眾律國際法律事務所

Trademark system in Slovenia

Introduction:

Language: Slovene

Capital: Ljubljana

Area: 20,273 km2

Population: 2,065,879 (2016)

Currency: Euro

Religion: Catholicism is the main religion (57%)

Geographical situation:

International treaty membership:

Treaty of Lisbon amending the Treaty on European Union and the Treaty establishing the European Community (December 1, 2009)

Trademark Law Treaty (May 26, 2002)

Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (August 10, 2001)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (March 12, 1998)

Convention Establishing the World Intellectual Property Organization (June 25, 1991)

Madrid Agreement Concerning the International Registration of Marks (June 25, 1991)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (June 25, 1991)

Paris Convention for the Protection of Industrial Property (June 25, 1991)

Legislation:

Industrial Property Act (ZIL-1-UPB3) (as amended up to December 6, 2013)

Government Institutions:

Slovenian Intellectual Property Office (SIPO), Ministry of Economic Development and Technology

Type of trademark:

Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of another undertaking, and capable of being graphically represented, in particular words, including personal names, letters, numerals, figurative elements, three dimensional images, including the shape of goods or of their packaging, combinations of colors as well as any combination of such signs, shall be eligible for registration as marks.

Also collective marks can be registered.

Grounds for refusal:

As in most of country’s system there are two kinds of refusal, absolutes and relatives ones.

Absolutes grounds for refusal:

A sign shall not be eligible for registration as a mark if:

-  it cannot constitute a mark;

-  it is devoid of any distinctive character;

-  it serves, in trade, to designate merely the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;

-  it contains or consists of a geographical indication identifying wines or spirits, where the mark application relates to wines or spirits not having this origin;

-  it consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

-  it consists exclusively of the shape which results from the nature of the goods themselves or is necessary to obtain a technical result or gives substantial value to the goods;

-  it is contrary to public order or morality;

-  it deceives the public, in particular to the nature, quality or geographical origin of the goods or services;

-  it contains official signs or hallmarks for controlling or guaranteeing the quality of goods, or imitations thereof;

-  it includes or imitates badges, emblems or escutcheons or any state symbol and which are of particular public interest, unless the consent of the competent authorities to its registration has been given;

Relatives grounds:

a sign shall not be eligible for registration as a mark if:

-  it is identical with an earlier mark of another owner, and the goods or services for which the registration is applied for are identical with the goods or services for which the earlier mark is registered;

-  because of its identity with or similarity to the earlier mark of another owner and the identity or similarity of the goods or services covered by the sign and the mark there exist the likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier mark;

-  because of its identity with or similarity to an earlier mark of another owner, registered for goods or services which are not identical with or similar to the goods or services for which the registration has been applied for, the use without due cause of such sign would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark, or if it would indicate a connection between the goods or services and the owner of the earlier mark, and provided that the interests of the owner o fthe earlier mark are likely to be damaged by such use;

-  it is identical with or similar to a mark or unregistered sign, which is in the Republic of Slovenia a well-known mark;

-  the owner of the mark registered in any Member State of the Union established under the Paris Convention, or the World Trade Organisation, proves that his agent or representative applied, without the owner's consent, for the registration ofthe sign in his own name;

-  its use would contradict an earlier right to a name, personal portrayal, plant variety, geographical indication or other industrial property right, or an earlier copyright, unless the owner of the earlier right gives his express consent to the registration of such sign.

Application content:

Register a mark in multiple class is possible. Foreign applicants need a local agent,

Aa non-legalized power of attorney is sufficient.

A mark application shall contain:

-  a request for the registration of a mark; with address and name of the person or the company.

-  a list of the goods or services for which the protection is sought;

-  a representation of the sign, in the number of copies prescribed by an executive regulation.

Application process:

The first step is the formal examination, which consists in verifying that the application contains all the documents required by the law.

If the application is lacking some elements, the applicant will be notified and shall provide the missing information.

