The Draft Agreement on the withdrawal of the United Kingdom and Northern Ireland from the European Union, (hereinafter referred to as the “Draft” / “Agreement”) which has been published on the 14^th November 2018, has given an answer to important questions, related to the intellectual property (IP) rights with a territorial validity in the EU after BREXIT, like EU trademarks, EU industrial designs, EU protected geographical indication, supplementary protection certificates for pharmaceutical and plant protection products (SPC), and copyrights. The main questions, which have been set in relation to BREXIT, were whether the intellectual property rights with territorial validity in the EU, would continue to have protection on the territory of Great Britain after its withdrawal from the EU and if so – under what conditions. In view of the events from the 12^th March 2019, of course, it could be expected that the Agreement mentioned above would not take effect. The Draft was already rejected twice by the British government and the only possibility for it to be accepted is to be concluded until the 20^th March 2019, which would allow the delay of BREXIT until the 30^th June 2019.  

Practically, No-deal BREXIT would mean that the conditions, negotiated in art.54-61 (https://ec.europa.eu/commission/sites/betapolitical/files/draft_withdrawal_agreement_0.pdf ) of the Draft, related to the continuation of the protection of already existing registrations and the published filings for registration of different IP rights with territorial validity in the EU, would not occur.

It shall be noted that the EU trade marks and the other IP objects are protected only in the EU and not in third countries. Therefore, after BREXIT, EU trade marks registered prior to that moment will cease to be protected in the UK. EU law does not offer any legal basis which would allow a ‘partial transformation’ of an EU trade mark into a UK trade mark (whether before or after the withdrawal from EU). Therefore, there is still unclarity and legal uncertainty, similar to the one from 1 year ago, whether or not the right holders will continue to possess such rights and whether or not they will have the rights over an equivalent object in the territory of UK after BREXIT. For example, the owner of an EU trademark for the same logo and the same goods and/or services, registered according to the EU legislation, will have to go through a national trademark registration procedure in Great Britain.

After a careful analysis of the mentioned above Draft Agreement, the attorneys-at-law from “Penkov, Markov and partners” are on the opinion that if such Agreement is accepted and signed (BREXIT with a deal) it will offer the best possible solution for the protection of the rights and legal interests of the right holders. The proposed Draft defends the interests of the IP owners with a unified protection within the EU. It is exceptionally important that a legal mechanism is offered, thanks to which the already acquired EU rights would continue to take effect in the territory of Great Britain after BREXIT.

For example, art.55 of the Draft Agreement establishes a registration procedure which shall be completed ex officio by the competent authorities thanks to the available information in the records of the European Union Intellectual Property Office (EUIPO) without the need for an additional payment of fees.

However, if the Agreement does not take effect, the interests of the owners of EU trademark registrations, of EU industrial designs, of SPC published in Britain would be substantially harmed as their rights would automatically stop to have effect after BREXIT. These rights would continue to have protection only on the territory of the other 27 EU member countries, but the right holders would be forced to go through a completely new registration procedure before the intellectual property administration of Great Britain in case they wish to continue to receive protection in the UK. Thus, the holders would lose the advantage of their earlier rights for the equivalent IP object with territory protection within the EU

Such legal uncertainty, as described above, would give the unconscientious competitors an opportunity for misuse. After BREXIT UK courts would no longer be competent in respect to the validity and protection of IP objects registered in EU. It would be possible to receive court and administrative protection of IP rights on the territory of Great Britain only after a national registration procedure is completed. This means that if in the meantime an unconscientious competitor files an application for the registration of an identical IP object, for example a trademark with the same name and/or logo for the same list of goods and services, before this is done by the EU right holder, the interests of the latter would be substantially harmed. 

The conclusion is that BREXIT with a deal would be the only logical and legally supported solution for the IP right holders in the Union. Otherwise, a legal uncertainty and possible misuse would arise and such situation could result in essential losses for manufactures and service providers whose trademarks and other IP object would cease to exist after BREXIT for the territory of UK.

New law shall regulate the protection of the trade secret

A submission in the National Assembly of the Republic of Bulgaria of an entirely new Trade Secret Protection Act prepared by the Council of Ministers lies ahead. The draft of the legislative act, which has already passed the phase of public discussions, aims at transposing in the Bulgarian legislation Directive (EU) 2016/943 of the European Parliament and the Council from June 8^th 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.

