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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).
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;
- the Convention Establishing the World Intellectual Property Organisation;
- the Paris Convention for the Protection of Industrial Property;
- 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;
- the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks; and
- the Nairobi Treaty on the Protection of the Olympic Symbol.
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.
Rights and protection
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.
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:
- regional (ie, EU trademarks); and
- international (designated to Slovenia).
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.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Yes, power of attorney is required, although no notarisation or legalisation is required.
What information and documentation must be submitted in a trademark registration application?
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).
What rules govern the representation of the mark in the application?
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.
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
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.
How are priority rights claimed?
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.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
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.
What factors does the authority consider in its examination of the application?
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.
Does the authority check for relative grounds for refusal (eg, through searches)?
Only if an opposition is filed against the application.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
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.
Can rejected applications be appealed? If so, what procedures apply?
Yes, an administrative dispute may be initiated against the unfavourable decision and filed with the Administrative Court within 30 days of receipt of the IP Office's decision to reject the application.
When does a trademark registration formally come into effect?
Trademark registration formally comes into effect with the issuance of the registration decision and is valid from the application date.
What is the term of protection and how can a registration be renewed?
The term for 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.
What registration fees apply?
The registration fee for a mark specifying up to three classes is €150, plus €50 for each additional class.
What is the usual timeframe from filing to 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).
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
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.
What is the usual timeframe for opposition proceedings?
It usually takes from 12 to 24 months for the IP Office to decide in the opposition procedure.
Are opposition decisions subject to appeal? If so, what procedures apply?
Yes, an administrative dispute may be initiated against the unfavourable decision and filed with the Administrative Court within 30 days from the receipt of the IP Office's decision to reject the opposition.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
Yes. 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.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
A trademark registration can be revoked on any of the following grounds:
- The applicant filed the application in bad faith;
- The mark has been registered, subject to the application filing date, contrary to Article 44 (relative grounds for refusal);
- Due to 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; or
- Due to use of the mark by the owner or with its 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 the goods or services.
A trademark can be invalidated if it has been registered, subject to the application filing date, contrary to Article 42 (the mark is not distinctive) or Article 43 (absolute grounds for refusal).
Who may file a request for revocation and what is the statute of limitations for filing a request?
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 from the registration date.
What are the evidentiary and procedural requirements for revocation proceedings?
Invalidation and revocation actions with written arguments are filed with a court of competent jurisdiction by any interested party. Only in case of a cancellation action for non-use will the defendant bear the burden of proof; in all other actions the plaintiff bears the burden of proof.
What is the appeal procedure for cancellations or revocations?
The appeal can be filed with the Higher Court in Ljubljana within 15 days from receipt of the decision.
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.
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.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
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.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
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. In order to have legal effect, the licence must be valid and comply with the applicable law.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
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 sub-license.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
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 security interest agreement).
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.