Slovenia

The main conversation point in the Slovenian trademark community is the revised IP Act which came into force on 29 March 2020, transposing the EU Trademark Directive into national law. As in many EU member states, the graphical representation requirement has been removed and companies are now exploring novel ways to represent their brands using non-traditional marks. Practitioners are also enthused about the extension of the non-use defence – previously limited to cancellation actions – to oppositions, non-use revocations and infringement proceedings. At an administrative level, invalidation and revocation proceedings are still handled by the district court for now, but will be transferred to the Slovenian IP Office (SIPO) in the coming years.

Firms

ITEM doo

“ITEM is the sort of firm that any external counsel would love to work with. Its internal organisation and infrastructure are superb; its staff are experienced, well educated and highly professional; and communications are answered promptly, precisely and comprehensively.” As a result, the patent and trademark agency receives the most effusive feedback of any Slovenian firm. “One of the best litigators in the country”, managing partner Gregor Maček is a source of inspiration for the group: “He excels at every aspect of brand protection and provides holistic advice through a brilliant combination of theoretical and practical knowledge.” Like fellow all-rounder Jasna Habič, he is “committed to providing reliable and responsive assistance of the highest quality”. Alongside dispute resolution specialist Katja Kovačič, they receive ample praise for their “accurate and detailed reports, which are always based on an in-depth analysis of each case. They deliver under pressure and are fantastic colleagues you can rely on”. When it comes to anti-counterfeiting actions, Igor Šetinc and WTR 1000 debutante Veronika Vojir Vokal are a class apart: “If they receive a notification from Customs, they revert back to their clients immediately with a comprehensive list of options and solutions to choose from.”  Meanwhile, the “open-minded and responsive” Lea Kravos has trademark search and portfolio management on lock. “An expert on domestic and EU marks, Lea researches every matter thoroughly and very helpfully liaises with foreign counsel to ensure that registration processes run smoothly.”

Patentna pisarna doo

A “leading and specialised IP firm with an impressive clientele”, Patentna pisarna is a preferred choice for decisive, cost-effective representation before local and European institutions. It prosecutes rights both regionally and worldwide, drawing on an extensive network of associates that it has spent 60 years cultivating. The firm is home to Vesna Kovič, “a brilliant litigator who provides complete as well as pragmatic guidance in complex cases”. She spent eight years at the SIPO and is thus intimately familiar with its workings.

PETOŠEVIĆ

The Slovenian outpost of PETOŠEVIĆ may be lean in size, but it has the full weight of this Eastern European prosecution powerhouse behind it. The wider firm has some 120 professionals based in 17 offices across the continent, who provide a superior service in 30-plus jurisdictions. It offers robust support at every stage of the brand lifecycle, but exceeds all expectations in portfolio management and administrative actions, where its practitioners showcase seamless interoffice cooperation to great effect. Running a tight ship at the local level is Barbara Mencin.

Šelih & Partnerji op doo

At the heart of commercial outfit Šelih & Partnerji is a “wonderful and highly specialised IP team”. Litigation is handled with poise; while close collaboration with the M&A division gets high-stakes IP transactions across the line with minimum fuss. The pharmaceutical space is a happy hunting ground for the set, which has abundant knowledge of regulatory and advertising law. Versatile operators Nina Šelih and Nataša Pipan Nahtigal are lauded for their “diligence, expertise and client-facing approach”.

Wolf Theiss

Capitalising on the firm’s deep presence across Central and Southeast Europe, the Ljubljana branch of Wolf Theiss judiciously deploys the international resources at its disposal to deliver efficient cross-border assistance. Its offering is appreciated by multinationals looking to enforce their rights in the region and seek out lucrative monetisation opportunities. A central pillar of the practice, “dedicated lawyer” Klara Miletič dispenses “valuable, hands-on valuable advice in a calm and thoughtful manner”. She is a go-to for dispute resolution and anti-counterfeiting instructions.

Zivko Mijatovic & Partners 

Zivko Mijatovic & Partners’ USP is flawless prosecution, portfolio management and enforcement in 15 countries through a single point of contact. Its anti-counterfeiting offering – comprising customs applications, seizures and destruction of infringing products –  is a boon for companies looking to clean up their brands in the Balkans. Metka Malis Furlan “is a great leader. She is passionate about her work and handles things quickly and proactively, and is always prepared to take that extra step for clients. Metka’s positive outlook and style make collaborating with her an absolute pleasure”.

Other recommended experts

Perceptive strategist Andrej Bukovnik of Bukovnik & Kulbaba has a pristine track record in anti-counterfeiting and enforcement proceedings. As a dual-qualified attorney, he splits his time between Slovenia and the Benelux, where he also represents rights holders before local IP offices and the EUIPO. Transactions whizz Rok Jerovšek has mastered the art of IP value creation in the gaming, telecommunications and media industries. He operates out of odvetniška pisarna Jerovšek Malis.

Individuals

  • Vesna Kovič - Patentna pisarna doo
  • Gregor Maček - ITEM doo
  • Nataša Pipan Nahtigal - Šelih & Partnerji op doo
  • Andrej Bukovnik - Bukovnik & Kulbaba IP Guardians
  • Jasna Habič - ITEM doo
  • Rok Jerovšek - Odvetniška pisarna Jerovšek Malis
  • Katja Kovačič - ITEM doo
  • Lea Kravos - ITEM doo
  • Metka Malis Furlan - Zivko Mijatovic & Partners 
  • Klara Miletič - Wolf Theiss
  • Nina Šelih - Šelih & Partnerji op doo
  • Igor Šetinc - ITEM doo
  • Veronika Vojir Vokal - ITEM doo