Do we need to spend money to enter the new data into the state register?
In response to numerous inquiries with reference to the obligation to notify and entry the change in a trademark [TM] proprietor’s name and address and with reference to the use of spending money to this end, the main points and dependencies between the right in a (registered) trademark and the compliance/non-compliance with the said obligation will be highlighted herein.
Notwithstanding that the topic, the conclusions and the recommendations herein refer to the trademarks, they refer also to the analogous statutory obligations for notification and registration of the changes in the proprietor’s information as far as the other object matter of industrial property is concerned, including patents, utility models and industrial design.
The obligation to notify the responsible authority – Bulgarian Patent Office [BPO], and to enter the changes in the official register, is one of the obligations (together with the obligation to use the TM) corresponding to the right in the trademark, explicitly provided for by Article 40 of the Marks and Geographical Indications Act [MGIA] 1
MGIA – Changes in the Name and Address of the Proprietor
Чл. 40. (1) (Am. S.G. No. 19/2010, in force as from 10 June 2010) The proprietor of a mark shall notify the Patent Office of any change in his name or address within three months after the change occurs.
(2) The change shall be recorded in the State Register at the request of the proprietor.
(3) All documents of which the proprietor is to be informed shall be sent to the most recent address recorded in the State Register.
Based on this wording of the said provision the Administration deduces a legal obligation to record ANY change in the information, including changes in the legal form of the entity; for example a Sole Owned Limited Liability Company is transformed into a Limited Liability Company 2.
In fact this means that if, due to the admission of a new partner, a Sole Owned Limited Liability Company is transformed into a Limited Liability Company and if one week later a change in the main registered office of the company is registered and in another week a change in the trade name (the name under which the merchant shall carry on its business and under which it shall sign, Art. 7, para 1, Commerce Act) is registered, then in such a case the Administration will demand separate registration of each of the three circumstances (respectively, payment of fees for each record separately).
IMPORTANCE OF REGISTRATION
- Undoubtedly, the exact identification of the proprietor is one of the safeguards for the main function of trademarks according to the legal definition in Art. 9, para 1, MGIA, namely: “… capable of distinguishing the goods or services of one person from those of other persons”.
- A possible (and practically occurring) consequence of the incorrect identification of the proprietor is the conflict between owned marks, e.g. in cases of outstanding proceedings under the MGIA prior to its amendment effective as from March 2011 in which the examination opposes owned (owned by the Applicant) earlier marks against the mark applied for 3.
- It is possible that, due to discrepancies in the information about the proprietor, the enjoinment of some rights might be in fact restricted; e.g. acknowledgment of the right of priority as of the date of a preceding application for a registered mark (Art. 34, para 2, MGIA) or the right to international registration of a national trademark (Art. 70, MGIA) because in both cases there is a common requirement the owner of the earlier right to be the same person.
- Practically there are also expensive problems related to ascertaining infringements against (one’s own) rights such as actions undertaken by the customs authorities with reference to border control measures and administrative inspections (Art. 81 and the following, MGIA) or proceedings relating to the prohibition of unfair competition (Imitation, Art. 35, Protection of Competition Act) and even criminal proceedings (Art. 172b, Penal Code) which may be initiated against the proprietor himself because formally the rights are owned by the person identified on the basis of the most recent entries in the Patent Office Registry while in the meantime the actual information (the data of the mark proprietor) has been changed without having recorded these changes on the PO Register.
- A negative consequence of the incompliance with the obligation to notify and record changes in the information about the proprietor might be the possibility to request the following:
- cancellation of the registration due to failure to comply with the obligation to use the mark (Art. 25, para 1, item 1 read in combination with art. 19, MGIA)
- termination of the registration validity due to dissolution of the legal entity which owns the trademark without succession (Art. 23, para 3, MGIA).
Although it seems simple from points of fact and points of law to prove that the owner and the user of the mark are the same person, we often witness cancellation/revocation/termination of registration due to omissions of any kind, formal or procedural (e.g. failure to observe statutory terms or lack of evidence), but most often due to non-involvement of the proprietor in the proceedings – see the effect of registration with reference to exchange of information (item 7).
- Probative value: the entries in the Register are considered to be true unless the opposite is proved (reverse burden of proof).
- Function related to the exchange of information between the administrative authority and the proprietor (e.g. the proprietor is notified about the proceedings referred to in item 4 above at the most recent address recorded).
CONCLUSIONS AND RECOMMENDATIONS
In view of the above, there is no doubt that the requirement current information about the proprietor to be recorded in the PO Register is natural and necessary. Failure to do the registration itself (within the statutory term as provided for) does not automatically result in termination of rights, yet, as it is with the management of any other assets, in this instance it is preferable to do it in a timely manner.
The current legislation and the practices relating thereto place an excessive administrative burden upon the business entities with reference to the said obligation. Optimization is possible on the basis of forms such as the ones recommended by the Office for Harmonization in the Internal Market (OHIM) or by the International Bureau of the World Intellectual Property Organization (WIPO):
– The registration should be effected on the basis of one application and one fee (if needed) and it should refer to all the objects (applied for and registered marks) owned by the respective person requesting registration; and why not, it might apply to the objects with reference to which the said person has another capacity, such as inter alia a licensee or a pledgee creditor.
The technical possibilities to carry into effect this proposal are not the subject-matter of this presentation, yet it should be easier and cheaper in the long run to do so (let’s say by way of a relational database) instead of administering separately the entries about each object, taking into account the statutory requirement the register to be kept “on the basis of an electronic database managed by an information system” (Art. 7, MGIA).
– In cases of more than one subsequent changes in the proprietor’s information, only the most recent (current) data should be recorded provided that the notification and the request for registration have been made within the statutory 3-months term. Additional fees or a fine might be applied in cases where the statutory term has expired with reference to any of the changes in the said sequence.
- The name of the Act is officially translated as “Law on Marks and Geographical Indications” (LMGI) ↩
- According to the previous version of the Tariff of Fees Collected by the Patent Office, the fee for recording a change in the information about the proprietor used to be BGN 30.00 and the fee for recording transfer of rights used to be BGN 80.00. The applications for recording changes such as transformation from a Limited Liability Company into a Sole Owner Limited Liability Company or from a Joint Stock Company into a Sole Owner Joint Stock Company were refused because of the position, that these changes are actually “transfer of rights”, therefore to record such changes, а much higher fees were required from the authority.
According to the current Tariff the fee for recording a change in the name and address of the proprietor and the fee for transfer of rights are the same (BGN 80.00) and practically the refusals to record on such grounds are gone. ↩
- Such ex officio refusals occur frequently and lead to serious expenses when they are related to unupdated entries in the Register under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto since the legislations of a lot of contracting countries provide for examination on the merits, including in cases of relevant grounds. ↩