RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q2/BGR/1
26 October 1998
(98-4165)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION ON TRADEMARKS, GEOGRAPHICAL
INDICATIONS AND INDUSTRIAL DESIGNS
Bulgaria1
The present document reproduces the introductory statement made by the delegation of
Bulgaria, the questions put to it and the responses given in the review of legislation at the Council's
meetings of 12 May and 16 July 1998.2,3
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I. INTRODUCTORY STATEMENT
In the area of trademarks, industrial designs and geographical indications the Law on
Trademarks and Industrial Design has been in force since 1968.  The law provides for protection of
the above stated objects of intellectual property which complies with the main requirements for
protection as stipulated in Part II, Sections 2, 3 a nd 4 of the TRIPS Agreement.  With a view to ensure
harmonization with the requirements of the legislation of the European Communities and their
member States and also with the provisions of the TRIPS Agreement, the competent Bulgarian
authorities have elaborated a Draft Law on Tradem arks and Geographical Indications and a Draft Law
on Industrial Designs.  The enactment of the two draft laws is pendent.
II. REPLY TO QUESTION FROM JAPAN
Please explain by referring to specific provisions in the legislation of your country how textile
designs are protected in conformity with Article 25.2 of the TRIPS Agreement.  Moreover, please
explain your system or practice with regard to cost, examination or publication ensuring that theopportunity to seek and obtain protection for textile designs is not unreasonably impaired.
The Law on Trademarks and Industrial Designs stipulates that the protection of textile designs
is provided through their registration in the Pate nt Office.  The procedure for their registration is
identical to the procedure for the registration of ot her types of industrial designs. It includes the
examination of their novelty and industrial application.  The cost, examination and publication are inthe amount that do not unreasonably impair the opportunity to seek and obtain protection.
                                                     
1 As regards laws and regulations relevant to the areas of trademarks, geographical indications and
industrial designs as notified by Bulgaria under Article 63.2 of the Agreement, reference is made to documentsIP/N/1/BGR/1 and IP/N/1/BGR/I/1.
2 The minutes of these meetings can be found in documents IP/C/M/18 and 19.
3 The follow-up questions from the EC to their initial questions 4, 5 and 12 were posed after these
meetings.  An addendum to the present document reproducing Bulgaria's answers to these follow-up questions
will be circulated once Bulgaria has provided these responses.IP/Q2/BGR/1
Page 2
According to Article 3 of the Regulation on the Tariff of Fees Collected by the Patent Office
of the Republic of Bulgaria (State Gazette No. 53 of 4 July 1997) the applicants, who may be the
authors, small and medium-sized enterprises, st ate education institutions and academic scientific
research organizations shall pay fees in the amount of 50 per cent.
III. REPLIES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND 
THEIR MEMBER STATES
1. Article 2 of the Law on Trademarks and Industrial Designs defines trade and service marks
"[ … ] as to distinguish them from goods or services  of the same kind [ … ]".  Please explain how this
complies with Article 15.1 of the TRIPS Agreement which does not contain such a condition but
describes a trademark as a sign "[ … ] distinguishing the goods or services of one undertaking from
those of other undertakings [ … ]".
The provisions of Article 2 of the Law on Tr ademarks and Industrial Designs, which contain
the condition for the goods and services to be of the "same kind", is not in contradiction with
Article 15.1 of the TRIPS Agreement.  Both provisions define trademarks and service marks as signs
distinguishing the goods or services of one undertaking from those of other undertakings.
2. Article 3 of the Law on Trademarks and Industrial Designs provides that "trademarks and
service marks may consist of words or images, and they may be graphic, in relief, sonorous or
combined".  Please explain how this complies with Article 15.1 of the TRIPS Agreement which refers
to personal names, letters, numerals, figurative el ements, combinations of colours as well as any
combinations of such signs.
