EnforcementTrademark 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.
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.