Sofia City Court: no bad faith without proof of malice

The Sofia City Court has issued a decision stating that Misota, a Bulgarian producer and importer of canned fruits and vegetables, had not acted in bad faith when filing the trademark application for MIRELA (combined application No 91118, November 9 2006). The decision entered into force on May 16 2012.

The Sofia City Court rejected the action filed by Tengelmann Warenhandelsgesellschaft KG, doing business as the Tengelmann Group, under Article 26, Paragraph 3, Item 4 of the Bulgarian Law on Marks and Geographical Indications.

The plaintiff, a German-based multi-sector retailer that is present in much of Europe, is the owner of an international registration for the word mark MIRELLA (International Registration No 849083), which covers goods in Class 32 of the Nice Classification, namely fruit syrups for making beverages.

In 2006 the defendant applied for the registration of the national trademark MIRELA. The trademark was registered in August 2010 for goods in Classes 29, 30, 31, 32, namely beer and mineral and aerated waters.

During the legal proceedings, an expert concluded that there were similarities between the marks in question, which created a likelihood of confusion in relation to Class 32 goods only.

However, the Sofia City Court ruled in favour of the defendant, as the plaintiff had failed to prove that the defendant was aware that the plaintiff had exclusive rights in the trademark in question. The decision was based on the fact that, for bad faith to exist, the applicant must have knowledge of the prior trademark. The Bulgarian civil law states that bad faith implies malice and deliberate unlawful behaviour.

According to the ruling, the reputation of the plaintiff’s mark in different countries did not constitute evidence that it enjoyed a reputation in Bulgaria. Moreover, the mark was not registered in Bulgaria at the time the defendant filed the application.

Valeri Penev, PETOŠEVIC, Sofia