Generic marks – proofs demonstrating that the activity of the holder is preventing the trade mark from becoming a generic term M.Radulova R.Trenkova Patent Office of the Republic of Bulgaria Alicante, June 2009

National law provision Art. 25 (1) 2 Any party may request revocation of a registration if in consequence of acts or inactivity of the proprietor the mark has become a common name for the product or service in respect of which it is registered. Art. 25 (1) 2 Any party may request revocation of a registration if in consequence of acts or inactivity of the proprietor the mark has become a common name for the product or service in respect of which it is registered.

Request for revocation TRADEMARK TRADEMARK ФАСАГЕН ФАСАГЕН (FASAGEN) (FASAGEN) GOODS External wall paints (class 2)

Proofs by the holder Printed advertisements accompanied by the indication that it is a registered trade mark Printed advertisements accompanied by the indication that it is a registered trade mark Advertisements in the Internet Advertisements in the Internet Measures for preventing infringement of the mark by third parties (warning letters, invitations for suspension of the infringement) Measures for preventing infringement of the mark by third parties (warning letters, invitations for suspension of the infringement) Administrative procedures against the infringement before the BPO Administrative procedures against the infringement before the BPO

Decision of the Office Request for revocation rejected The Office found out that the presented proofs were enough to demonstrate the lack of cause- consequence correlation between the becoming of the mark a common name and the activity or inactivity of the holder

Request for revocation TRADEMARKASPIRIN GOODS A pharmaceutical product (class 5)

Proofs by the holder Product packagings bearing the mark with circled letter R alongside it Product packagings bearing the mark with circled letter R alongside it Printed advertisements Printed advertisements Dictionaries of foreign words in Bulgarian language containing the word “aspirin” with warning that it is a registered trade mark Dictionaries of foreign words in Bulgarian language containing the word “aspirin” with warning that it is a registered trade mark Newspaper articles containing explanation that ASPIRIN is a registered trade mark but not a common name Newspaper articles containing explanation that ASPIRIN is a registered trade mark but not a common name

Decision of the Office Request for revocation rejected The Office concluded that in this case the holder has proved his adequate activities to prevent the mark for becoming generic The Office concluded that in this case the holder has proved his adequate activities to prevent the mark for becoming generic

Questions - national offices practice What kind of proofs are relevant and demonstrating that the activity of the trademark holder has directed to prevent the mark from becoming a generic term? What kind of proofs are relevant and demonstrating that the activity of the trademark holder has directed to prevent the mark from becoming a generic term? Do the other offices have a list of relevant and acceptable proofs concerning that kind of cases? Do the other offices have a list of relevant and acceptable proofs concerning that kind of cases?

Thank you for your kind attention!