Trademark protection – from a recommended step to a necessity

In times like today where branding, presentation and web-presence are seen as key to successful business, brand protection is going from a good idea to a necessity. Trademark registration is the first of the reasonable steps to take as we consider the image, substance and direction of our company and brand.

Why is branding important and what benefits does it bring to a business?

There are a number of advantages of protecting your trademark. Undoubtedly, the first thing that comes to mind when talking about a trademark is that it makes a business recognisable. With professionally planned and properly executed branding, it will take our customers a split second to associate a particular logo/sign/slogan with our company.

Of course, branding is a complex process, but even just the registration of an authentic and distinctive trademark and its proper positioning can save our business hundreds of hours of effort and numerous expenses for the presentation of goods or services – the brand will speak for us.

Branding products and services adds value to a business by improving reputation and encouraging people to invest in our brand. Good branding encourages new customers to buy our goods and services and, for our regular customers, cultivates a sense of belonging and trust.

Research shows that 86% of consumers rank authenticity as a key factor when it comes to which brands they like and support (source: Stackla, 20191).

The results of another study, conducted among business owners, suggest that a consistent and targeted branding strategy can increase a company’s revenue by between 10 and 30% on average (Lucidpress, 20212).

The first step to building your own brand is to protect the trademark under which you (will) offer your goods or services.

What protection does trademark registration give?

The right to a trademark includes, first of all, the right of its owner to use it – to designate its goods and services, to place it on advertising and information materials and business papers, to position it on its website, etc.

Interestingly, only the proprietor of a duly registered trademark has the right to place the Latin letter R, enclosed in a circle – ®, in its vicinity.

The most important of the rights conferred by a trademark, however, is the right to prohibit third parties from using in their commercial activities, without our consent, a sign that

  • is identical to our mark and is used for goods/services identical to those offered by us, or
  • is identical or similar to our mark and is used for identical or similar goods/services, thereby creating a likelihood of consumer confusion and association of the foreign mark with our already registered mark, or
  • identical or similar to our mark, even if it is not used for goods or services identical or similar to ours, but our mark already enjoys such notoriety that use of the mark would result in unfair advantage being taken of our distinctive and famous earlier mark.

It is this right, the violation of which may lead to the civil, administrative and criminal liability of the “infringer”, that is the basic advantage of a registered trademark.

It gives us the possibility, when we find that our trademark rights have been infringed, to ask the court to order the cessation of the infringement, the seizure and destruction of the infringing goods, the disclosure of the court’s decision on the infringement found. In this way, we may claim compensation for the material and non-material damage and loss of profit suffered as a result of the infringement.

The Law on Protection of Competition, in turn, formulates imitation as a form of unfair competition and prohibits the use of a mark identical or similar to that of another person in a manner that may cause damage to the interests of the competitor. Where an infringement under this Act is established, where it does not constitute a criminal offence, the Commission for the Protection of Competition imposes a pecuniary sanction of up to 10% of the total turnover for the preceding financial year.

From a criminal law point of view, the use of a trademark in commercial activity without the consent of its owner constitutes a criminal offence punishable by imprisonment for up to five years and a fine of up to five thousand leva.

How do I register a trademark?

Trademark rights are acquired by registration with the relevant intellectual property office in the market in which the goods or services are to be marketed. For Bulgaria, this is the Bulgarian Patent Office. However, if we are planning international development, we can protect our trademark at Community and even international level with just one registration.

Whatever protection we choose, we should consider what our trademark must look like to be eligible for registration. A trade mark may consist of words, letters, numbers, drawings, figures, the shape of the goods or their packaging, a combination of colours, sound marks or any combination of such marks. It should, in general, be capable of distinguishing the goods or services offered by us from those of others and be capable of being represented graphically.

While it is never too early to protect your brand, you should still be clear about the area in which you will be doing business – what goods and/or services you will be offering to your customers. Under the Nice Classification, there are 45 classes of goods and services from which we can choose and outline the scope of protection.

If a trademark is successfully registered, it is protected for 10 years from the filing of the application. The registration may be renewed indefinitely for further periods of ten years. In view of the wide range of rights and advantages conferred by a trade mark, the legislator has provided for a period of 5 years from the date of registration of the trade mark in which to actually start using it. Otherwise, the registration may be revoked.

1   https://stackla.com/resources/reports/the-consumer-content-report-influence-in-the-digital-age/

2   https://www.lucidpress.com/pages/landing/State-of-Brand-Consistency/thank-you?submissionGuid=5efbd0df-a9d0-4dfd-8c23-bd4fcd38a293

Author: Lily Stefanova, Attorney-at-law