An opposition against a trademark applies in the case of a mark applied for registration that may cause confusion with an already existing mark, but not against a mark that has already been registered. Until 2011, the Patent Office carried out an ex officio review of the identity or similarity between marks and refused registration where there was similarity with an earlier mark. At present, the responsibility for monitoring and challenging rests entirely with the proprietor of the mark. The owner of a trademark must itself monitor for applications for identical or similar marks that could mislead consumers. If it notices such an application, the proprietor of the mark may file an opposition with the Patent Office in order to prevent the registration.

Conditions for Filing an Opposition

In order to file an opposition against a trademark, the following conditions must be met:

  1. An application for registration of a mark that is identical or similar to an already existing earlier mark, including an unregistered one.
  2. Opposition period: The opposition may be filed within three months of the date of publication of the application in the official bulletin of the Patent Office.
  3. Legal interest and earlier rights: The person filing the opposition must hold an earlier registered mark or one applied for registration. In some cases, an unregistered sign that has been used consistently and has acquired renown is also protected.
  4. A paid state fee: The fee for filing an opposition is BGN 350.

The opposition is filed with the Patent Office and two identical copies are submitted, unless it is filed electronically with a qualified electronic signature. The Patent Office then sends the opposition to the applicant or to the holder of an international registration of the mark for a response.

Missing the Opposition Deadline

If the proprietor of an earlier mark does not file an opposition within the prescribed three-month period, it may subsequently request the cancellation of a later registered mark on the ground of a breach of the grounds for registration provided for in the law.

Requirements for the Opposition

The opposition must include:

  • Details of the opponent;
  • Information proving legal interest;
  • The reference number, the name of the mark and the scope of the goods or services against which it is directed;
  • The grounds and reasons for the opposition.

In addition, the following are enclosed:

  • A document evidencing payment of the fee;
  • A power of attorney, if the opposition is filed through an authorised representative;
  • Additional evidence, where necessary.
Requirements for Formal Admissibility

In order to be examined, the opposition must:

  • Be based on rights belonging to one and the same person;
  • Cover some or all of the goods and services for which the earlier right is registered;
  • Be directed against some or all of the goods and services set out in the application for the contested mark.
Procedure for Settlement Between the Parties

After the opposition has been checked for admissibility, the two parties are granted a three-month period for a voluntary settlement. The period begins on the date of notification and may be extended by three months at the request of the parties, accompanied by a document evidencing payment of the fee. Where a settlement is reached, the proceedings are terminated and half of the fee paid is refunded to the opponent. A written request must be filed for the refund of the fee.

Procedure Where No Settlement Is Reached

If there is no settlement, the applicant for the mark is given a two-month period to respond to the opposition and the evidence. The opponent then has a one-month period to submit observations, and where new evidence is presented the period for response is extended. After all the periods have expired, the opposition panel of the Patent Office examines the documents and arguments submitted.

Possibility of Staying and Terminating the Procedure

The opposition proceedings may be:

  • Stayed – where a request for revocation, cancellation or termination has been filed under the provisions of the law.
  • Terminated – for example, where the application for registration of the mark is withdrawn, or if the opposition is withdrawn, or where the scope of the application is limited to goods and services that are not the subject of the opposition.
Decision of the Patent Office

In the absence of grounds for a stay or termination, and after all the facts have been clarified, the Patent Office may:

  • Dismiss the opposition;
  • Refuse, in whole or in part, the registration of the mark that is the subject of the opposition.

The decision of the Patent Office is subject to judicial review.

Recommendations for Successfully Conducting an Opposition

In order for the opposition procedure to be conducted successfully, the opposition must be prepared professionally and with competent expertise in the field of intellectual property. Where an opposition is conducted improperly, there is a risk of losing rights and of having to rebrand the business. Regular monitoring for new applications for similar or identical marks, and the filing of oppositions where necessary, is recommended. In order to protect the sign of your business and to have the right to restrict its use by third parties, it is also important to register your mark.

If you need advice and assistance with the registration of a trademark or with the filing of an opposition, as well as with ongoing monitoring of applications filed with the Patent Office, contact us on tel.: 0887550706 or by e-mail: [email protected]