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Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

On a first-to-file basis.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

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).

How are rights in unregistered marks established?

Rights in unregistered marks can be established as well-known marks within the meaning of Article 6bis of the Paris Convention or according to Article 63a of the Prevention of Restriction of Competition Act, which stipulates that the unauthorised use of the name, trade name, trademark or any other mark of another company constitutes an act of unfair competition, but regardless of whether the latter gave its consent if this creates or is likely to create confusion in the market.

Are any special rights and protections afforded to owners of well-known and famous marks?

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 which 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 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 which is a well-known mark in Slovenia within the meaning of Article 6bis of the Paris Convention or Article 16(3) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

To what extent are foreign trademark registrations recognised in your jurisdiction?

In Slovenia, the following trademarks are recognised:

  • national;
  • regional (ie, EU trademarks); and
  • international (designated to Slovenia).

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

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 (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.

Who may register trademarks?

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

What marks are registrable (including any non-traditional marks)?

Any sign or 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 – is eligible for registration as a trademark.

Can a mark acquire distinctiveness through use?

Yes, a mark can acquire distinctiveness through use.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

A trademark application can be refused based on absolute or relative grounds for refusal.

According to the absolute grounds for refusal, a sign shall not be eligible for registration as a mark if:

  • it cannot constitute a mark;
  • it is devoid of distinctive character;
  • it serves, in trade, to designate merely the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or 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 regarding 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 has not been authorised by the competent authorities and should be refused pursuant to Article 6ter of the Paris Convention;
  • it includes or imitates badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authorities to its registration has been given; or
  • it contains or consists of a designation of origin or a geographical indication registered in accordance with EU Regulation 2081/92 (14 July 1992) on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ L 208/92, p 1), provided that the circumstances referred to in Article 13 of that regulation exist and the sign does not relate to the same sort of product, and provided that the mark application has been filed after the date of filing of the application for the registration of a designation of origin or a geographical indication with the European Commission.

According to the relative grounds for refusal, a sign shall not be eligible for registration as a mark if:

  • it is identical to an earlier mark of another owner, and the goods or services for which the registration is applied are identical to the goods or services for which the earlier mark is registered;
  • because of its identicalness or similarity to the earlier mark of another owner and the identicalness or similarity of the goods or services covered by the sign and the mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier mark;
  • because of its identicalness or similarity to an earlier registered mark of another owner for goods or services which are not identical or similar to the goods or services for which the registration in question has been applied, the use without due cause of such sign would take unfair advantage of, or be detrimental to, the distinctive character or 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 of the earlier mark are likely to be damaged by such use;
  • it is identical or similar to a mark or unregistered sign which is well-known in Slovenia within the meaning of Article 6bis of the Paris Convention or Article 16(3) of TRIPs;
  • the owner of a mark registered in any member state of the Paris Convention or the World Trade Organisation proves that its agent or representative applied, without its consent, for registration of the sign in its own name; or
  • 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 express consent to the registration of such sign.

Are collective and certification marks registrable? If so, under what conditions?

Only collective marks are 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.

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