Then the substantive examination will take place and will verify if the application doesn’t encounter any absolute ground for refusal.

If the application does encounter any ground for refusal the application shall be totally or partially rejected. If the application is free of ground for refusal, the application shall be published.

Within three months following the publication of a mark application, a written notice of opposition to registration of the mark may be filed with the Office by the owner of an earlier mark.

The opposition may also be filed by the owner of a mark which has been registered in any Member State of the Paris Union or WTO and has been applied for in the Republic of Slovenia by his agent or representative without the owner's consent.

The Office shall notify the applicant for a mark of an opposition filed. The applicant may, within three months from the receipt of the notification, comment on the opposition.

Then the office will consider if the application shall be rejected or accepted.

If it is accepted the applicant will have to pay the fees for registration and protection for 10 years. After the payment the office will register the trademark and publish it.

Refusal:

Every decision of rejection from the office shall be notify to the applicant, the said will be able to make observation within 3 months after the notification.

There shall be no appeal against a decision or order issued by the Office; however, an action in the administrative litigation proceedings may be filed with the Administrative Court of the Republic of Slovenia in Ljubljana. The court shall decide on the case at its seat in Ljubljana.

Rights of exploitation and related delay:

The term of a mark shall be ten years computed from the date of filing of the application and can be renewed every time for 10 years. The grace period for renewal is 6 months after the expiry.

A mark shall confer on the owner exclusive right to use the mark and other exclusive rights under this Act. The owner of a mark shall be entitled to prevent all third parties not having his consent from using identical or similar signs that could lead to mislead the public in the course of trade.

Transfer and conditions:

Transfer of trademark need the power of an attorney and the deed between the two parties shall be submitted to the Office.

Withdrawal and cancellation:

The applicant can withdraw his application any time during the process.

An action before the office to declare nullity of a mark shall be based on absolute ground or lack of distinctiveness.

An action in court for claiming an earlier right is possible but must be done within the first 5 years of using the mark.

An action for removal of the mark can also be filed if:

-  the applicant was acting in bad faith when filing the application;

-  the mark has been registered, subject to the date of the filing of the application, contrary to Article 44, except in the cases referred to in Article 139;

-  in consequence of acts or inactivity of the owner, the mark has become the common name in the trade for goods or services in respect of which it is registered;

-  in consequence of the use made of it by the owner of the mark or with his consent in respect of the goods or services for which it is registered, the mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

An action for cancellation of the mark can be filed before Court for non use of the mark, this non use as to be on a consecutive period of five years. The right holder will have to prove the use of the mark.

Customs protection:

A general request, which is valid for one year, shall be lodged with the General Customs Directorate. If the request is granted, the General Customs Directorate notifies all customs offices accordingly. If, during the performance of their tasks, customs authorities discover goods suspected of infringing a certain intellectual property right, they may temporary detain such goods, of which they notify the right holder and the owner of the goods. During the period of detention of goods (three working days for perishable goods, ten working days for the remaining goods), the right holder must decide whether to lodge a suit for infringement of the right or not, while the owner of the goods must decide whether to persist or not in its statement that the goods do not infringe the intellectual property right. Further actions of the customs authorities depend on these decisions. If the right holder lodges a suit, the goods shall be confiscated until the final decision of the court, and after the court’s decision establishing an infringement of the right becomes final, the goods, as a rule, shall be destroyed. When the right holder is not successful in court, the goods will be released.

Destruction of suspended goods shall also be possible without a court decision when the owner of the goods does not respond to the notification by the customs authority on temporary detention of goods or if so agreed upon between the owner of the goods and the right holder (a shortened procedure).

The proceedings shall be initiated ex officio by customs authority when the latter establishes that the goods are evidently counterfeit or pirated. The goods shall be detained for three working days. When, during this period, the right holder lodges a request for an action, the proceedings shall be continued as described above.

Sources:

Wipo.int:

Industrial Property Act (ZIL-1-UPB3) (as amended up to December 6, 2013)

Vincent Lagier