The decision

In a recent decision of 2018[1] the Supreme Administrative Court ruled against a decision of the Bulgarian Patent Office to cancel a trademark registration and thus disaffirmed the decision of the Administrative Court - Sofia city where the lower court approved such cancellation. 

In its decision the Supreme Administrative Court interpreted art. 11, par. 1, p. 6 from the Bulgarian Law on Trademarks and Geographical indications (“LMGI”) on one of the absolute grounds for refusal of trademark registration, namely “cannot be registered as a trademark a sign contradicting with the public order or the principles of morality”.

The main dispute involved the registration of a combined trademark for Tobacco and Articles for use with tobacco containing as a word element Slims MERILYN and in the center of the dispute was the question whether the use of the name of an obviously famous person (Merilyn Monroe) for a trademark, together with a stylized image of that person, contradicted to the public order.

Findings of the lower Court

The Administrative Court - Sofia city answered to the above question in the affirmative and ruled that when applying for that particular trademark the applicant used the notoriety of the famous person, and given that the trademark registration has a commercial purpose per se, the applicant took advantage of the name. The Court agreed with the position of the Patent office and in line with its arguments also referred to the Methodical Guidelines and in particular to these regarding the application of art. 11 (on the absolute grounds for refusal of trademark registration). The Court found that, in light of the Guidelines, cases of use of famous people’s names in a trademark represent a category apart within the concept of “contradictory to the public order”. The Court further found that the registration of a trademark containing the name of a famous person provoked association of the mark with the image of the famous person and that could lead to bigger commercial results for the owner in comparison with the commercial potential of the goods offered under this trademark (considering that there was no connection between the famous person’s image and the goods), and which would further lead to unjust commercial advantage for the trademark owner, which contradicted to the public order and the principles of morality.

Another argument of the Court in support of the cancellation of the trademark by the Patent Office was that the use of a trademark containing the image and the name of a famous person unequivocally redirected to the image of the famous actress and that represented in view of the public order unfair method for attracting customers. The Court further interpreted the Guidelines’ requirement of established unfair character in order to declare a trademark contradictory to the public order, and in addition found that the lack of consent of the famous person’s inheritors gave the mark that unfair character.

Lastly, the Court adopted the view and the position of the Patent Office that it is likely for the owner of a trademark containing the name of a famous person to take commercial advantage of the trademark’s use by disregarding the direct and fair competition rules on the market of goods for which the trademark in question is registered. And that behaviour, according to the Court, was contradictory to the public order and justified cancellation of the trademark.  

Findings of the Supreme Administrative Court

Тhe Supreme Administrative Court disaffirmed the decision of the lower court and found incorrect the reasoning of the court, in particular the interpretation given to art. 11, par. 1, p. 6 from the LMGI and to the Methodical Guidelines, as well their application to the case.  

The Court ruled at a first place that art. 11 of the LMGI shall be examined on a case by case basis. The Court further ruled that a trademark containing the name of a famous person could be registered upon explicit consent of that person or his inheritors, but clarified that art. 11, par. 1, p. 6 shall be applied in order to and for the purpose of protecting the public order and not for the purpose of protecting someone’s personal emotions. 

Within that reasoning the Supreme Administrative Court stressed out that it is the trademark, and in particular the sign that is being associated with the goods and services in question, that has to be considered when appreciating whether that sign contradicts to the public order. Referring to a decision of the General Court Т224/01 the Court pointed out – differentiating at the same time from the reasoning of the lower court - that for the purpose of the application of the absolute ground for refusal related to contradiction to public order it is the characteristics of the mark that matter and not the behaviour of the trademark applicant or the circumstances which led to that specific behaviour of the trademark applicant.

In continuation of the above, what was important for the Supreme Court to discuss was that in case the behaviour of the trademark applicant was put into question and that could lead to bad faith application, then it was relevant to mention the requirement of art. 26, par. 3, p. 4 of the LMGI regarding the trademark cancellation request according to which an applicant’s bad faith (at the moment of the trademark application) needs to be established by a court decision in force (which was not the case in the present dispute).

Comment:

The decision of the Supreme Administrative Court is an interesting and at the same time important comment on one of the absolute grounds for refusal of trademark registration – the one related to public order, considering in particular the lack of abundant Bulgarian case law on the matter.

The Court gives an interpretation and some perspective of the vague principle of public order and of what could possibly contradict public order. But mostly the Court makes an important analysis of what is within that concept when trademarks are involved, to understand the differentiation the Court makes by disagreeing with the lower Court between the trademark applicant behaviour and the characteristics of the trademark itself. Last but not least, the Court ruled on the right procedural actions to be taken when one is requesting trademark cancellation on absolute grounds.