Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks is the Slovenian Industrial Property Act (as amended up to 18 May 2006).

International law

Which international trademark agreements has your jurisdiction signed?

The most relevant international trademark agreements are as follows:

  • the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement);
  • the Convention Establishing the World Intellectual Property Organization;
  • the Paris Convention for the Protection of Industrial Property (Paris Convention);
  • the Madrid Agreement Concerning the International Registration of Marks;
  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
  • the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement;
  • the Trademark Law Treaty and Regulations;
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification);
  • the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks; and
  • the Nairobi Treaty on the Protection of the Olympic Symbol.
Regulators

Which government bodies regulate trademark law?

One of the main tasks of the IP office is the preparation of legal regulations in the field of intellectual property. The courts also play a major role in regulating IP case law.

Registration and use

Ownership of marks

Who may apply for registration?

The application for registration of the mark may be filed by any natural or legal person having residence or a real effective industrial or commercial establishment in Slovenia. Other parties must assert their rights in proceedings before the IP office through a representative.

Scope of trademark

What may and may not be protected and registered as a trademark?

Any sign or 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 through words, personal names, letters, numerals, figurative elements, three-dimensional images, the shape of goods or their packaging, combinations of colours and any combination of such signs - is eligible for registration as a trademark.

Collective marks are also registrable.

A collective mark can be any sign, or any combination of signs, that is capable of distinguishing the goods or services of one undertaking from those of another undertaking, and capable of being graphically represented, in particular through words, personal names, letters, numerals, figurative elements, three-dimensional images, the shape of goods or their packaging, combinations of colours and any combination of such signs.

Any association of legal or natural persons can apply for and own a collective mark, including umbrella associations having legal personality and legal persons governed by public law.

An applicant for a collective mark must submit the following information when filing the application:

  • regulations governing use of the collective mark, including information on the applicant;
  • the conditions of membership; and
  • information about the persons authorised to use the collective mark and provisions concerning the rights and obligations of the members in the event of infringement of the collective mark.

Certification marks are not yet regulated in Slovenia.

Unregistered trademarks

Can trademark rights be established without registration?

An unregistered sign can be enforced as a well-known mark, which is protected within the meaning of article 6bis of the Paris Convention. The owner of the unregistered mark can claim its protection also by filing an action with the competent court according to Prevention of Restriction of Competition Act (ZPOmK-1).

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

According to the Industrial Property Act, the owner of a mark is entitled to prevent all unauthorised third parties from using in the course of trade any sign that is identical or similar to the mark in relation to goods or services that are not similar to those for which the mark is registered, where the mark has a reputation in Slovenia and where the use without due cause of that sign would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark.

Also, a sign is not eligible for trademark registration if it is identical or similar to a mark or unregistered sign that is a well-known mark in Slovenia within the meaning of article 6bis of the Paris Convention or article 16(3) of the TRIPS Agreement.

The benefits of registration

What are the benefits of registration?

Article 47 of the Industrial Property Act prescribes that a registered trademark shall confer on the owner the exclusive right to use the mark, among other exclusive rights. The owner of a mark shall be entitled to prevent all unauthorised third parties from using in the course of trade any sign:

  • that is identical to the mark in relation to goods or services which are identical to those for which the mark is registered;
  • where, because of its identicalness or similarity to the mark and the identicalness or similarity of the goods or services covered by the mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the mark; or
  • that is identical or similar to the mark in relation to goods or services which are not similar to those for which the mark is registered, where the mark has a reputation in Slovenia and where the use without due cause of that sign would take unfair advantage of, or be detrimental to, the distinctive character or repute of the mark.

