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The IPfabrika team has many years of experience in various intellectual property services, including trademark registration. At this stage and after so many satisfied customers (we thought), there is nothing to surprise us.
That's why, when colleagues from the Sofia Mountain Club sought our assistance in registering their brand, the project seemed deceptively easy to implement.
So - in October 2024, we filed an application for registration of a word trademark "Sofia Mountain Club". Our goal was to protect this part of the brand of "Sofia Mountain Club" - an association ("SPC"), so that it can enjoy distinction and receive validation for its 12 years of activity as a leading organization of people driven by love for the mountains and good causes.
How much types of trademarks is there according to Bulgarian legislation?
As we have already said, a word trademark is composed entirely of words, letters, numbers or other standard symbols, without graphic elements. According to Bulgarian legislation, regulated by the Trademarks and Geographical Indications Act, a word trademark serves to individualize the goods and/or services of one person from those of other persons.
Its registration grants the owner the exclusive right to use the mark, to prohibit others from using it without permission, and to take legal action in the event of infringement. However, to be registered, a word mark must be distinctive, not descriptive of the type, quality, or intended use of the goods, and not misleading to consumers.
Registration is done at the Patent Office and is valid for 10 years, with the possibility of renewal. A trademark is an important tool for building brand identity and protecting the reputation of any business.
First hurdle – we received a preliminary rejection. Thus declared, the mark lacks distinctiveness, and on top of that, it also indicates geographical origin. According to experts at the Patent Office "Sofia" is an adjectival form of a noun proper name of the capital of Bulgaria - the city of Sofia, a major administrative, industrial, transport, cultural and educational center, i.e. the word element is a derivative of the name of a real geographical object. The geographical location of Sofia, surrounded by the Vitosha, Plana, Sofia, Lyulin and Lozen mountains, creates favorable conditions for mountaineering, alpinism, excursion vacations, etc., and in general all activities related to mountain tourism. It turns out that the applied trademark will confuse the well-informed consumer, in our case an amateur mountaineer, that SPK organizes mountain activities only in the vicinity of the capital.
We objected.. If the experts themselves indicate that consumers are well informed, they should know that in this case it does not refer exclusively to the geographical location of the SPK and the activities it develops within and around the city of Sofia. The informed consumer knows well that sports and recreation are not simply not limited to stagnation in one place (in this case – Sofia and the surrounding area, as the experts claim), but quite the opposite – they imply movement.
According to this logic, the movement in question is not limited to the mountains surrounding the city of Sofia – not only because the nature of the club excludes it, as is evident from the locations of the events held throughout the Bulgarian diaspora, but also because it is unacceptable and illogical for “Sofian” to be associated solely with the geography of the capital (after all, “Sofia is not Bulgaria”, right?). On the contrary – the way of life that has reigned for decades in big cities is associated with stagnation and inertia, and more and more people need detachment and variety. In addition, if the point of view is maintained that “Sofian” is associated with the geography of Sofia, and “mountain” – with the mountains, then there is a contrast between the city and the mountain, between stagnation and movement. Based on the argument stated by the Patent Office in the new edition of Methodological guidelines, despite the presence of descriptive terms, if they are mutually exclusive, is subject to trademark registration "if the combination of the two descriptive terms constitutes such a combination that there is a minimum degree of distinctiveness, for example the combination itself has an unusual character".
We also presented evidence of acquired distinctiveness, established in the practice of both the Supreme Administrative Court and the Court of Justice of the EU regarding:
How the mark is used - required to establish whether the mark is used as an identifier of commercial origin, and not simply as a descriptive or decorative element.
Degree of intensity of use - it is necessary to prove that the use was not incidental or insignificant, but systematic and on a significant scale. This is a key criterion in the case law of the Court of Justice of the EU, which the Bulgarian courts follow.
Geographical spread - proves that the mark is accepted in a significant part of the territory for which protection is sought. In the context of Bulgaria, this means sufficient coverage of the territory of the country, according to the guidelines of the EUIPO and the CJEU.
Duration of use of the brand - systematic use of the brand over time increases the likelihood that it has acquired distinctiveness in the minds of consumers.
Data on a community of relevant consumers who perceive the goods or services as originating from the SPC as a result of their designation with the trademark.
Statements and declarations from chambers of commerce and industry or other trade and professional associations in support of distinctiveness.
A number of organizations, including Vitosha Nature Park, advocated for the SPK. We showed photos of the events organized under the banner of "Sofia Mountain Club" in Sofia, Plovdiv, Burgas, Pleven, Troyan, the Vitosha, Rila, and Stara Planina mountains. We presented dozens of articles covering the SPK initiatives in the media for at least 10 years, as well as statistics on hundreds, and sometimes thousands, of interested individuals and participants in the events from all over Bulgaria.
They issued a final refusal. The reasons were the same as in the preliminary refusal, without fully considering the arguments for acquired distinctiveness and the objections regarding the explicit indication of geographical origin. There was also a new argument - the events that the SPK organizes do not carry the word element "Sofia Mountain Club". Nothing, that's what it says on tents, stickers, posters, etc. according to the attached evidence.
We objected again. And we wait. For over half a year now, the fight has been going on for the association to receive the right to protect its name, which it has been using for 12 years to organize events throughout Bulgaria, in which people from abroad can also participate.
"Sofia Mountain Club" is not just another club. A brand is a mark – "a sign that is capable of distinguishing the goods or services of one person from those of other persons" according to the LMGO. A sign that consumers associate with the causes and initiatives of the SPC. And they know they are good.
IPfabrika puts all its expert potential and professional enthusiasm into every project our company takes on. We shared this story as a clear example of the obstacles that Bulgarian companies sometimes face on the way to registering a trademark. Our advice is to always trust professionals who will fight for your case until there is a real result.
