Grounds for refusal of trademark registration

The trademark registration process, although it may seem simple at first glance, actually hides many peculiarities. The following lines will introduce you to the two main types of grounds for the patent office to refuse your trademark registration.

These grounds are divided into two types - absolute and relative. The office monitors the absolute grounds ex officio, and the relative grounds - upon referral by an interested party. In this article we will introduce you to the absolute grounds for refusal to register a trademark. These grounds are checked after submitting the application for registration (note - when the fee is also paid) in the proceedings before the Patent Office of the Republic of Bulgaria, when an examination on the merits is carried out.

What are the absolute grounds for refusal?

The law describes a total of 15 absolute grounds for refusal. Even if only one of these grounds is present, the Patent Office will refuse to register the trademark. This is why preparing a proper strategy before filing the application and conducting a preliminary risk assessment by a specialist can significantly help the applicant to successfully pass the substantive examination.

Here we will try to group the grounds according to the impossibility or possibility of overcoming or circumventing them. Most of the grounds will be described with examples. In the first part of the article, we will introduce you to the grounds that cannot be overcome. In the following parts, we will present those that can be overcome if it is proven that: before the date of application, the mark, as a result of use, has acquired distinctiveness in relation to the goods or services for which it is applied for; there is consent from the relevant competent authority; the applicant for the mark is a registered user of the geographical indication; the applicant has limited the list of goods for which the mark is applied for to those that meet the specification of those registered under the law.

Compelling reasons for registration

1. A sign that is not a trademark

A trademark 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. However, not all such signs are subject to registration. Such signs can be, for example: words, including names of persons, letters, numbers, drawings, figures, the shape of the goods or their packaging, colors, sounds or any combination of such signs. At the same time, however, not all such signs are subject to registration. Therefore, it cannot be registered as a trademark, for example, a feeling or touch, a letter, a number, a figure, a color, etc.

2. Znak, which consists entirely of:

• the shape of the goods or another characteristic that arises from the nature of the goods themselves; or
• the shape of the goods or another characteristic that is necessary to achieve a technical result; or
• the shape of the goods or another characteristic that gives significant value to the goods.

3. A trademark which consists of or reproduces in its essential elements the name of an earlier plant variety registered under national legislation, the legislation of the European Union or international acts to which the Republic of Bulgaria and the European Union are parties, providing for the legal protection of plant varieties, where the trademark and the plant variety refer to identical or closely related species.

4. A brand that is contrary to public order or morality

The concepts of "public order" and "good morals" are not defined in the Law on Trademarks and Geographical Indications. The meaning of public order can be derived from the Constitution, as: "the order established by normative acts, which ensures normal tranquility and the opportunity to exercise the relevant civil rights". This means that in order for there to be a violation of public order, it is necessary to violate legal norms that regulate the order that ensures the exercise of the relevant civil rights.

The concept of "good morals" is also enshrined in the Constitution as "criteria for public decency established in society for the purpose of its preservation" and as "the leading interest in this regard is to maintain the moral integrity of society". On the other hand, in its practice, the European Union Intellectual Property Office accepts that "good morals" are subjective values, and a distinction must be made between a simply disrespectful, disrespectful, unpleasant, tasteless or unacceptable mark and one that is highly offensive, truly shocking, vulgar and likely to cause deep offense.

The main goal is to prevent the granting of an exclusive right to a trademark that is inconsistent with legality and morality. The practice requires striking a balance between the right of everyone to use words, expressions or images as a designation of the goods and services offered by them and the right of consumers not to have their moral values, feelings, interests and established legal order affected.

You should keep in mind that it is not necessary to prove a personal legal interest in the cancellation of the trademark. The absolute grounds for cancellation of a trademark are established in the public interest and the authority may ex officio initiate proceedings to cancel the trademark when it considers that it was registered in violation of these requirements.

Trademarks that violate this prohibition would include, for example: names of drugs; racist or Nazi signs; insults and obscene words; trademarks containing the names of famous people; trademarks containing terrorist or criminal organizations in their names;

Practical examples:

• A word mark containing the phrase "National Wine Institute" - the court refused to register it, since such an institute does not exist in the country, or the goods are otherwise associated with a national institute, which further gives the mark higher authority.
• Word mark "PORT OF VARNA" - the court refused registration because it "will mislead consumers of goods and services that will inevitably be associated with those guaranteed by the state, offered by the state enterprise, and also with the facility located on the Black Sea coast near the city of Varna, intended to receive vessels". It is also curious that the mark was refused on the grounds described in point 5 of this article (below)

5. A mark that is likely to mislead consumers as to the nature, quality, geographical origin or other characteristics of the goods or services

Here, the assessment by the Patent Office is made very carefully and it aims not to affect the well-informed consumer, who is careful in his choice when making a purchase or requesting a service. The registered trademark for these goods or services must not contain signs or indications, respectively, whether they are not false, misleading or such as to mislead the consumer with regard to the information they provide. In other words - it is necessary that the trademark gives an indication of certain characteristics of the product to consumers that it does not possess.

In order to result in a refusal of registration, it is sufficient that there is a possibility that the consumer will be misled and the likelihood of confusion is made from his point of view. It should be borne in mind that such confusion can only arise when signs or indications have a clearly expressed semantic meaning, which is perceived as an indication of unambiguous characteristics of the goods.

Example of a trademark whose registration was refused on this basis: word mark "BLUE WHITE" - applied for classes "paints, varnishes, etc....". The court accepted that the mark in no way indicates the type, quality or purpose of the goods offered, it is fanciful, since there is no dazzling color, and the combination "dazzling white" is an expression with a high degree of abstraction.