The following may be prohibited under paragraph 1, article 47 of the Industrial Property Act (among other things):

  • affixing the sign to the goods or to the packaging thereof;
  • offering the goods, putting them on the market or stocking them for these purposes under the sign, or offering or supplying services thereunder;
  • importing or exporting the goods under the sign; and
  • using the sign on business papers and in advertising.
Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The application for registration of the mark should be submitted using an application form including the following information and enclosures:

  • the applicant’s name and address;
  • a list of relevant goods or services classified in accordance with the Nice Classification;
  • a graphical representation of the mark;
  • collective mark rules (if a collective mark is requested);
  • the application number and filing date of the application from which priority is claimed (if priority is claimed);
  • confirmation of payment of the application fee; and
  • a signed power of attorney (if the application is submitted through a representative).

Any sign that is capable of being graphically represented - in particular through words, personal names, letters, numerals, figurative elements, three-dimensional images, the shape of goods or their packaging, combinations of colours and any combination of such signs - is eligible for registration as a trademark.

Electronic filing is available.

The trademark searches are available before filing. The IP office offers a search service for identical and similar trademarks. The official fee for a trademark search is €65. However, the IP office’s search report does not include an opinion on registrability of the mark. The search is not mandatory.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

It usually takes approximately six to nine months from filing for a trademark application to mature to registration (provided that there are no problems with the application).

The application fee for a mark specifying up to three classes is €100, plus €20 for each additional class.

The application fee for a collective mark specifying up to three classes is €250, plus €50 for each additional class.

The registration fee for a mark specifying up to three classes is €150, plus €50 for each additional class.

Trademark registration formally comes into effect with the issuance of the registration decision and is valid from the application date.

Within three months following the publication of a trademark application, the owner of an earlier mark may file a written notice of opposition to registration of the respective mark with the IP office.

It usually takes between 12 to 24 months for the IP office to decide in the opposition procedure. The official fee for the opposition is €75 for a Slovenian trademark and €85 for a Slovenian part of an international trademark

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Slovenian IPOs follow the Nice Classification system. Multi-class applications are available. The application fee for a mark specifying up to three classes is €100, plus €20 for each additional class.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The IP office first examines the application for compliance with the formal filing requirements. If the application meets these requirements, the IP office proceeds with the examination for absolute grounds of refusal. The mark is published if the application passes both of these examinations.

The IP office will examine the application for relative grounds for refusal if an opposition against the application is filed with the IP office within three months from the application’s publication date.

If the IP office raises objections to the application, the applicant will receive a notification thereof in which the IP office allows the applicant to file observations. The IP office will decide whether the observations are justified. If so, the IP office will publish the application and proceed with registration of the mark; otherwise, the IP office will refuse the application.

The applicant may initiate an administrative dispute against the unfavourable decision and file it with the Administrative Court within 30 days of receipt of the IP office's decision to reject the application.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Use of a trademark does not have to be claimed before registration is granted or issued and no proof of use does not need to be submitted.

The applicant can claim a right to priority within six months from the date of first filing in order to be able to file the mark in another country. To claim priority rights, both countries must be members of the Paris Convention.

A mark can be cancelled for non-use if, within a consecutive five-year period from the date of entry of the trademark in the register, or the last day on which the mark has been seriously and effectively used in Slovenia, the owner without proper reasons fails to use the mark in connection with the goods or services in respect of which it is registered. Any interested party may file an action with a court of competent jurisdiction requesting cancellation of a mark for non-use.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Marking is not mandatory in Slovenia and is not regulated. There are no official symbols that should be used to indicate trademark use or registration of a trademark. The use of marking symbols is also not prohibited in Slovenia.

Appealing a denied application

Is there an appeal process if the application is denied?

The appeal can be filed with the Higher Court in Ljubljana within 15 days from receipt of the decision.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

The applications of trademarks are published in the Industrial property bulletin, published by the end of each month.

Following the publication of a mark application, any person may present to the IP office observations concerning the registration of a sign, subject to absolute ground of refusal. The person submitting such observations to the IP office shall not be a party to the proceedings before the IP office.

