OHIM)
• Filing of opposition
• "Reflection period"
• The competitive part of legal procedures
• Final legal procedure
• Opposition to international registrations in which the European Community is a party
• Specifics regarding the similarity as a basis for filing the opposition in the Bulgarian Patent Office
• Technical features
• Theoretical characteristics
• Similarity in goods and services
• Similarity in marks
• Jurisprudence of the Bulgarian courts regarding cases of similarity
• Specifics on the similarity as a basis for filing the opposition before the OHIM
• Discrepancies in the determination of similarity
• Grammatical and semantic criteria for similarity
• Jurisprudence of the ECJ concerning the cases of similarity
• Regulation (EC) № 207/2009 of the Board