PATENT OFFICE OF REPUBLIC OF BULGARIA. Introduction The provision in Article 108 (1) Council Regulation (EC) 40/94 on the Community trade mark (CTMR)

PATENT OFFICEPATENT OFFICEOF REPUBLIC OF BULGARIAOF REPUBLIC OF BULGARIA

IntroductionIntroduction

The provision in Article 108 (1) Council Regulation (EC) № 40/94 on the Community trade mark (CTMR) is one of the corner-stones of the CTM system in its aspect of co-existence with national TM systems.


IntroductionIntroduction

Namely, the proprietor of no longer existing CTM application or registration can request conversion of his CTM application or registration into a national TM application with respect to:

Member States designated in the request

all or some goods and services


Grounds for conversionGrounds for conversion

Conversion is possible only when:CTM application is:

»withdrawn»finally refused

CTM registration is:»finally revoked »declared invalid »surrendered or not renewed


OHIM

Examines the request

Request for

conversion

OHIM transmits the

request to designated

Offices


Conversion basic principles Conversion basic principles

The request for conversion becomes a national TM application, under the national law of the designated offices.

A national application, resulting from a CTM conversion request carries with it its Community dates: filling date, priority date as well as seniority date, where applicable.


Conversion basic principlesConversion basic principles

Each designated office ought to:examine whether conversion is excluded

pursuant to Article 108 (2) CTMR (Article 110 (1) CTMR)

treat and examine the ensuing trade mark application in the same way as a normal national trade mark application.



2 months time to take or not the following steps :•find domestic representative•translate the documents•pay fees

Designated Officesreceive transmitted CTM conversions

When proprietor’s application meets the requirements, BPO examines ensuing application, namely:

• formalities• absolute and relative grounds

If the proprietor does not take the required steps before BPO, the application is considered withdrawn.

BPO

Conversion in Conversion in Bulgarian legislationBulgarian legislation

As per Bulgarian legislation, conversion is particularly regulated by:

LAW ON MARKS AND GEOGRAPHICAL INDICATIONS (BG-TML)

CHAPTER IVa – “COMMUNITY MARK”

Article 72c (in force as of the date of accession of the Republic of Bulgaria to the EU)


Conversion in Conversion in Bulgarian legislationBulgarian legislation

Article 72c “Conversion of a Community Conversion of a Community Mark Into a National ApplicationMark Into a National Application”:

“(1) The applicant for or proprietor of a Community mark may request the conversion of his Community mark application or Community mark into a national mark application for registration...”


Time limitTime limit

Within two months, counted from the day BPO receives the notification about CTM conversion, the proprietor of ensuing application can take procedural steps.

(Article 72c (2) BG-TML)


National requirementsNational requirements

Within this time limit, the proprietor of converted CTM ought to meet the following national requirements, in order his application to be valid and subject to further examination.



Legal representation

Persons, who have no residence or head office in the Republic of Bulgaria shall conduct business with the BPO through a domestic industrial property agent.

(Article 3 (2) BG-TML



Translation

The filing of standard national application form in Bulgarian language is considered to be a translation of the conversion.

Such application must contain identical data as the conversion request.

(Article 72c (2) (i) BG-TML)



Graphic representations of the mark

Except in cases of word mark, graphic representation shall be applied.

Where color is claimed, the mark representation shall be in color.

(Article 72c (2) (ii) BG-TML)



Fee payment

BPO collects application and examination fees under the Fee Tariff, approved by the Council of Ministers.

(Article 72c (2) (iii) BG-TML)



Where above-mentioned requirements are not met within the fixed time-limit,, the request for conversion is deemed withdrawn.

However, there are no such special provisions in Bulgarian national law.


ExaminationExamination

The ensuing application keeps the original filing date, priority or where appropriate seniority date, of the CTM application.

BPO treats this application, as a normal national TM application and examines:

formalitiesabsolute and relative grounds for refusal


Figures and factsFigures and facts

0

5

10

15

20

25

30

35

40

45

2007 2008

met nationalrequirements – nowbeing on examinationlevel

the proprietor takesno further action

CTM conversionrequests in whichBulgaria is adesignated country

to 22.04.2008

18

27

45

3 3

As the statistics shows, proprietors of more than 60% of the transmitted CTM conversion requests, take no subsequent steps to meet the legal national requirements.




This high percentage brings forward the following questions:

Whether it is appropriate to notify the requesting party by sending him an invitation, in which stating our national requirements.



Whether the time limit is not long enough for the proprietors of a CTMs to take the required steps.

Is it better this time-limit to be extended?


ProblemsProblems

In order CTM conversion requests, to be examined faster and without complication, it is important for us to answer the following questions:


ProblemsProblems

Whether to treat requests for conversion as a subject of a new substantive examination.

Is it more appropriate to provide for system examination and registration, under facilitated conditions?


ProblemsProblems

When speaking of converted CTMs, wherein the listed goods and services are classified according to older classifications, is it necessary to re-arrange them, according to the classification in action?


ProblemsProblems

Speaking of Bulgaria as a New Member State, the most important problems are those, concerning the conversions of CTMs, applied or registered before the effective date of our accession – 01.01.2007.


Accession date (01.01.2007)

After accessionBefore accession

It is possible the proprietor to seek conversion of his CTM for the territory of New Member States

The proprietor decides to file the request for conversion of his refused or withdrawn CTM, for a New Member State.

CTM application filed BEFORE the accession date.

Withdrawn or finally refused Withdrawn or finally refused CTM applicationsCTM applications

Accession date (01.01.2007)

After accessionBefore accession

It is possible the proprietor to seek conversion of his CTM for the territory of New Member States

The proprietor decides to file the request for conversion of his CTM, which has already surrendered or expired, for a New Member State.

CTM registration expires or has been surrendered close to the accession date, but BEFORE it. And the limit for requesting conversion, expires after the accession date.

Surrendered or not renewed Surrendered or not renewed CTM registrationsCTM registrations

ProblemsProblems

In the context of enlargement, no special legislative provisions were foreseen for conversion in the national law.

Thus BPO faces following contradictions:


ProblemsProblems

which date, to be considered as a filing date (respectively priority or seniority date) of the conversion requests for the above mentioned CTMs?

which date, the duration of the converted CTM should be calculated from i.e. when does the ensuing TM expire?


PATENT OFFICE OF REPUBLIC OF BULGARIA. Introduction The provision in Article 108 (1) Council Regulation (EC) 40/94 on the Community trade mark (CTMR)

Documents

bulgaria slide

republic of bulgaria

conversion conversion

national mark application

national application

eu patent office of

community mark application

c conversion