Within three months following the publication of a trademark application, the owner of an earlier mark may file a written notice of opposition to registration of the respective mark with the IP office. The opposition must be based on relative grounds for refusal and contain supporting evidence. The IP office notifies the applicant of the opposition and allows the applicant to file observations. The IP office then decides whether the opposition is justified (in full or in part). If the opposition is justified, the IP office will refuse the application (in full or in part); otherwise, the IP office will refuse the opposition and proceed with registration of the mark.

Any interested party may file an action with a court of competent jurisdiction. There is no time limit to file an action to invalidate a mark based on article 42 (the mark is not distinctive) or article 43 (absolute grounds for refusal), or to revoke a mark if the applicant filed the application in bad faith. However, an action to revoke a mark based on relative grounds for refusal must be filed within five years or the registration date.

The trademark owner may oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection, but the trademark owner has the burden of proof of bad faith of the applicant.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The term for the protection of a mark is 10 years from the application’s filing date. The mark can be renewed an unlimited number of times (each time for 10 years), calculated from the application’s filing date upon the payment of a maintenance fee. For trademark renewal no proof of use is required.

Surrender

What is the procedure for surrendering a trademark registration?

The owner of the mark can renounce its rights in respect of all or part of the goods or services for which the mark is registered. The renunciation becomes effective on the day following the date on which the IP office receives the request for renunciation.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

If the sign complies with the requirements for other IP rights, it can be protected under those rights (eg, copyright).

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

Unauthorised online use of a trademark or an infringing domain name constitutes trademark infringement.

An infringing domain name can be contested through Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings, which take place before the Academic and Research Network of Slovenia. To successfully start the UDRP procedure:

  • the domain name must be identical or confusingly similar to a trademark that is valid in Slovenia;
  • the domain holder must have no legally recognised interest in the domain; and
  • the domain must be registered or used in bad faith (and the domain holder must know about the existence of the rights holder).

A favourable UDRP action will result in either the cancellation of the domain name or its transfer to the complainant.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

A mark may be licensed. A licence may be exclusive or non-exclusive. The licence may be entered in the register; however, this is not formally required under the Industrial Property Act. To have legal effect, the licence must be valid and comply with the applicable law.

Provisions covering the following areas are typically included:

  • duration of the agreement;
  • the form covered by the registration in which the mark may be used;
  • the territory in which the mark may be affixed;
  • the scope of goods and services for which the licence is granted;
  • the licence fee;
  • whether the licence is exclusive or non-exclusive;
  • quality control; and
  • possible permissions to sublicence.
Assignment

What can be assigned?

Trademarks can be assigned with or without goodwill. It possible to assign the trademark in whole or just some of the goods and services. For the validity of the assignment it is not necessary to assign other business assets.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

The assignment of the trademark should be submitted using an application form and enclosures:

  • confirmation of payment of the application fee;
  • consent of the holder for the assignment (simply signed); and
  • a signed power of attorney (if the application is submitted through a representative).
Validity of assignment

Must the assignment be recorded for purposes of its validity?

Formal assignment is not mandatory but is recommended. In order to have legal effect, the assignment must be recorded in the register. The assignment becomes effective with the issuance of the recordal decision.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Yes; however, it is not mandatory to record a security interest to ensure its validity. The security interest can be recorded in the trademark register. The IP office issues a decision on entering the security interest in the register upon a written request with required documents (eg, power of attorney and a notarised security interest agreement).

Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

The owner of a mark may choose between civil, criminal or administrative actions for trademark infringement.

If availing of the civil provisions, the trademark owner may file the following actions with a court of competent jurisdiction against infringers:

  • a lawsuit for a violation of rights that invokes one or more claims (eg, the prohibition of the violation, the removal of infringing items from economic flows, the destruction of the infringing items, compensation for damages and publication of the judgment; the violation of copyright and related rights also constitutes a civil penalty); and
  • a request for temporary injunction.

In the event of an act of unfair competition, the holder of the infringed right may also bring an action in accordance with the rules governing the protection of competition.

At first instance, a circuit court in Ljubljana is empowered to hear trademark disputes.

