RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/104
16 July 1998
(98-2831)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Replies from Bulgaria to Questions posed by the European Communities
and their Member States and the United States1
The following communications, dated 9 July 1998, have been received from the Permanent
Mission of Bulgaria.
_______________
I. REPLIES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND
THEIR MEMBER STATES
A. TRADEMARKS AND SERVICE MARKS
1. Article 2 of the Law on Trademarks and Industrial Designs defines trade and services
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 services 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, numera ls, figurative elements, 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 of
the TRIPS Agreement.
                                                     
1 Document IP/C/W/101.IP/C/W/104
Page 2
3. Please explain whether and how Bulgarian legislation provides for protection of signs
which are not inherently capable of distinguishing the relevant goods or services but which have
acquired distinctiveness through use (A rticle 15.1 of the TRIPS Agreement).
The Law on Trademarks and Industrial Designs does not contain any special provisions
concerning the registration of marks which are not inherently capable of distinguishing the relevantgoods 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 officially recognized international
exhibitions.  The Article is silent on the questi on of "temporary protection" on such occasions as
required by Article 2 of the TRIPS Agreement in conjunction with Article 11 of the ParisConvention.  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 the
Law.
5. Please explain whether and how Article 16 (" Rights conferred") and Article 2 of the
TRIPS Agreement in conjunction with Article 10 bis ("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 Bulgarian
legislation 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 Trademarks 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 interest of the competitors and/or the users.
6. Article 21 of the Law on Trademarks and Industrial Designs deals with the transfer and
assignment of the use of a trademark.  Please clarify whether under Bulgarian legislation the
transfer and assignment of the trademark as su ch is permitted and whether such an action
requires that the business to which the trademark belongs is transferred 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 that a valid reason, 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 a trademark shall be cancelled "if the mark has not been used, or has not been
offered for use through advertisements in the pre ss, for a period of 5 years".  Please explain
whether and how this complies with the TRIPS Agreement.IP/C/W/104
Page 3
B. GEOGRAPHICAL INDICATIONS
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 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,
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 I ndustrial Designs provides that "trademarks
comprising also an appellation of origin may on ly be registered in cases where the right to the
use of such appellation if 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 "multi-element (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.
C. INDUSTRIAL DESIGNS
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 Law
contains 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 beIP/C/W/104
Page 4
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.
13. Please clarify the term of protection for industrial designs under Bulgarian law.  Article
29 of the Law on Trademarks and Industrial Designs seems to limit the term of protection to
five years which would be contrary to Article 26.3 of the TRIPS Agreement, which provides fora term of protection of at least ten years.
Article 29 of the Law on Trademarks and Industrial Designs provides the term of protection
for industrial designs as five years with 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-year term of protection with a possibility for extension with
a further four five-year periods, i.e. the total term of protection is 25 years from the filing date of the
application for registration.
II. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
1. Please explain how national treatment, as required by TRIPS Article 3 (generally, with
respect to all copyrights and neighbouring rights) and Article 9.1 (incorporating Berne Article
5(1)), is afforded with respect to the distribution of blank tape levies under Article 26 of the
Bulgarian Law on Copyright and Neighbouring Rights.
Article 26 of the Law on Copyright and Neighbouring Rights is in compliance with TRIPS
Articles 3 and 9.1 (incorporating Article 5(1) of the Berne Convention).
According to Article 26.1 of the Law on Copyright and Neighbouring rights the authors of
works recorded on sound or video carriers, the performers whose performances have been recorded
and the producers of such recordings are entitled to compensation whenever their recordings arerecorded for personal use.  The compensation to be paid by the persons who manufacture or import
blank audio or video carriers amounts to five per cent  of the manufacturer's price, respectively - of the
customs dutiable value of imported carriers.
The compensation payments are made to a society for collective management of copyrights
(as such the Minister of Culture of the Republic of Bulgaria has designated by an Ordinance the
"Musicauthor" Society), which distributes them among the organizations representing individual
categories of copyright proprietors.  These collective societies distribute the compensation sums
among their members, as regards the royalties fo r the foreign authors – they pay the respective
compensation sum to a foreign society on the grounds of contracts for mutual representation.
2. Does Bulgaria apply the "rule of the shorter term" to phonograms and performances
from other WTO Members?  If so, please explain how you justify such action under TRIPS
Article 4.