The provision of Article 3 of the Law on Trademarks and Industrial Designs is one of a
general nature and therefore it does not contain an exhaustive list of the signs that may be registered
as marks, and does not exclude the possibility of registration of the marks envisaged in Article 15.1 ofthe TRIPS Agreement.
3. Please explain whether and how Bulgarian legisl ation provides for protection of signs which
are not inherently capable of distinguishing the relevant goods or services but which have acquired
distinctiveness through use (Article 15.1 of the TRIPS Agreement).
The Law on Trademarks and Industrial Designs does not contain any special provision
concerning the registration of marks which are not inherently capable of distinguishing the relevant
goods or services but which have acquired distinctiveness through use.  However, the Patent Office,
based on provisions of the Paris Convention which is part of the national legislation, grants protection
of such marks provided that there is sufficient proof of the acquired distinctiveness of the mark.
4. Article 15 of the Law on Trademarks and Industrial Designs regulates the right of priority in
cases of trademarks exhibited at official or official ly recognized international exhibitions.  The Article
is silent on the question of "temporary protection" on such occasions as required by Article 2 of the
TRIPS Agreement in conjunction with Article 11 of the Paris Convention.  Please explain.
Article 11 of the Paris Convention obliges its member states to grant temporary protection to
industrial property objects, including trademarks, exhibited at official or officially recognized
exhibitions, but it does not define any concrete means for that.  Temporary protection under Article 15
of the Law on Trademarks and Industrial Designs is granted by allowing the possibility to claim the
right of priority as from the date of exhibiting the mark, under certain conditions as defined by theLaw.IP/Q2/BGR/1
Page 3
[Follow-up question from the EC]
Please specify the period of time for which temporary protection is granted.[ … ]
4
5. Please explain whether and how Article 16 ("Ri ghts conferred") and Article 2 of the TRIPS
Agreement in conjunction with Article 10bis ("Unfair Competition") of the Paris Convention are
implemented by Bulgarian legislation.
Article 16.1 of the TRIPS Agreement corresponds to Article 19 of the Law on Trademarks
and Industrial Designs.  The second paragraph of this provision is implemented in the Bulgarianlegislation through the direct application of Article 6 bis of the Paris Convention, which is part of the
national legislation.  Article 4(d) of the Law on Tr ademarks and Industrial Designs is in compliance
with Article 16.3 of the TRIPS Agreement.
The Law on the Protection of Competition of 29 April 1998 contains provisions concerning
unfair competition in the use of trademarks.  Article 33.2 thereof prohibits the use of a Firm name,
trademark or distinguishing design being identical with or similar to those of other persons, in a
manner that may prejudice the interests of the competitors and/or the users.
[Follow-up question from the EC]
Please clarify whether a well-known mark is protected against its use for goods or services
which are not similar.  If so, what are the conditions, if any?
[ … ]
5
6. Article 21 of the Law on Trademarks and Industrial Designs deals with the transfer and
assignment of the use of a trademark.  Please clar ify whether under Bulgarian legislation the transfer
and assignment of the trademark as such is permitted and whether such an action requires that the
business to which the trademark belongs is transfer red as well (Article 21 of the TRIPS Agreement).
According to the practice of the Patent Office, a trademark may be also transferred separately
from the business it belongs to.
7. Article 19 of the TRIPS Agreement provides t hat valid reasons, i.e. circumstances arising
independently of the will of the owner of the trademark, e.g. import restrictions, can be raised to
justify non-use.  Article 23 of the Law on Trademarks and Industrial Designs only provides that atrademark shall be cancelled "if the mark has not been used, or has not been offered for use through
advertisements in the press, for a period of five years".  Please explain whether and how this complies
with the TRIPS Agreement.
Article 23 of the Law on Trademarks and Industrial Designs does not provide for the
acceptance of circumstances arising independently of the will of the owner of the trademark and
representing an obstacle to its use.  However, according to the practice of the Patent Office, such
circumstances should not affect the mark use requirement.