Infringement of IP rights may also constitute a criminal offence. Criminal provisions fall within the competence of the police, the public prosecutor's office and local competent courts. According to the Slovenian Penal Act (KZ-1), unjustified use of a foreign designation or sign or model is an offence incurring a prison sentence of up to three years.

Administrative measures are implemented by the Financial Administration of Slovenia and the Market Inspectorate of Slovenia. The procedure for implementing these measures can be initiated at the request of the rights holder or ex officio. The rights holder may file a request for customs action with the Financial Administration, specifying information on the goods and contact details of persons to be notified in the event of a suspicion that goods are infringing IP rights.

Procedural format and timing

What is the format of the infringement proceeding?

The infringement procedure is governed by the provisions of the Civil Procedure Act. The procedure allows for written evidence, live testimonies, discoveries and experts.

The case is decided by a single judge.

It usually takes between 12 to 36 months for a court to decide; however, the exact duration depends on the complexity of the case.

Burden of proof

What is the burden of proof to establish infringement or dilution?

Each party is obliged to proof its statements.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

The rights to enforce judicial protection belong, in addition to the trademark owners, also to:

  • persons entitled to use a collective mark;
  • owners of exclusive licence to the extent to which the owner’s rights are assigned to them by law or through a legal transaction; and
  • professional associations established for the protection of industrial property rights to the extent to which the owner’s rights are assigned to them by law or through a legal transaction.

The criminal complaint can be filed by anyone.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The rightsholder may file a request for a customs application with the Financial Administration of Slovenia, specifying information on the goods and contact details of persons to be notified in the event of a suspicion that goods are infringing IP rights. The procedure for implementing the measures can be initiated at the request of the rights holder or ex officio. In the event of a suspicion of infringement, the goods are to be temporarily suspended. If the importer of the seized goods does not agree with the destruction of the goods, the rights holder must file an infringement action with the competent court, otherwise the goods will be released

Activities that take place outside the country of registration cannot support a charge of infringement or dilution.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

If the court decides to take the proposed evidence and that evidence is in the possession of the opposite party, that party shall present such evidence at the request of the court. The provisions of the Civil Procedure Act shall apply to the proceedings for the presentation of evidence.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

It usually takes between 12 to 36 months for a court to decide; however, the exact duration depends on the complexity of the case.

It usually takes up to three months for a court to decide in the preliminary injunction.

Limitation period

What is the limitation period for filing an infringement action?

The deadline to file the action is three years from the date that the plaintiff learned about the infringement.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The costs associated with an infringement or dilution action, including trial preparation, trial and appeal include official court fees and attorneys' costs.

Appeals

What avenues of appeal are available?

The appeal can be filed with the Higher Court in Ljubljana within 30 days of receipt of the decision.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

The infringer may attack the mark by filing a non-use cancellation action or use any other applicable action to remove the mark from the register.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The plaintiff may request the following:

  • prohibition of current and future infringements;
  • recall of infringing items from commercial channels, taking account of the interests of bona fide third parties;
  • rectification of the adverse situation caused by the infringement;
  • irrevocable removal of infringing items from commercial channels;
  • destruction of infringing items;
  • destruction of the means of infringement that are owned by the infringer and intended or used exclusively or principally for infringement;
  • surrender of infringing items to the plaintiff against reimbursement of the costs of their production; and
  • publication of the judgment.

Punitive damages may be collected.

There are two types of criminal remedies according to Slovenian Criminal Act:

  • imprisonment for a term not exceeding three years; and
  • seizure of the infringing goods.
ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

In Slovenia there are several ADR techniques available and are commonly used. The parties can choose several ADR providers, including the court. The limitation period of the claim subject to mediation shall not run for the duration of the mediation.

If mediation ends without a dispute settlement agreement, the limitation period shall continue from the moment when the procedure is completed without a dispute settlement agreement. The time elapsed before mediation begins shall be counted against the statutory limitation period.

The ADR proceeding are usually beneficial for parties because of their consensual nature and are not as time consuming as court proceedings.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

None.