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Which courts are empowered to hear trademark disputes?
At first instance a circuit court in Ljubljana is empowered to hear trademark disputes.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
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 violation of rights which 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.
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/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.
Who can file a trademark infringement action?
The infringement action is filed by the owner of the mark.
What is the statute of limitations for filing infringement actions?
The deadline to file the action is three years from the date that the plaintiff learned about the infringement.
What is the usual timeframe for infringement actions?
It usually takes from 12 to 36 months for the court to decide; however the exact duration depends on the complexity of the case.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
A temporary injunction can be granted upon a written request of the plaintiff, if the following conditions are met:
- The plaintiff is the owner of the mark; and
- The plaintiff's rights have been infringed or there exists an actual danger of infringement.
The plaintiff must also show probable grounds for its belief that:
- a danger exists that the enforcement of claims will be made impossible or difficult;
- the adoption of a provisional measure is necessary to avoid damage that is difficult to repair; or
- a provisional measure which may prove unfounded in the course of the proceedings will not have consequences for the alleged infringer which are more detrimental than those that would fall on the rights holder due to non-adoption of such measure.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
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.
What customs enforcement measures are available to halt the import or export of infringing goods?
The rights holder may file a request for 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.
What defences are available to infringers?
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.
What is the appeal procedure for infringement decisions?
The appeal can be filed with the Higher Court in Ljubljana within 15 days of receipt of the decision.
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