According to Article 102 of the Law on Copyright and Neighbouring Rights, the rights of
foreign performing artists and producers of phonograms for which a national treatment is not applied,
shall be protected under the treaties relating to rights neighbouring to copyright to which the Republic
of Bulgaria is a party:  the International Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations (the Rome Convention 1961) and the Convention for the
Protection of Producers of Phonograms against Unau thorized Reproduction of their Phonograms (the
Geneva Convention 1971).IP/C/W/104
Page 5
3. Please explain whether and ho w Bulgaria protects against both the direct and indirect
reproduction of phonograms as required by TRIPS Article 14.2, including by digital
transmission in the context of subs cription or interactive services.
As required by Article 14.2 of the TRIPS Agreement, Article 86 of the Law on Copyright and
Neighbouring Rights provides for the exclusive right of the producer to grant a permission for:
(a) the reproduction and distribution of phonograms;
(b) the import and export of phonogram copies;
(c) public performance and broadcasting by wireless, cable or other technical means.
According to Article 76.1 of the Law on Copyright or Neighbouring Rights and in compliance
with Article 14.1 of the TRIPS Agreement, performing artists have the exclusive right to permit for
compensation:
(a) the broadcasting of own performance by wireless, cable or other technical means, as
well as a sound or video recording of the performance, the reproduction of the
recording on audio or video carriers and their distribution;
(b) public performance, broadcasting by wireless, cable or other technical means of such
recordings.
Holders of the above-mentioned rights can seek protection against the infringement of those
rights under the Civil Code procedure and in parallel, when the prerequisites which are required by
law are available under the Administrative and/or Criminal Code procedure.
4. Please confirm that Section 6 of the Additional Provisions to the Copyright Law
provides full retroactive protection to works, phonograms and performances from other WTO
Members, as required by TRIPS Articles 9.1, 14.6 and 70.2, each of which incorporate byreference or rely upon Berne Article 18.  Please give the date back to which such protection
extends with respect to each category of subject-matter.
Paragraph 6.1 of the Transitional and Final Provisions of the Law on Copyright and
Neighbouring Rights provides that this Law also applies to works, performances, phonograms, video
recordings, radio and television programs made or performed prior to the entry into force of this Lawunless the respective protection periods have expired.
As a general rule, the copyright protection lasts for 50 years counted as of the beginning of
the year following the year of author's death (Article 27.1 of the Law on Copyright and Neighbouring
Rights) and provides for variations of the starting-point for copyright protection for an exhaustive list
of hypotheses:
- collections, etc. works under Article 30 of the Law on Copyright and Neighbouring
Rights are to be protected as of their publication;
- films or other audio-visual works under Article 29 of the Law on Copyright and
Neighbouring Rights are to be protected as of being made available to the public;
- works having two or more authors under  Article 27.2 of the Law on Copyright and
Neighbouring Rights – the term specified in Article 27.1 of the Law on Copyright and
Neighbouring Rights commences as from the death of the last surviving author;IP/C/W/104
Page 6
- anonymous or pseudonymous works under Article 28 of the Law on Copyright and
Neighbouring Rights are to be protected as of first being made available to the public.
In respect of related rights, the protection term is also 50 years.  It commences as follows:
- under Article 82 of the Law on Copyright and Neighbouring Rights – performing
artists – as of the beginning of the year following the year in which the performance
recording has been published, respectively, as of the beginning of the year following
the year in which the first performance was held;
- under Article 89 of the Law on Copyright and Neighbouring Rights – producers of
recordings – as of the beginning of the year following the year in which the
phonogram has been published and if it was not published – as of the beginning of theyear following the year of its recording;
- under Article 92 of the Law on Copyright and Neighbouring Rights – broadcasting
organizations – as of the beginning of the year following the year in which the first
broadcasting has taken place.
In accordance with Articles 14.2 and 14.5 of the TRIPS Agreement in relation to Article 70.2
of the TRIPS Agreement and Article 18 of the Berne Convention, the Republic of Bulgaria provides
protection for works, performances and phonograms of authors from other WTO Members for a
50-year term preceding the date of Bulgaria's accession to the WTO.
