What You Need to Know Before Registering a Trademark
Common Mistakes Start-ups Make - and How to Avoid Them
Why Should I Register a Trademark?
A trademark is what distinguishes your product or service from those of other market participants. It builds brand identity and consumer trust by enabling customers to recognize and choose your product among many similar ones.
A well-recognized trademark is a valuable asset that provides its owner with a competitive advantage in the marketplace. This is why it is essential not only for your trademark to become known to consumers, but also to be protected against unauthorized use by competitors.
Pursuant to the Bulgarian Law on Marks and Geographical Indications (LMGI), the right to a trademark is acquired through registration and belongs to the first applicant. Registration grants the trademark owner the exclusive right to use the trademark, to dispose of it, and to prohibit its use by any third party for identical or similar goods or services.
Nevertheless, many companies, especially start-ups, focus on developing the product or service they offer while neglecting the need to protect the trademark under which it is marketed. The reason is usually a lack of information or an attempt to save on registration costs. However, this can prove costly in the long run.
If, after having invested significant effort in promoting your product, a competitor begins offering the same or a similar product under the same or a similar mark - or, even worse, registers such a mark for that product - you risk not only losing customers but also losing the ability to continue using your unregistered mark.
To avoid this risk, it is essential to register your trademark as early as possible for the goods or services in respect of which it will be used. Registration provides protection against any subsequent registration or use of your mark by another party for identical or similar goods or services. This protection is granted for a period of 10 years and may be renewed indefinitely.
How to Choose a Trademark?
Choosing an appropriate trademark is a critical decision, because if the mark you select does not comply with the statutory requirements or conflicts with earlier registered rights, its registration may be refused or later challenged.
The requirements that a trademark has to comply with are set out in Article 11 of the Law on Marks and Geographical Indications (LMGI), which lists the absolute grounds for refusal of registration, examined ex officio by the Patent Office. First of all, the trademark must be distinctive for the goods or services for which registration is sought and must be capable of being represented in a manner that allows the subject matter of protection to be determined clearly and precisely.
Furthermore, the trademark shall not be descriptive (i.e., describe the goods themselves or their characteristics); consist exclusively of signs or indications that have become customary in everyday language or in established trade practices in relation to the designated goods or services; consist exclusively of the shape of the goods or another characteristic that arises from the nature of the goods themselves, is necessary to achieve a technical result, or gives significant value to the goods; nor can it be contrary to public policy or morality or mislead consumers as to the nature, quality, geographical origin, or other characteristics of the goods or services. A number of other requirements are also provided, such as the prohibition on including state emblems, flags, or other official symbols, as well as official signs and hallmarks indicating control and warranty, etc.
In addition, the trademark should not infringe earlier rights (Article 12 LMGI), as such rights may be opposed, which may result in refusal of registration or subsequent invalidation or revocation of the registration.
To avoid these risks, it is advisable to consult an intellectual property representative for advice and research on earlier rights before filing the application.
The List of Goods and/or Services
Another key issue you need to determine is for which goods and services the trademark will be used. This is important because registration provides protection only for the goods/services for which the mark is registered.
The list of goods and/or services for which the registration is sought is part of the application for the trademark registration and cannot be extended or supplemented after the application has been filed (Article 50(3) LMGI). This means that if you later decide to extend the protection to additional goods or services, such protection can only be obtained through a new registration. For example, if you register a trademark for coffee but later start selling spices under the same mark, the protection will not apply to the spices unless they were included in the application.
That is why I advise my clients to think strategically: when preparing the list of goods and services for which registration will be sought, to consider not only their current products or services but also those they plan to offer over the next five years.
Territory of Protection
It is also important to bear in mind that the protection obtained through registration applies only within the territory for which the trademark is registered. There are different registration systems through which protection with varying territorial scope can be secured:
- National - protection limited to the territory of a single country;
- Regional – e.g. an EU Trade Mark, which, upon filing a single application and paying a single fee, provides protection in all EU member states;
- International Registration - protection in selected countries that are members of the Madrid System.
Your business strategy should take into account where you plan to offer your products or services in order to choose the system that best fits your objectives. It is also advisable to consult a specialist who can explain the options available and the associated costs and guide you towards the option most appropriate for your needs.
Use of the Trademark After Registration
Once registered, the trademark must be genuinely used in the territory where it is registered and in connection with the goods or services for which it is registered. If such use has not begun within five years from the date of registration, or if use has been discontinued for an uninterrupted period of five years, the registration may be revoked, unless there are valid reasons for non-use (Article 21 LMGI).
It is also essential that the trademark owner be able to provide sufficient evidence of genuine use within the relevant period and territory (invoices, labels, advertising and promotional materials, reports, and other documents from which the time, place, and manner of use of the mark in relation to the relevant goods/services can be established).
Monitoring and Active Enforcement After Registration
Another aspect that is often underestimated is the need to monitor and actively enforce against later trademarks or trademark applications that conflict with your already registered mark. This is important to preserve the distinctiveness of your trademark, since under Article 37(1) LMGI, if the proprietor of an earlier mark has tolerated the use of a later mark for five consecutive years while being aware of such use, they lose the right to seek invalidation of the registration or to oppose the use of the later mark, except where the application for registration of the later mark was filed in bad faith.
This means that failing to act in a timely manner may result in the coexistence of the two marks - with all the negative consequences this may have for your business.
Therefore, it is advisable to implement a trademark watch service or entrust a specialist with periodically monitoring new applications.
In Summary
The most common mistakes businesses make in relation to trademark registration are:
At the registration stage: choosing an inappropriate sign, failing to conduct research, limiting the list of goods and services too narrowly, or selecting inappropriate territorial protection.
After registration: failure to use the trademark or to keep evidence of use, missing renewal deadlines, and neglecting monitoring and active enforcement.
Conclusion
Trademark registration is not merely a formality – it is an investment in the security and value of your business. Timely and properly structured registration can save you from significant financial and reputational losses.
If you are considering registration or are already using a trademark without protection, contact us for consultation and assistance. At LVLaw & Mediation, we will help you not only obtain but also maintain solid protection for your brand.
Author: Attorney at Law Lyubka Vasileva-Karapanova