8. Article 38 of the Law on Trademarks and Industrial Designs does not contain any reference
to the "reputation" of the goods as foreseen in the definition of a geographical indication of
                                                     
4 See footnote 3 above.
5 See footnote 3 above.IP/Q2/BGR/1
Page 4
Article 22.1 of the TRIPS Agreement.  Against this background, please explain how this complies with
the TRIPS Agreement.
The Law on Trademarks and Industrial Designs does not contain provisions for the protection
of geographical indications and does not meet the requirements of this part of the TRIPS Agreement.The legal definition of appellations of origin (as it is in the Lisbon Agreement) is provided for in
Article 36 of the Law on Trademarks and Industrial Designs.  Provisions on protection of
geographical indications are included in the Draf t Law on Trademarks and Geographical Indications,
6
and they are in compliance with the requirements of Articles 22-24 of the TRIPS Agreement.
9. Article 44 of the Law on Trademarks and Industrial Designs provides that "trademarks
comprising also an appellation of origin may only be registered in cases where the right to the use ofsuch appellation is justified".  Please explain how this complies with Articles 22.3 and 23.2 of the
TRIPS Agreement.
The provisions of Article 44 of the Law on Trademarks and Industrial Designs are not in
contradiction with Article 22.3 and Article 23.2 of the TRIPS Agreement.  It concerns a specific case– the registration of "multielement (complex) marks", i.e. labels, where one of the elements is an
appellation of origin, excluded from legal protection.  It may be included in the label mark provided
that the applicant is registered as a user of the appellation of origin.  Where this requirement is not
met, the registration of the mark shall be refused or, if the mark has already been registered, the
registration shall be deleted as unlawful under the provisions of Article 23(a) in connection withArticle 44 of the Law on Trademarks and Industrial Designs.
10. Please clarify how Bulgarian legislation deals with homonymous geographical indications
for wines.
The Bulgarian legislation does not contain provisions which set out the practical conditions
under which the homonymous geographical indications will be differentiated from each other.
11. Please explain whether and how textile designs are protected under Bulgarian legislation.
There is no special protection – the Law on Trademarks and Industrial Designs provides the
same protection for textile designs as the protection for industrial designs.  Article 24 of the Lawcontains the following legal definition of industrial designs:  an industrial design may be any new
external rendering of a product, consisting in the particularity of the form, design, ornaments,
combination of colours and the like, that may be protected as industrial design with regard to new
combinations.
12. Please explain whether and how Bulgarian legislation implements Article 26.1 of the TRIPS
Agreement.
The owner of a protected industrial design may seek, when his rights are infringed, penal or
civil prosecution of the infringer.  According to Article 52 of the Law on Trademarks and Industrial
Designs goods, imported or manufactured in the territory of the Republic of Bulgaria, and unlawfully
bearing a foreign trademark, shall be subject to seizure in favour of the State.  The offence shall be
established in an official document drawn up by th e controlling bodies of the Patent Office after they
have been informed by the owner about the infringement.
                                                     
6 See the introductory statement under section I above.IP/Q2/BGR/1
Page 5
[Follow-up question from the EC]
Please clarify whether the owner of a protected industrial design has the right to prevent
third parties not having the owner's consent from  selling articles bearing or embodying a design
which is a copy, or substantially a copy, of the protected design.
[ … ]7
13. Please clarify the term of protection for industrial designs under Bulgarian law.  Article 29 of
the Law on Trademarks and Industrial Designs seem s to limit the term of protection to five years,
which would be contrary to Article 26.3 of the TRIPS Agreement, which provides for a term of
protection of at least ten years.
Article 29 of the Law on Trademarks and Industrial Designs provides that the term of
protection for industrial designs is five years wi th no possibility for extension, thus not complying
with the requirement of Article 26.3 of the TRIPS Agreement.  In the Draft Law on Industrial Designs
this requirement is met – it provides for a five years term of protection with a possibility for extensionwith four further periods of five years, i.e. the to tal term of protection is 25 years from the filing date
of the application for registration.
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7 See footnote 3 above.