Patents and Trademarks
A brief overview of the situation regarding patents and trademarks in Bulgaria. Prepared in association with Kinstellar, a leading law firm in Bulgaria, this is an extract from The Pharma Legal Handbook: Bulgaria, available to purchase here for USD 99.
1. What are the basic requirements to obtain patent and trademark protection?
In Bulgaria, the legislative framework regulating legal relations arising in connection with the creation, protection and use of patentable inventions comprises of the Patents and Utility Models Registration Act and secondary legislation for its implementation.
An invention may be patent protected provided that (i) it is new; (ii) it involves an inventive step; and (iii) it is industrially applicable (see further the answer to question 3 below).
A patent is granted with a decision of the Bulgarian Patent Office upon submission of an application and provided that the patent applied for meets the statutory requirements under Bulgarian law.
Supplementary protection for medicinal products is granted in accordance with Council Regulation (EEC) No. 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal product.
Regulation of trademarks under Bulgarian law is provided in the Marks and Geographical Indications Act and secondary legislation for its implementation.
A trademark may be protected if it is a sign that is capable of distinguishing the goods or services of one person from those of other persons and can be represented graphically. Such signs may be words, including the names of persons, or letters, numerals, drawings, figures, the shape of the article or the packaging thereof, a combination of colours, sound signals, or any combination of such elements.
A right over a trademark is granted upon registration of the trademark with a registry kept at the Patent Office.
2. What agencies or bodies regulate patents and trademarks?
In Bulgaria, patents and trademarks are registered with and regulated by the Bulgarian Patent Office.
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
Any invention can be patent protected provided that (i) it is new; (ii) it involves an inventive step; and (iii) it is industrially applicable.
An invention is considered new if it does not form part of the state of the art.
An invention is considered involving an inventive step if, having regard to the state of the art referred above, such invention is not obvious to a person skilled in the respective area as at the date of filing of an application for obtaining a patent or, respectively, the priority date.
An invention is considered industrially applicable, if it could be manufactured or repeatedly used in industry and in agriculture.
The following cannot be patent protected:
- discoveries, scientific theories and mathematical methods;
- works of creative art;
- schemes, rules and methods for performing mental acts, playing games or doing business;
- computer software;
- the presentation of information;
- the human body at the different stages of its formation and development, as well as the discovery of one of the elements of the human body, including the sequence or the partial sequence of a gene;
- inventions the commercial use of which would be contrary to public order or morality, including such pertaining to:
– human cloning methods;
– methods of changing human embryo genetic identity;
– use of human embryos for industrial or commercial purposes;
– methods of modifying the genetic identity of animals where there is a danger of such modifying to cause the animals suffering, without any essential benefit to human or animals from a medical perspective, as well as of animals created by such methods.
- methods for treatment of people or animals by way of therapy or surgery, as well as diagnostic methods that are applied to people or animals, whereas this provision does not apply to products, particularly substances or compounds that are used in such methods;
- plant varieties and animal breeds;
- essentially biological methods for the production of plants and animals.
A trademark may be protected if it is a sign that is capable of distinguishing the goods or services of one person from those of other persons and can be represented graphically.
The following signs/trademarks are not eligible for registration:
- any sign that is not a trademark within the meaning specified above;
- any trademark which is devoid of any distinctive character;
- any trademark consisting exclusively of signs or indications that have become customary in the current language or the established trade practices in the Republic of Bulgaria with respect to the goods or services applied for;
- any trademark which consists exclusively of signs or indications which designate the type, quality, quantity, purpose, value, place of origin, time or manner of production of the goods, manner of provision of the services, or other characteristics of the goods or services;
- any sign that consists exclusively of:
– the shape which results from the nature of the goods themselves;
– the shape of goods which is necessary to obtain a technical result;
– the shape which gives substantial value to the goods
- any trademark which is contrary to public order or morality;
- any trademark which may deceive the consumers, as to the nature, quality or geographical origin of the goods or services;
- any trademark which consists of or includes escutcheons, flags or other symbols, as well as their imitations, of any states which are parties to the Paris Convention, as well as any escutcheons, flags or other symbols, abbreviations or names of international intergovernmental organisations, covered by Article 6ter of the Paris Convention;
- any trademark which consists signs, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest;
- any trademark which consists of or includes official signs and hallmarks indicating control and warranty, where such signs and hallmarks are used for identical or similar goods;
- any trademark which consists of or includes a name or a representation of a cultural value or parts of cultural values designated in accordance with the procedure provided for in the Cultural Heritage Act;
- any trademark which consists exclusively of a geographical indication applied for or already registered, which geographical indication is effective within the territory of the Republic of Bulgaria, or of any derivatives of such geographical indication;
- any trademark which consists a name or an image of cultural value or parts of cultural values, designated under the Bulgarian Cultural Heritage Act;
- any trademark which consists exclusively a registered geographical indication or of geographical indication already applied for, whereas such geographical indication is effective within the territory of the Republic of Bulgaria,
- any trademark which consists a geographical indication applied for or already registered, effective within the territory of the Republic of Bulgaria, or any derivatives of such geographical indication, where the applicant is not a user of the geographical indication.
