I registered my trademark. So I can do whatever I want with it?

Yes and no. Trademark registration provides full protection from the law, which arises from the date of its registration with the Patent Office. According to the Bulgarian Trademarks and Geographical Indications Act (TMGA), the term of protection of a trademark is 10 years from the date of filing the application, and the registration can be renewed indefinitely for subsequent periods of 10 years. However, there is one catch – during this period the trademark must be used. If you have decided to keep trademarks, with the only hope that in time you will be able to take advantage of them and their exploitation by someone else, then there is something to learn from this article.

Can I just register a trademark and not use it?

The law has provided for a kind of sanction against those trademark owners who do not use them. When, within 5 years from the date of registration, the owner has not actually started using the trademark on the territory of Bulgaria in connection with the goods or services for which it is registered, or the use has been suspended for a continuous period of 5 years, the registration may be revoked. For this to happen, there must be no valid reason for the non-use.

What then does "actual use" mean??

The trademark may be used both in the form in which it is registered and in a form differing in individual elements. However, these differences must not alter the distinctive character of the trademark compared to the form in which it is registered.

The legal concept of "genuine use" largely corresponds to its everyday and colloquial meaning. Genuine use of a trademark does not include use for the sole purpose of preserving the rights granted by the trademark. When assessing whether the use of a trademark is genuine, all the facts and circumstances that establish whether the commercial exploitation of the registered trademark is genuine are taken into account.

In order for a registered composite trademark to be in genuine use, it must be distinctive of the goods and services for which it is registered. Genuine use of the trademark means that the trademark has been used in accordance with its essential functions, so as to ensure the identity of the services for which it is registered, in order to maintain or create a market for these services. Despite the lack of a precise criterion for determining the concept of “genuine use” of the trademark, the point of registering a trademark is for it to appear on the market, to be actually present there, constantly over time and sustainably with regard to the configuration of the sign. The period of use begins from the moment of filing the application for registration of this trademark.

Actual use also includes:

• the use of the trademark by its owner in a form that does not differ substantially from the form in which it was registered, regardless of whether the form in which it is used is registered as another trademark of the same owner;
• placing the trademark on the goods or on their packaging in Bulgaria, regardless of the fact that they are intended only for export;
• if the trademark is used by another person, but with the consent of its owner.

When assessing genuine use, the place, duration, volume and nature of use of the trademark for the goods or services for which it is registered are taken into account.

Does actual use matter when it comes to protecting my brand?

The answer is: absolutely yes! Genuine use can be your most powerful weapon, both when you file an opposition against a later trademark application, and when you are an applicant and an opposition is filed against your application.

For example, the applicant of the mark against which an opposition has been filed may request the opponent to provide evidence of genuine use of the earlier mark. This use must be in connection with the goods or services for which it is registered and on which the opposition is based during the five years preceding the filing date or the priority date of the application for registration of the mark subject to the opposition, or evidence that there are proper reasons for non-use, provided that the earlier mark was registered at least 5 years before the filing date or the priority date of the later mark.

However, there is a short and very important deadline for this request, which is why we always recommend using the services of a specialist in the field so that it is not missed.

What if I don't provide proof of use?

Here things get even more interesting: if the opponent does not submit evidence of use of the earlier trademark within the time limit provided by law, the opposition is disregarded. When the earlier trademark is used for only part of the goods or services, the opposition is considered in relation to these goods or services.

The same request (for non-use) can be made both in cancellation proceedings and in trademark infringement proceedings! This is why preparing a proper strategy before initiating a registration, opposition or other type of proceedings is of utmost importance.

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