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NATIONAL PRACTICE ON CTM CONVERTION

PATENT OFFICE OF REPUBLIC OF BULGARIA. NATIONAL PRACTICE ON CTM CONVERTION. Introduction.

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NATIONAL PRACTICE ON CTM CONVERTION

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  1. PATENT OFFICE OF REPUBLIC OF BULGARIA NATIONAL PRACTICE ON CTM CONVERTION

  2. Introduction The provision in Article 108 (1) Council Regulation (EC) № 40/94 on the Community trade mark (CTMR) is one of the corner-stones of the CTM system in its aspect of co-existence with national TM systems. PATENT OFFICE OF REPUBLIC OF BULGARIA

  3. Introduction Namely, the proprietor of no longer existing CTM application or registration canrequest conversion of his CTM applicationor registration into a nationalTM application with respect to: • Member States designated in the request • all or some goods and services PATENT OFFICE OF REPUBLIC OF BULGARIA

  4. Grounds for conversion Conversion is possible only when: • CTM application is: • withdrawn • finally refused • CTM registration is: • finallyrevoked • declared invalid • surrendered or not renewed PATENT OFFICE OF REPUBLIC OF BULGARIA

  5. Conversion basic principles • The request for conversion becomes a national TM application, under the national law of the designated offices. • A national application, resulting from a CTM conversion request carries with it its Community dates: filling date, priority date as well as seniority date, where applicable. PATENT OFFICE OF REPUBLIC OF BULGARIA

  6. Conversion basic principles • Each designated office ought to: • examine whether conversionis excluded pursuant to Article 108 (2) CTMR (Article 110 (1) CTMR) • treat and examine the ensuing trade mark application in the same way as a normal national trade mark application. PATENT OFFICE OF REPUBLIC OF BULGARIA

  7. THE PRACTICE OF BULGARIAN PATENT OFFICE (BPO) ON CTM CONVERTION PATENT OFFICE OF REPUBLIC OF BULGARIA

  8. Conversion in Bulgarian legislation As per Bulgarian legislation, conversion is particularly regulated by: LAW ON MARKS AND GEOGRAPHICAL INDICATIONS (BG-TML) CHAPTER IVa – “COMMUNITY MARK” Article 72c (in force as of the date of accession of the Republic of Bulgaria to the EU) PATENT OFFICE OF REPUBLIC OF BULGARIA

  9. Conversion in Bulgarian legislation Article 72c “Conversion of a Community Mark Into a National Application”: “(1) The applicant for or proprietor of a Community mark may request the conversion of his Community mark application or Community mark into a national mark application for registration...” PATENT OFFICE OF REPUBLIC OF BULGARIA

  10. Time limit Within two months, counted from the day BPO receives the notification about CTM conversion, the proprietor of ensuing applicationcan take procedural steps. (Article 72c (2) BG-TML) PATENT OFFICE OF REPUBLIC OF BULGARIA

  11. National requirements Within this time limit,the proprietor of converted CTM ought to meet the following national requirements, in order his application to be validand subject to further examination. PATENT OFFICE OF REPUBLIC OF BULGARIA

  12. National requirements • Legal representation Persons, who have no residence or head office in the Republic of Bulgaria shall conduct business with the BPO through a domestic industrial property agent. (Article 3 (2) BG-TML PATENT OFFICE OF REPUBLIC OF BULGARIA

  13. National requirements • Translation The filing of standard national applicationform in Bulgarian language is considered to be a translation of the conversion. Suchapplication must contain identical data as the conversion request. (Article 72c (2) (i) BG-TML) PATENT OFFICE OF REPUBLIC OF BULGARIA

  14. National requirements • Graphic representations of the mark Except in cases of word mark, graphic representation shall be applied. Where color is claimed, the mark representation shall be in color. (Article 72c (2) (ii) BG-TML) PATENT OFFICE OF REPUBLIC OF BULGARIA

  15. National requirements • Fee payment BPO collects application and examination fees under the FeeTariff, approved by the Council of Ministers. (Article 72c (2) (iii) BG-TML) PATENT OFFICE OF REPUBLIC OF BULGARIA

  16. National requirements Where above-mentioned requirements are not met within the fixed time-limit, the request for conversion is deemed withdrawn. However, there are no such special provisions in Bulgarian national law. PATENT OFFICE OF REPUBLIC OF BULGARIA

  17. Examination The ensuing application keeps the original filing date, priority or where appropriate seniority date, of the CTM application. BPO treats this application, as a normal national TM application and examines: • formalities • absolute and relative grounds for refusal PATENT OFFICE OF REPUBLIC OF BULGARIA

  18. Figures and facts 45 27 18 3 3 to 22.04.2008

  19. Figures and facts As the statistics shows, proprietors of more than 60% of the transmitted CTM conversion requests, take no subsequent steps to meet the legal national requirements. PATENT OFFICE OF REPUBLIC OF BULGARIA

  20. Figures and facts This high percentage brings forward the following questions: • Whether it is appropriate to notify the requesting party by sending him an invitation, in which stating our national requirements. PATENT OFFICE OF REPUBLIC OF BULGARIA

  21. Figures and facts • Whether the time limit is not long enough for theproprietors ofa CTMs to take the required steps. Is it better this time-limit to be extended? PATENT OFFICE OF REPUBLIC OF BULGARIA

  22. Problems In order CTM conversion requests, to be examined faster and without complication, it is important for us to answer the following questions: PATENT OFFICE OF REPUBLIC OF BULGARIA

  23. Problems • Whether to treat requests for conversion as a subject of a new substantive examination. Is it more appropriate to provide for system examinationand registration, under facilitated conditions? PATENT OFFICE OF REPUBLIC OF BULGARIA

  24. Problems • When speaking of converted CTMs, wherein the listed goods and services are classified according to older classifications, is it necessary to re-arrange them, according to the classification in action? PATENT OFFICE OF REPUBLIC OF BULGARIA

  25. Problems • Speaking of Bulgaria as a New Member State, the most important problems are those, concerning the conversions of CTMs, applied or registered before the effective date of our accession – 01.01.2007. PATENT OFFICE OF REPUBLIC OF BULGARIA

  26. Problems • In the context of enlargement, no special legislative provisions were foreseen for conversion in the national law. Thus BPO faces following contradictions: PATENT OFFICE OF REPUBLIC OF BULGARIA

  27. Problems • which date, to be considered as a filing date (respectively priority or seniority date) of the conversion requests for the above mentioned CTMs? • which date, the duration of the converted CTM should be calculated from i.e. when does the ensuing TM expire? PATENT OFFICE OF REPUBLIC OF BULGARIA

  28. THANK YOU!!!

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