German group loses against Bulgarian construction company in dispute over GEA mark

On April 25 2014 Bulgaria’s Sofia City Court ruled in favour of Bulgarian construction company Gea Stroy in a trademark infringement lawsuit filed by GEA Group AG, one of the largest system providers for food and energy processes, which is based in Germany.

GEA Group, which initiated the lawsuit in May 2012, is the registered proprietor of several Community trademarks (CTMs) for GEA, namely CTM No 000224782, registered in 1998, CTM No 000224709, registered in 1998, CTM No 003483302, registered in 2006, and CTM No 006904684, registered in 2009, which cover goods and services in Classes 7, 9, 11, 35, 36, 37, 40 and 42 of the Nice Classification.

The Sofia City Court stated that Gea Stroy had been registered in 2005 in accordance with the provisions of the Bulgarian Commercial Law. Therefore, the defendant used its company name in the course of trade, in accordance with honest practices. In addition, the Bulgarian company’s main scope of activity was construction, which differs from GEA Group’s services and falls outside the scope of protection afforded to its registered trademarks.

The Sofia City Court concluded that the trademark owner could not prohibit a third party from using its own name in the course of trade, provided that such use is not contrary to honest practices. On these grounds, the Sofia City Court concluded that no trademark infringement could be established and dismissed GEA Group’s claims.

GEA Group appealed the Sofia City Court's decision in June 2014. The Sofia Court of Appeals has set the first hearing for December 3 2014.

Valeri Penev, PETOŠEVIC, Sofia