Slovenian legislative overhaul reflects valuable steps towards harmonisation with EU IP framework
In order to harmonise its legal framework with that of the European Union and international standards, the National Assembly of Slovenia has implemented amendments to the Slovenian Industrial Property Act, which entered into force on 27 July 2023. The amendments’ primary purpose is to simplify procedures, increase affordability and improve effectiveness.
Modernising document submission
One of the most significant changes is the shift from requiring an original power of attorney to accepting scanned copies in electronic form. This change not only simplifies the process but also updates it to be in line with digital practices.
In cases where a client has authorised multiple representatives, unless specified otherwise, the Slovenian Intellectual Property Office (SIPO) will direct documents to the most recent registered representative.
The amendments now permit any party involved in proceedings to request an extension of time, which is a privilege that was previously reserved for applicants and right holders. This is necessary because in new invalidation or revocation proceedings, both trademark holders and petitioners will now have a three-month time limit to respond to other parties’ submissions. Therefore, all parties to involved in proceedings before the SIPO will be able to extend time limits, unless this is explicitly excluded. This change increases flexibility in the process and acknowledges the needs of all stakeholders.
Shortened time limits
The amount of time allowed to request an extension of proceedings after missing a deadline (not fulfilling the obligations required in the procedure for obtaining a right) has been reduced from six to four months, which will be effective from the end of September 2023. However, the two-month timeframe for filing such a request from the point of discovering the delay remains.
This adjustment aims to enhance timeliness and efficiency, but there is still uncertainty when it comes to specific delays; this new remedy can be applied but the SIPO has displayed reluctance in uniformly applying it.
Representation before the courts and SIPO
The amendments distinguish between representation before courts and the SIPO. While court representation requires individuals to be attorneys-at-law or state-bar examination passers, SIPO representatives can be patent or trademark attorneys registered on its list of IP attorneys.
New uniform tariff
The Slovenian IP Attorneys Association will introduce a uniform representative’s tariff within one year of the amendment entering into force.
The amendments explicitly stipulate that evidence in foreign languages must be translated into Slovenian to ensure clarity and accessibility in proceedings.
Alterations pertaining to trademarks
Previously conducted by the district court in Ljubljana, the cancellation and annulment procedures are now administrative processes under the jurisdiction of the SIPO. While the new act is already in force, some aspects remain uncertain due to the absence of corresponding ministry regulations. This has created a situation where the official fees for such actions have yet to be determined.
Pending cases initiated before the amendments come into effect will be resolved under the previous legal framework.
A change was also introduced with respect to proving the reputation of EU trademarks as the basis for an opposition. According to the old provision, the reputation of the previous mark was assessed in Slovenia only, which caused many problems. Therefore, it has been added that in the case of a prior EU mark, its reputation will be assessed throughout the European Union.
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