Yet upon initial review of the draft law it could be of interest the envisaged broad definition of the concept of trade secret. This shall be information which simultaneously fulfills the criteria laid down in the act, namely: it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; it has commercial value because it is secret; it has been subject to measures undertaken by the person in control of the information in order to keep it secret.

A focus of the legislative act is the introduction of a special procedure for protection against infringements of trade secret. The new regulation aims at guaranteeing the protection of the persons affected by such infringements, as well as at ensuring their effective compensation for potential damages incurred as a result of unlawful acquisition, use or disclosure of a trade secret. Measures for confidentiality in the judicial procedures initiated for seeking protection under the conditions of the new act are envisaged, which measures shall allow restriction of the access to certain information upon fulfilment of the requirements laid down in the draft act.

A possibility for imposition of temporary (securitization) measures for protection of a trade secret is laid down, before filing a claim under the conditions of the new law, for instance, suspension or prohibition as a temporary measure of the use or disclosure of the trade secret; prohibition of the production, offering, placing on the market, etc. of goods subject to infringement, etc.

The liability for adjudication by the court of compensation for damages shall be objective. It is set out that the infringer shall be obliged to indemnify the trade secret owner for all damages and loss of revenues which are direct consequence from the unlawful acquisition, use or disclosure of a trade secret, in cases where the infringer has known or ought to have known upon existence of the respective conditions that he/she was engaged in unlawful acquisition, use or disclosure of a trade secret.

Of course, it is yet to be seen what would be the final text of the law, as well as the direction in which the court practice shall develop under cases initiated under the conditions of the new legislative act. It could be of interest also the matter whether the law shall create an applicable regulation which to actually provide a way for protection of the business upon infringement of one of its main ‘assets’ – the trade secret.

Amendments in the Civil Proceedings Code

On 22.05.2018, the National Assembly adopted an Act amending the Civil Proceedings Code (CPC). The need for amendments is related to the regime of the enforcement proceedings, in particular to the European small claims procedure and the exequatur under the Hague Convention from 2007. However, the legislator used the occasion to introduce substantial changes related to the partial claim, by amending, apart from the CPC, also the basic civil act, the Act on Obligations and Contracts.

The partial claim is subject of a case for interpretation of the law brought before the Supreme Court of Cassation (SCC) in 2016 because of issues controversially resolved by the courts. However, the new legislative amendments to a great extent give an explicit answer to some of the interpretative issues.

One of these issues, which is explicitly regulated by the present amendments, is the question for the statute of limitation when a partial claim is filed, and the legislator expressly stipulates in the civil law that the statute of limitations is suspended or interrupted only for the claimed part, as is the view of most of the case law on the repealed CPC. Also, as regards filing a claim, among the grounds for termination of a case, the legislator expressly provides that when there are two cases pending between the same parties, on the same grounds and for the same claim, the case is not terminated if it is for the part of the claim which has not been raised initially which the initial claim is still pending. It is to be assumed that the judgment in the earlier case is conditional on the subsequent proceedings and is a ground for the suspension of the second case.

As a result of the changes thus adopted, some of the questions posed in the case before the SCC, related to the termination of a later filed claim and the limitation period, find their answer in the legislation. However, the SCC has to take a position on whether the decision on a partial action is a matter of res judicata concerning the facts of the disputed right in an action for the remaining part of the partial claim in another case.

(Source: State Gazette)

First officially confirmed by CPDP new regulations in Bulgaria in relation to GDPR

(Amendments in Ordinance No. 1 regarding the technical and organizational measures for personal data protection)

At the height of the most significant and major personal data protection reform, the core of which is the General Data Protection Regulation (GDPR), the local authority - Commission for personal data protection (CPDP) has announced on its web-portal that from 25 May 2018 on, in Bulgaria would enter into force a Methodical guide, which shall regulate the measures regarding the personal data protection, and replace the current regulation, as to this moment all the measures are amongst the provisions of the Ordinance No. 1 of 30^th January 2013 on the minimum level of technical and organizational measures and the admissible type of personal data protection.

Part of the intense preparation for the full implementation in Bulgaria of the requirements of Regulation (EU) 679/2016 (GDPR) are the undertaken legislation changes in the Bulgarian Personal data protection Act, which would be supplemented and amended. The long-awaited draft of the new Act is not still published for public consultations, according to the recent data provided by CPDP, the Act is sent for coordination to the Ministry of internal affairs.