Trade and Service Marks
– See “Patents of Invention“.
Membership in International Conventions
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since June 18, 1992.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since June 25, 1991.
– Convention Establishing the World Intellectual Property Organization (WIPO), since June 25, 1991.
– Madrid Agreement Concerning the International Registration of Marks, Stockholm Act, since June 25, 1991.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, Geneva Act, since June 25, 1991.
– WTO’s TRIPS Agreement, since July 30, 1995.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since March 12, 1998.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since August 10, 2001.
– Trademark Law Treaty, since May 26, 2002.
– European Union Trade Mark Regulation.
Applicant: any legal or natural person. Foreigners: must appoint a professional representative in Slovenia (though they may perform some acts without a representative). Protection of foreigners: they enjoy the same rights as Slovenian nationals in accordance with international contracts, conventions or on the basis of reciprocity. Kinds of protection: trade and service marks, collective marks, word marks, device marks and combinations of both, b&w or color, three-dimensional marks, sound marks. Novelty: the mark applied for must not conflict with a mark previously protected in Slovenia. Not registrable: a sign (1) which cannot constitute a mark; (2) which is devoid of any distinctive character; (3) which serves, in trade, to designate merely the kind, quality, quantity, intended value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods and services; (4) which contains or consists of a geographical indication identifying wines or spirits, where the mark application relates to wines and spirits not having this origin; (5) which 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; (6) which 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; (7) which is contrary to law and morality; (8) which deceives the public, in particular as to the nature, quality or geographical origin of the goods or services; (9) which contains official signs or hallmarks for controlling or guaranteeing the quality of goods, or imitations thereof; (10) which has not been authorized by the competent authorities and should be refused pursuant to Article 6ter of the Paris Convention; (11) which 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; and (12) which contains or consists of a designation of origin or a geographical indication registered in accordance with the Council Regulation (EEC) No 2081/92 of July 14, 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, 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 Commission. Collective (association) marks: may be registered. Service marks: may be registered. Classification: international. One application may cover several classes. Priority: six months according to Paris Convention. Electronic filing: available.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (no legalization required);
2. List of goods and/or services, classified in accordance with International Classification;
3. If the mark is other than a word in block lettering, 6 black and white prints (max. 8 x 8 cm); if the mark is in color, 6 color specimens;
4. For collective marks, a general instrument governing the grant of the right to use the collective mark.
Examination: all applications are subjected to an examination as to formal correctness and completeness of the application and absolute exceptions to protection. Disclaimers: not available. Amendments: the mark itself cannot be modified; the list of goods and/or services can be restricted, but not broadened.
Granting: when the mark has been formally accepted, it is published in the Official Gazette. Opposition: can be filed against the mark within three months after publication by the owner of an earlier mark on relative grounds. Observations by third parties: following the publication of a mark, any person (who shall not be a party to the proceedings) may present opposing observations concerning absolute grounds for rejection. The Office will communicate them to the applicant. Registration: if no opposition is filed or if the Patent Office decides that it is not justified, a decision of grant is issued. Duration: ten years from the date of filing the application. Renewal: for further periods of ten years, to be applied for before the corresponding anniversary of the filing date. Grace period: six months, with 50% fine. Use: the owner of the mark is required to use the mark. Non-use within five years may lead to cancellation (see below). Licenses: exclusive or non-exclusive licenses can be granted. Division: possible.
Modification of Protection after Registration
Right of prior user: a prior user may institute an action before the competent court requesting that he be declared the holder of the mark, proving generally known prior use of the mark on the market. His request is not granted if the holder of the mark proves that he has used the mark for as long or longer. After a period of five years from the registration, this right of a prior user lapses. Exhaustion of rights: regional. Infringement: legal action against infringement of rights can be brought before the court within three years after the infringement and the perpetrator have become known to the owner of the right, but monetary claims can only be enforced for infringing acts having taken place during the five years preceding the filing of the action. Nullification action: at any time, any interested person can institute a nullification action before the competent court, submitting evidence that at the date of filing the application, the absolute conditions of protection were not fulfilled. Action for cancellation of a mark: if the owner of a mark fails to use the mark, without justified reason, for more than five years after the registration or the last serious use, an interested party can institute a cancellation action before the competent court. The owner of the mark must prove its use. Action for removal of a mark from the Register: can be instituted before the competent court if (1) the applicant was acting in bad faith when filing the application; (2) the mark was registered contrary to relative grounds for refusal; (3) in consequence of acts or inactivity of the owner, the mark has become a common name in the trade; or (4) in sequence of the use by the owner or with his consent, the mark is liable to mislead the public. The action under (2) is not admissible after the expiry of a five-year period following the registration unless the applicant was acting in bad faith when filing the application.
European Union and International Trademark Conversions
European Union trademark conversion into a national trademark is possible. Such trademark will be examined and processed by the SIPO. Filing requirements are the same as for filing a national trademark application. European Union trademark applications filed before the accession of Slovenia to the European Union (May 1, 2004) will be valid as national trademarks as of the date of accession to the EU. Validity of EUTMs filed after May 1, 2004 and converted into national applications begins on the date on which they were filed with the EUIPO.