How can we protect ourselves against trademark infringement?

Trademark protection is extremely important to avoid unfair competition and the free movement of goods and services. In the event that trademark rights are violated, various legal remedies are provided, including options for voluntary dispute settlement, as well as sanctions imposed by various institutions such as the Patent Office, civil courts and the Commission for the Protection of Competition.  

In which cases are trademark rights violated and what measures can be taken if this has happened? 

Trademark infringement occurs when: used without the consent of the owner in commercial activity, any sign for goods and/or services which is: 

• identical to the mark and is used for goods or services identical to those for which the mark is registered; 
• identical or similar to the mark and has been used for goods or services identical or similar to those for which the mark is registered, if there is a likelihood of confusion on the part of consumers, which includes the possibility of associating the sign with the mark; 
• identical or similar to the mark, regardless of whether it is used for goods or services that are identical, similar or not to those for which the mark is registered, if the mark is well-known in the territory of the Republic of Bulgaria and the use without reason of the sign would take unfair advantage of the distinctive character or the repute of the mark or would be detrimental to them. 

In these ways the right to free movement of goods and services is violated and unfair competition is created, as a result of which the offender should be sanctioned in an adequate, proportionate and fair manner according to the type and extent of the violation and its consequences. 

It is preferable for disputes regarding trademark infringement to be settled voluntary extrajudicial. This will lead to saving time, administrative procedures and costs. Experience and our established strategy have shown that well-conducted communication and familiarization with the interests of all parties can lead to reaching a consensus. However, this is not always possible, therefore the owner of a trademark whose rights have been violated has the following options: 

1. Filing a report with the Patent Office (PO) 

2. Filing a claim under Article 116 of the Trademarks and Geographical Indications Act (TMGA) to establish the infringement (with the possibility of awarding damages) 

3. Filing a claim under Art. 35 in connection with Art. 100 of the Law on Protection of Competition (LPC) 

4. In the presence of an increased public danger - submitting a signal to the prosecutor's office to initiate proceedings under Article 172b of the Criminal Code (CC) 

If you choose to submit report to the Patent Office, the procedure is as follows: upon referral, the competent persons conduct an inquiry and investigate the case. If a violation is found, sanctions are imposed on the violator, appropriate to the matter in question. The procedure is internal and initiated by the employees of the Public Prosecution Service - in such a case, they determine how and within what period to proceed, and on average it takes about 2-3 months. 

Another option for protection is to file a claim under Article 116 of the Trademarks and Geographical Indications Act (TMGA). The Sofia City Court is competent, which can establish the fact of the violation and order its cessation during the trial, if there is sufficient evidence. Within the framework of this procedure, there is also a possibility to claim compensation for non-pecuniary damages resulting from the violation. The legal proceedings can take years, which is why we advise you to resort to voluntary settlement of the dispute first. 

Due to the fact that trademark infringement is closely linked to disruptions in the flow of goods, the free market and competition, there is also a possibility of referral to the Commission for Protection of Competition by filing a claim under Art. 35 in conjunction with Art. 100 of the LPC. In case of its acceptance and establishment of the violation, the sanctions for the party that uses unregulated imitating goods, services, brands and other objects of industrial property may reach 10% of the turnover for the previous financial year.  

If the act is associated with consequences of increased public danger and thus violates public relations related to intellectual property, the trademark owner may also contact the Prosecutor's Office of the Republic of Bulgaria. According to Art. 172b of the Criminal Code, anyone who, without the consent of the owner of the exclusive right, uses in commercial activity a trademark, invention, utility model, industrial design, plant variety or animal breed, subject to this exclusive right, or uses a geographical indication or its imitation without legal basis, is punished with imprisonment from one to six years and a fine of up to ten thousand leva. Within the framework of the criminal proceedings themselves, a civil claim for the damages suffered may also be filed. For this purpose, however, the real perpetrator of the crime should be found - criminal liability is personal and is borne by individuals. Due to the high sanctions provided for this crime, there is a debate pitting Bulgarian and European legislation against each other. 

According to Art. 172b of the Criminal Code, anyone who, without the consent of the holder of the exclusive right, uses in commercial activity a trademark, invention, utility model, industrial design, plant variety or animal breed, subject to this exclusive right, or uses a geographical indication or its imitation without legal basis, shall be punished. with imprisonment from one to six years and a fine of up to ten thousand leva.  

The provision gave rise to debates around the world and in our country, echoed in Interpretative Decision No. 1 of 31.05.2013 of the Supreme Court of Cassation, as well as in amendments to the provision of 2022 and 2023 and in practical problems that arose as a cause and consequence of the Decision of the Court of Justice of the EU of 19.10.2023 in case C-655/21. According to it, Article 49, paragraph 3 of the Charter of Fundamental Rights of the European Union must be interpreted in the sense that it does not allow a national legal provision, such as that of Art. 172b, paragraph 2 of the Criminal Code, which provides for a penalty of imprisonment for a minimum of five years in the event of use - repeated or with significant harmful consequences - of a trademark in commercial activity without the consent of the holder of the exclusive right.  

One of the main questions that comes to the agenda is whether the sanctioning consequences of the crime are excessive and excessive, not corresponding to the public danger. The lack of abundant and well-founded practice shows that the answer is (un)clear. That is why trademark owners rarely resort to this type of criminal law protection.  

If you believe that your trademark rights have been violated and you need protection, contact us. Our team consists of lawyers with diverse experience in the field of intellectual property at the national and international level.