The trademark registration process may seem simple at first glance, but it involves many complexities. Below, we explain the two main types of grounds on which the patent office may refuse trademark registration.
These grounds are divided into two categories: absolute and relative. The patent office monitors absolute grounds ex officio (on its own initiative), while relative grounds are considered only if an interested party raises an objection. This article focuses on the absolute grounds for refusal. These grounds are examined after the application is submitted (and the fee is paid) during the substantive examination phase before the Patent Office of the Republic of Bulgaria.
What Are Absolute Grounds for Refusal?
The law outlines 15 absolute grounds for refusal. If even one of these grounds is present, the Patent Office will refuse trademark registration. Therefore, it’s essential to develop a solid strategy before submitting an application and conduct a preliminary risk assessment with the help of a specialist. This can significantly improve your chances of successfully passing the substantive examination.
We will group the absolute grounds based on whether they can be overcome or not. Some examples will also be provided. In this first section, we will cover the grounds that cannot be overcome. In subsequent parts, we will discuss grounds that can potentially be overcome if certain conditions are met, such as proving that the mark has acquired distinctiveness, obtaining consent from the relevant authority, or limiting the list of goods or services covered by the trademark.
Irremediable Grounds for Refusal
- A Sign That Cannot Function as a Trademark
A trademark must be a sign capable of distinguishing the goods or services of one entity from those of others and must be capable of graphical representation. While many types of signs can be trademarks (such as words, letters, numbers, shapes, colors, and sounds), not all signs are eligible for registration. For example, feelings, touches, single letters, numbers, colors, or similar abstract concepts cannot be registered as trademarks. - A Sign That Consists Entirely of:
- The shape or another characteristic that arises from the nature of the goods themselves;
- The shape or characteristic necessary to achieve a technical result;
- The shape or characteristic that adds significant value to the goods.
- A Trademark Reproducing a Plant Variety Name
If a mark consists of or reproduces the essential elements of a plant variety name registered under national, EU, or international law (where Bulgaria and the EU are parties), and the mark and plant variety refer to identical or closely related species, registration will be refused. - A Mark Contrary to Public Order or Good Morals
The terms “public order” and “good morals” are not explicitly defined in the Law on Trademarks and Geographical Indications. However, public order generally refers to the legal framework that ensures civil rights, while good morals refer to standards of decency established in society. The European Union Intellectual Property Office (EUIPO) further defines good morals as subjective values that distinguish between marks that are disrespectful or offensive and those that are truly shocking or vulgar.The main goal here is to prevent the registration of marks that are inconsistent with legality and morality. Examples of prohibited marks include names of narcotic substances, racist or Nazi symbols, insults, obscene language, and references to terrorist or criminal organizations.Examples:- A word mark containing “National Institute of Wine” was refused because no such institute exists, misleading consumers into associating the brand with higher authority.
- The mark “PORT OF VARNA” was refused for misleading consumers to associate the goods or services with a state-owned enterprise or the port facility itself, which carries government authority.
- A Mark That Misleads Consumers
Marks must not mislead consumers about the nature, quality, geographical origin, or other characteristics of the goods or services. The Patent Office carefully assesses whether the mark could deceive consumers, even if unintentionally. The mark must not contain false or misleading information that could cause consumer confusion about the product’s characteristics.Example:- The word mark “BLAZING WHITE” for classes covering “paints, varnishes, etc.” was refused. The court ruled that the term “dazzling white” is an abstract expression and does not clearly describe the type, quality, or purpose of the goods.
Understanding the absolute grounds for refusal is essential when applying for trademark registration. It’s important to seek professional advice before submitting your application to ensure that you avoid these pitfalls. Remember, even one of these grounds is enough for the Patent Office to deny your registration.
If you need assistance navigating the trademark registration process or conducting a preliminary risk assessment, feel free to contact us.
