SIPO to issue statements of grant of protection for international marks

The Slovenian Intellectual Property Office (SIPO) is to start issuing statements of grant of protection for international trademarks designating Slovenia with application dates of January 1 2011 or later.
Until now, the designated offices under the Madrid System were not obliged to send statements of grant of protection to the World Intellectual Property Organisation (WIPO)’s International Bureau (IB) if no provisional refusal had been issued. In the past, the SIPO followed this practice, which meant that the international registration became fully valid within the territory of Slovenia if the SIPO had not sent a notification of provisional refusal to the IB within one year. Consequently, holders of international registrations were in a less favourable position compared to holders of national trademarks, since they were not formally informed about the status of their international registrations in Slovenia. 
The SIPO will eliminate this discrepancy in treatment by implementing the new Rules 18bis and 18ter of the Common Regulations under the Madrid Agreement concerning the International Registration of Marks and the Protocol related to that Agreement, which concern the status of an international trademark in a designated contracting party and the communication of that status to the IB. When all the procedures concerning an international registration have been completed before the SIPO, it will send to the IB a statement that the international registration has been granted protection in Slovenia - this must be done as soon as possible, or at the latest within the prescribed 12-month period.
The SIPO examines international registrations on absolute grounds ex officio, while the relative grounds are examined only if an opposition is filed. Oppositions must be filed within three months from the date of publication of the international registration in the WIPO Gazette of International Marks. The SIPO will inform the IB that an international registration is protected in Slovenia only after the expiration of the opposition period and after the ex officio examination has been carried out. However, it is not clear whether:
  • the SIPO will issue an individual statement of grant of protection for each international registration; or
  • it will only provide the IB with a list of international registrations, which will then be converted by WIPO into individual statements and forwarded to the holders of the international registrations.   
With regard to statements of grant of protection following a provisional refusal, the SIPO’s practice will remain unchanged. The SIPO will send to the IB a final statement indicating that the trademark:
  • is fully valid (statement of grant of protection);
  • is partially valid (statement of grant on protection indicating the goods and services for which the trademark is valid); or
  • has been refused (confirmation of total provisional refusal).
These statements will be sent to the IB once all the procedures before the SIPO have been completed.
From the point of view of international trademark owners, this change in practice is particularly significant since they should, in theory, be notified about the status of their registration before the expiry of the prescribed 12-month period. However, only the SIPO's practice will reveal whether trademark owners will actually be informed about the status of their trademarks within less than a year.  
Lea Kravos, ITEM doo, Ljubljana

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