Author: A. Ivanova Attorney-at-Law IP Consulting
With a final decision issued by the Supreme Administrative court in Bulgaria was re-confirmed that in order to prove bad-faith application by an “agent” or “representative” it is enough to prove the existence of business relations between the two entities. The legal terms “agent” or “representative” are accepted in a broader way and it is not necessary to prove the existence of written contract, agreement or explicit Power of Attorney in order to state that one entity has been an “agent” or “representative” of the “real owner” of the trademark.
The present case was led by the team of IP Consulting and ended successfully in returning the trademark to its lawful owner.
The trademark in question – ALMI – is the trademark of an Austrian company Almi A. Mittermayer & Söhne Gmb&CoKG.
The Austrian company established in 1961 has used the trademark ALMI during the very beginning of its creation. The trademark actually represented the name of the creator of the company Alfred MIttermayer.
The Austrian company is engaged in the production of food additives and seasoningс. Since 2002 the company has exported its products on the territory of Bulgaria using a Bulgarian re-seller – LIDERPAK OOD.
On the 21st of July 2003 the distributor submits an application before the Bulgarian Patent Office for the trademark ALMI – with identical graphic representation as the Austrian brand, for similar goods, subsequently the trademark receives registration and protection in Bulgaria with owner LIDERPAK OOD for class 16, 29, 35, reg. No.51853.
On the 28th of April 2006 the Austrian company Almi A. Mittermayer & Söhne Gmb&CoKG files a request for cancellation of the trademark of LIDERPAK on the basis of art. 26, al.3, point 3 Law on Marks and GIs in relation to art. 6 septis from the Paris convention. The Bulgarian provisions states that:
“The registration of a mark shall be declared invalid at the request of any legally interested party if the mark is registered in the name of an agent or representative of the proprietor without the latter’s consent.”
The Law also allows that the registration will not be cancelled but transferred to the right owner if he requests that.
With decision of the Bulgarian Patent office No.136 from 06.07.2007 the trademark is transferred to the Austrian company as the Patent Office accepts that during the procedure the opponent has proven that he has been in relations with the applicant LIDERPAK before the date of the application, which has been made in bad faith and without his consent.
LIDERPAK appeals the decision before the Sofia Administrative Court – the Administrative court with decision No. 103 from 06.06.2008 re-confirms the decision of the Patent Office and rejects the appeal.
LIDERPAK appeals again the decision of the Administrative court before the Supreme Administrative court. With decision No. 2550 from 24.02.2009 the Supreme administrative court decides finally the case with decision rejecting again the appeal of LIDERPAK and final confirmation of the decision of the Bulgarian Patent Office for transfer of the bad-faith registration of BG trademark No. 51853 to its lawful owner – the Austrian company producer – Almi A. Mittermayer & Söhne Gmb&CoKG.
The main problem risen during the case has been whether LIDERPAK can be characterized as “agent” or “representative” of the right owner as no written agreement, power of attorney or any contract has been concluded between the parties. The representatives of LIDERPAK base their argument on different provisions in the Bulgarian trade legislation (Commercial Code; Customs Law and etc.) which describe the relationships which include the status of “agent” / “representative” as formal relations which require explicit written agreement between the parties. They state that the status of “distributor” is not enough to fulfill the requirements of art. 6 septis of the Patent Convention.
The Court rejects such stipulations with the following arguments:
“The Paris Convention does not give legal definition for “agent” and “representative”, but the idea of that international act is clear – to assure protection for the participants in the trade turnover, who trusting their “trade partners”, are damaged by their unfair actions. The legal definitions of the same terms in the Bulgarian legislation in the present case can not be used, as they are inapplicable in the international law…. For the legal meaning of the terms “agent” and “representative” in accordance with art. 6 septis from the Paris Convention we can not judge under the meaning of the Bulgarian national legislation… Important is the decision from 19.12.2002 of the Cancellation Department of OHIM, Alicante in case No.164C 000548644/1… As member state of the EU – Bulgaria is obliged to comply with the legal provisions of the accepted regulations of the Community. ”
So the Supreme Administrative Court gives prevalence of the Community legislation in the case and even basis its decision of the practice established by OHIM, nevertheless that the contested trademark is Bulgarian national registration, done by the Bulgarian Patent Office. That is very important part of the case as it establishes the future practice of the Court which has to be synchronized with the Community legislation and the way the Community institutions apply and enforce the legal provisions. That approach can be only in favor of the Bulgarian jurisprudence as due to the approximately small market the practice in the area of Intellectual Property is not very rich and exhaustive, so there were some areas which had no clear definition and not established synchronized practice between the courts and even the different departments in one court. We trust that such approach of taking under consideration the previous practice and even the existing practice of the European institutions will lead to the establishment of more clear, synchronized and accurate court practice and more trustful legal system in Bulgaria.