The restrictions regarding items 2, 3 and 4 above do not apply where the trademark, through use, has become distinctive in relation to the goods or services in respect of which the said trademark is applied for.
The restrictions regarding items 8, 9, 10 and 11 above do not apply where the consent of the relevant competent authority has been obtained.
4. How can patents and trademarks be revoked?
Termination of the Patent
A patent is being terminated in any of the following cases:
- expiration of the term for which the patent was granted;
- surrender of the patent by the patent holder – by way of written application submitted to the Bulgarian Patent Office;
- failure by the patent holder to pay the fees for maintaining the patent in force.
Invalidity of the Patent
At the request of any third interested party, a patent may be declared invalid in any of the following cases:
- the invention does not meet the legal requirements for being patented;
- the essence of the invention has not been expounded in sufficient clarity and exhaustiveness;
- the patent holder does not have a right of patent which circumstance was established with a final court decision;
- the object of the patent goes beyond the content of the application as it was submitted, or if the patent was granted on the grounds of a divided application, when the said object is beyond the content of the earlier application as it was submitted.
A trademark’s registration will be terminated in any of the following cases:
- the period of the registration has expired;
- surrender of the trademark owner of the right over the trademark;
- upon termination of the legal entity which is a trademark owner;
- cancellation of the registration of the trademark owner in his/her/its capacity of a user of a geographical indication with respect to trademarks, which include that geographical indication;
- upon request by any person, if within a period of five years after the date of registration of the trademark, the trademark owner has not started actual use of the trademark within the territory of the Republic of Bulgaria. Actual use means any of the following:
– affixing the sign to goods or to the packaging of such goods;
– offering the goods which bear the sign for sale, placing such goods on the market or storing such goods for those purposes, as well as offering or providing services under that sign;
– importing or exporting goods which bear such a sign;
– using such a sign in business papers or in advertising;
– using of the trademark by the trademark owner in a form which does not substantially differentiate from the form in which the trademark was registered;
– affixing of the mark to goods or to the packaging of such goods in the Republic of Bulgaria, irrespective if said goods are intended for export only.
- if the trademark was registered in breach of the requirements for registration of a trademark under Bulgarian law;
- upon request by any person, if as a result of an act or omission of the trademark owner, the trademark has become a common designation for the product or service for which the trademark is registered;
- upon request by any person, if the trademark is used by the trademark owner or by another person with the trademark owner’s consent as regards the goods or services for which the trademark is registered in a manner misleading consumers as to the nature, quality or place of origin of said goods or services;
- surrender of the trademark owner of the right over the trademark with respect of all or some of the goods or services for which the trademark is registered.
5. Are foreign patents and trademarks recognized and under what circumstances?
Bulgaria has been bound by the Patent Cooperation Treaty since 21 May 1984. The Bulgarian Patent Office is the designated, elected and receiving office within the meaning of Article 2(xiii), (xiv) and (xv) of the Patent Cooperation Treaty.
Bulgaria has also been a member of the European Patent Organisation since 1 July 2002 and is bound by the European Patent Convention. Respectively, a European patent which refers to the Republic of Bulgaria gives to the patent holder the same privileges as those under the Bulgarian Patents and Utility Models Registration Act, subject to submission with the Bulgarian Patent Office of a translation into Bulgarian of the description and the claims and payment of the publication fees. Where a national patent has been issued for an invention for which a European patent has been issued with reference to the Republic of Bulgaria and where both patents have the same date of application, or priority dates, and belong to one and the same person or successor of such a person, the national patent is terminated.
With respect to trademarks, the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol have been in force in Bulgaria since 1 August 1985 and 2 October 2001 respectively. In addition, marks registered with the European Union Intellectual Property Office are recognised in Bulgaria.
6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
Bulgarian law provides exclusivity periods for medical products.
A person applying for a marketing authorisation of a generic medicinal product is not obliged to perform a full clinical trial if it proves that the medicinal products specified in the application is generic (similar) to another medicinal product for which a marketing authorisation has already been granted to another person (originator) in another EU Member State not less than 8 (eight) years ago. After expiration of said 8 (eight) years the applicant can make use of the clinical trials data of the originator but cannot place the medicinal product on the market.
The applicant may place the medicinal product on the market after the expiration of additional 2 (two) years, i.e. after the expiration of 10 (ten) years from the date of receiving the marketing authorisation by the originator.
The 10-year period may be prolonged with no more than 1 (one) additional year if the originator receives a permit for significant new indication as regards the relevant medicinal product under the marketing authorisation. In such a case, the applicant may place the medicinal product on the market after the expiration of 11 (eleven) years from the date of receiving the marketing authorization by the originator.
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
Other than the general restrictions described in the answer to question 3 of Chapter 6, and the restrictions applicable to generic medicinal products described in the answer to question 6 of Chapter 6, there are no restrictions on the type of medicines or devices that can be granted patent and trademark protection.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
A licence agreement is not subject to approval/acceptance by any government body or regulatory authority. However, in order to become opposable to third parties, a licence agreement has to be registered with the Patent Office, irrespective if it is concluded with a foreign or a local licensor.