Bulgaria: No Proof of Malice, No Bad Faith

Sep 24 2012 - 15:29

The Sofia City Court (SCC) has recently issued a decision stating that the Bulgarian producer and importer of canned fruit and vegetables Misota did not act in bad faith when filing the trademark application MIRELA (combined application No. 91118; November 9, 2006). The SCC decision entered into force on May 16, 2012.

The SCC rejected the action filed by Tengelmann Warenhandelsgesellschaft KG, doing business as the Tengelmann Group, on the grounds of Article 26, Paragraph 3, item 4 of the Bulgarian Law on Marks and Geographical Indications (LMGI).

The plaintiff, a German-based multi-sector retailer present in much of Europe, is the owner of the international registration (IR) MIRELLA (No. 849083; word mark), registered for goods in IC 32, namely fruit syrups for making beverages.

In 2006, the defendant applied for the national trademark registration MIRELA and the trademark was registered in August 2010 for goods and services in IC 29, 30, 31, 32, namely beer, mineral and aerated waters.

During the legal proceedings, an expert concluded that there is a similarity between the marks in question, which creates a likelihood of confusion in relation to IC 32 only.

However, as the plaintiff failed to prove that the defendant was aware the plaintiff had exclusive rights over the trademark in question, the SCC ruled in favor of the defendant. The decision was based on the fact that bad faith requires applicant’s knowledge of a prior trademark. The Bulgarian civil law states that bad faith implies malice and is expressed in deliberately illegal behavior.

According to the ruling, the reputation of the plaintiff’s marks in different countries does not serve as evidence that they enjoy reputation in Bulgaria. Moreover, the mark was not registered in Bulgaria at the time the defendant filed the application.

By: Valeri Penev

For more information, please contact Valeri Penev at our Bulgaria office.

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