Scope of protection of geographical indications PATENT OFFICE OF THE REPUBLIC OF BULGARIA.

Scope of protection of geographical indications

PATENT OFFICE OF THE REPUBLIC OF BULGARIA

Legal framework

National law- Law on marks and geographical indications

International agreement- Agreement on Trade Related Aspects of

Intellectual Property RightsBilateral Free Trade Agreements + GI AgreementsLisbon Agreement for the Protection of

Appellations of Origin and their International Registration

Regional-European Law (Regulations and Directives)

7th Liaison Meeting on Trade Marks 21-22 May 2012www.bpo.bg

EU law

Regional law (EU law)-2008/95/EC TM Directive (Art. 15) on provision about GI-207/2009 Regulation on the Community Trade Mark-510/2006/EC Regulation – on the protection of geographical

indications and designations of origin for agricultural products and foodstuffs

-110/2008/EC Regulation on (…) the protection of GI of spirit drinks-479/2008/EC Regulation – on the common organization of the market

in wine-1234/2007/EC Regulation establishing a common organization of

agricultural markets and on specific provisions for certain agricultural products

-509/2006 EC Regulation on agricultural products and foodstuffs as traditional specialties guaranteed (TSP- they are not industrial property)

7th Liaison Meeting on Trade Marks 21-22 May 2012

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Горнооряховски суджук Gornooryahovski sudzhuk

protected for Meat products (cooked, salted, smoked, etc.)


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Bulgarian PGI protected underRegulation 510/2006

Restriction under Bulgarian law

Art.11 Absolute grounds for refusal. The following shall be not registered:-12. mark which consists exclusively of applied for or

registered geographical indication or from its derivates, valid for the territory of Bulgaria

-13. mark which contains applied for or registered geographical indication or its derivates, valid for the territory of Bulgaria, where the applicant is not person registered as the user thereof.

Registered users of GIs can have an individual TM which contains GIs or even their derivates. But the mark cannot only consists of the GI.


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TM including protected geographical indications

The practice of The Bulgarian Office: Registered user of GIs must restrict the goods in their own trade marks only for goods with protected geographical indication.

TM N77613

Class 33: wine with registered geographical indication Traminer from Khan Krum

Terminology

Three different terms for protected geographical names- geographical indications (PGI), designation of origin (PGO) and appellation of origin (Lisbon Agreement) + traditional specialities guaranteed (TSP)

Geographical indications (geographical names) according Bulgarian law are two kinds:

Appellation of origin - is the name of a country, or of a region or locality in that country, that serves to designate goods originating therein whose quality or characteristics are due essentially or exclusively to the geographical environment, including natural and human factors. (same in Lisbon Agreement) (PDOs in EU Regulations)

Geographical indications is the name of a country, or of a region or locality in that country, that serves to designate goods originating therein whose quality, reputation or other characteristics can be attributed to that geographical origin (PGIs in EU Regulations)

Alternative protection of GIs like collective marks (China, Japan, USA)


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Sources- information and legislation

Too many different kind of regulations and databases (WIPO, DOOR, E-bacchus, national databases) of national/international and EU level.

Some kind of GIs are protected against TM registrations in EU, other are protected only in some countries, some are industrial property other not (TSP). OHIM doesn’t check the Lisbon agreement database?


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Different kind of GIs are not treated in an equal manner. The following shall not be registered (CTM Regulation 207/2009):

(g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service

(j) trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits …… with respect to such wines or spirits not having that origin

(k) trade marks which contain or consist of a designation of origin or a geographical indication registered in accordance with Reg. 510/2006……..when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication.

All kinds of wines are protected, but protection for the foods is only for these, which have an European registration. What about the other GIs, which are not drinks or foods ( marbles, ceramics, kaolin). Does OHIM use the Lisbon database to check the international appellations of origin?


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Too broad and free interpretation terms

The legal protection shall consist in the prohibition of: any commercial use of the geographical indication for goods that are similar to those for which it is registered in so far as the reputation of the registered geographical indication is exploited (Bulgarian law)

Any direct or indirect commercial use of a registered name in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name or in so far as using the name exploits the reputation of the protected name; (Reg. 510/2006, art.13)


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EXAMPLES

Protected GIs:

-Chardonnay from Varna

-Varnenski Misket

both for wines from cl.33Wine with PDOs

VARNA (databases E-bacchus Reg. 479/2008)

Refused TM from BPO- Varna wines and spirits- Varna

Registered TM from BPO

-Winery Varna, reg.N68317

- Varna 1444, reg.N63166


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EXAMPLES

Reg. CTM 004822425TM name: 1444 VarnaClass: 33Owner: from Poland Identical mark is reg. in BPO, but with

disclaim of Varna and the shape of bottle

Reg. CTM 005739024TM name: Varna L’amoreClass: 33, 35, 39Owner: from Poland


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EXAMPLESRegistered PDOs -Melnik -Pomorie for wine

Application for CTM

-CTM N010764454 (pub.) -cl. 32, 33, 39

CTM N003284411 STARY MELNIK (reg.)-cl. 32, 33


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What should be our approach, when GIs is including geographical name and the name of the product:

PGIs

Misket from the region of Sliven

Slivenska grozdova rakiya (Grape spirit from Sliven)

Applied TM

Jitna vodka Sliven (wheat vodka Sliven)


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Is there a prevalence of the geographical name above the kind of the fruit/ of the milk/ of the goods/ variety?

PGIs- Loveshka krushova

rakia (Lovech pear rakia)

- Loveshka slivova rakia (Lovech plum rakia)

TMLoveshka muskatova

rakia (Lovech muskat rakia; it’s made from grape)


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EXPLOITATION?

Is it enough that we have the same kind of product and the same region to decide that the mark cannot be registered, because the “products are comparable to the products registered under that name or in so far as using the name exploits the reputation of the protected name” (Reg.510/2006, art.13)

Is “Loveshka muskatova rakia” an exploitation of GIs “Loveshka krushova rakia”?


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THANK YOU FOR YOUR ATTENTION!

Maria SlavovaBulgarian Patent [email protected]+359 2 9701476

Scope of protection of geographical indications PATENT OFFICE OF THE REPUBLIC OF BULGARIA.

Documents

geographical environment

geographical origin

g trade marks

ec regulation

service j trade marks

community trade mark

eu law regional law

registered ctm regulation