A drafting is underway for amending the La w on Copyright and Neighbouring Rights.  It
aims to provide for a 70-year term of copyright protection; for film products the protection will
commence as of the beginning of the year following the year of the death of the last survived among
the director, screenplay writer, cameraman, dialogue-writer and music-writer (if the latter has created
the music especially for the film product concerned).  Rights related to copyright will be introducedfor film producers.
5. Please explain how Bulgaria complies with Article 14.4 of TRIPS regarding rental rights
for producers of phonograms.
Phonogram producers' rental rights are stipulated in Article 86.1.1 in relation to paragraph 2.4
of the Transitional and Final Provisions of the Law on Copyright and Neighbouring Rights in
compliance with Article 14.4 of the TRIPS Agreement.
In particular, Article 86.1.1 and Article 86.2 of the Law on Copyright and Neighbouring
Rights provide for the producers the right to permit distribution of their phonograms.  At the same
time paragraph 2.4 of the Transitional and Final Provisions defines renting as a form of distribution of
a work.
The Law on Copyright and Neighbouring Rights in compliance with TRIPS Article 14.4
provides for rental rights protection for producers of phonograms.
6. Article 25 of the Bulgarian Copyright Law provides an exemption for the reproduction
for personal use of published works other th an computer software or architectural designs.
Please explain how this provision complies with TRIPS Article 13 and Berne Article 9(2).
The permission under Article 25 of the La w on Copyright and Neighbouring Rights is in
compliance with Article 13 of the TRIPS Agr eement and Article 9.2 of the Berne Convention.IP/C/W/104
Page 7
Article 25 envisages hypotheses of free copying of already published works only for personal
use.  This is a special case which does not conflict with the normal exploitation of the work and does
not unreasonably prejudice the legitimate interests of the right holders as required by Article 13 of the
TRIPS Agreement and Article 9.2 of the Berne Convention.
Article 26 of the Law on Copyright and Neighbouring Rights specifies the cases in which the
authors of already recorded works, the performing artists and phonogram producers have the right to
compensation payments whenever their recordin gs are re-recorded (copied) for personal use.
7. Article 23.7 of the Bulgarian Copyright Law provides an exemption for reproduction by
copier for educational purposes.  Please explain how this provision complies with TRIPS
Article 13 and Berne Article 9(2).
The exemption provided for in Article 23.7 of the Law on Copyright and Neighbouring
Rights Article 23.7 is in compliance with Article 13 of the TRIPS Agreement and Article 9.2 of theBerne Convention.  It applies to reproduction by copier, or other similar means of parts of published
works or of small works, as well as the recordings of parts and other audio-visual works on audio or
video carriers by educational institutions and their use for educational purposes.  Article 10.2 of the
Berne Convention contains similar provisions.
As pointed out in the reply to question 6 above, this special case does not conflict with the
normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the
right holder, as required by Article 13 of the TRIPS Agreement and Article 9.2 of the Berne
Convention.
8. Articles 21 and 22 of the Bulgarian Co pyright Law provide that in certain
circumstances broadcasts may be retransmitted by  cable and satellite without compensation to
the copyright owner.  Please explain how this complies with Berne Article 11 bis(2), as
incorporated into TRIPS by Article 9.1.
The provisions of Articles 21 and 22 of the Law on Copyright and Neighbouring Rights are in
compliance with the provisions of TRIPS Article 9.1 (incorporating Article 11 bis(2) of the Berne
Convention).
In particular, Article 21 of the Law on Copyri ght and Neighbouring Rights provides that the
permission for wireless broadcasting of a work shall include a permission to broadcast the work,
solely under the condition that the transmission is  conducted simultaneously with the broadcasting in
an unchanged form and does not extend beyond the territory for which the broadcasting right has been
granted.  In all other cases, the author has the right to equitable remuneration for the right to cable
broadcasting.
On the other hand, Article 22 of the Law on Copyright and Neighbouring Rights provides that
the permission to broadcast a work by wireless means includes the right to transmit the work by signal
to a telecommunications satellite permitting its reception through an intermediary organization
different from the transmitting authority.  This is only subject to the author's authorization of the
receiving organization to broadcast the work by wireless means, to transmit it by cable or another
technical means, or to present it to the public by any other means.  The receiving organization has topay remuneration to the author for broadcasting of the work via a signal to the telecommunications
satellite.
__________