Slovenia | World Trademark Review

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27 May 2020

Impact of covid-19 pandemic on time frames in judicial and administrative matters

Following the declaration of a state of emergency on 12 March 2020, the Slovenian government imposed several measures aimed at slowing the spread of the virus. This update focuses on the measures that affected time frames in judicial, administrative and other public law matters. Read more

30 Mar 2020

Amendments to the Industrial Property Act come into force – what you need to know

Amendments to the Industrial Property Act, which were adopted by the Slovenian Parliament on 4 March 2020, came into force on 29 March 2020. This update summarises the key changes for applicants and trademark owners. Read more

4 Jul 2018

Higher Court: imitating the appearance of a restaurant constitutes unfair competition

In a significant decision, Slovenia’s Higher Court has, for the first time, granted protection to the trade dress of a restaurant based on unfair competition.

9 Mar 2017

Higher Court finds forwarding agent liable for infringement

In Universal City Studios LLC v Jadroagent International dd, the Higher Court has held that a forwarding agent was liable for copyright and trademark infringement, and ordered it to reimburse the rights holder’s storage and destruction costs. This judgment is significant as it imposes stricter liability on forwarding agents, forcing them to be involved in the prevention of trademark and/or copyright infringement.

Anti-Counterfeiting

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19 May 2015

Number of customs detentions increase, value of detained goods decrease in 2014

According to a report issued by the Financial Administration of the Republic of Slovenia, customs officials recorded 4,053 detentions in 2014, which is the highest number of temporary customs detention cases to date. The number of infringing items detained in 2014 more than doubled compared to 2013, but the estimated value of the goods decreased from almost €19 million in 2013 to €12.5 million in 2014.

24 Oct 2014

Supreme Court rules on destruction and storage costs in customs cases

The Supreme Court has issued an important decision in a case involving the detention of a large shipment of counterfeit cosmetic products bearing the mark of a well-known multinational consumer goods company, in transit through Slovenia to another EU member state. The decision addressed the issue of whether it was possible to claim storage and destruction costs from infringers.

3 Sep 2013

Import of infringing goods into EU through Slovenia constitutes infringement

In Louis Vuitton Malletier Société Anonyme v Interkop 2006 doo, the Circuit Court of Ljubljana has decided for the first time on the scope of jurisdiction of the Slovenian courts in cases where infringing goods are imported into the European Union through Slovenia, but are destined to another EU state.

20 Mar 2013

Higher Court issues surprising decision regarding storage and destruction costs

In a recent case involving the seizure of infringing goods by Customs, the Higher Court in Ljubljana has issued a controversial decision that was contrary to the established practice of ordering the defendant to pay the costs of the storage and destruction of the infringing goods. This unexpected decision could discourage, or even prevent, IP rights holders from recovering storage and destruction costs.

Brand management

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18 Jun 2012

Supreme Court recognises that unregistered sign may be transferred by contract

The Supreme Court has recognised for the first time that an unregistered sign may, under certain conditions, be transferred by way of contract. The court held that the transfer of an unregistered sign used as a trademark may be achieved both by way of singular legal succession and by way of universal legal succession.

Enforcement and Litigation

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20 Jun 2016

Defendant's failure to disclose scope of infringement results in damages

In Coty Germany GmbH v Piskar Klavdija sp the Ljubljana Higher Court has awarded the full amount of claimed damages to the plaintiff. The court held that in infringement damages cases the burden of proof for the scope of infringement must be shifted to the defendant, and that the defendant had failed to meet this burden.

17 Jul 2015

Higher Court: forwarding agent is jointly and severally liable for infringement with importer

In Louis Vuitton v Interkop, the Higher Court has held that a forwarding agent is jointly and severally liable for infringement with the importer of the infringing goods, and that both companies are jointly and severally liable for arranging the destruction of the infringing goods at their own expense under customs supervision. The decision should make it easier for trademark holders to enforce their rights by suing the forwarding agents.

6 Oct 2014

Court shifts burden of proof to defendant in parallel import case

In Coty Germany GmbH v Piskar Klavdija sp, the Circuit Court of Ljubljana has held that products whose serial numbers and bar codes had been removed were not considered to be genuine, unless the alleged infringer could prove that they had legally been put on the relevant market by the trademark holder.

8 Jan 2013

Intellectual Property Office joins Seniority Project

The Slovenian Intellectual Property Office has implemented the Seniority Project, a joint project between OHIM and the patent and trademark offices of EU member states. The project aims to establish links among the seniority data in the national and Community databases and make this information accessible online.

Online

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14 Jan 2016

Individual online purchases and mail delivery constitute trademark infringement

The judgment in Rolex SA v Dragica Poric is significant because it marks the first time that a Slovenian court has ruled that online purchases on a foreign website which are imported into Slovenia constitute infringement.

5 Oct 2010

IDNs to be launched under '.si' extension

ARNES, the entity responsible for managing the '.si' country-code top-level domain, has announced that new rules governing '.si' domain names will enter into force on October 20 2010, allowing the registration of internationalised domain names. The rules will create new opportunities for companies and internet users by allowing them to register and use domains in the Slovenian language.

11 Jul 2008

'.si' domain name registration rules relaxed

ARNES, the Slovenian registration authority for the '.si' country-code top-level domain, has announced its plans to relax the registration rules for '.si' domain names. Among other things, the new rules will allow natural persons and foreign companies to register '.si' domain names.

4 Mar 2005

'.si' domain name liberalization approaches

The Slovenian domain name registry has announced the relaxation of
the rules applying to the registration of '.si' country-code top-level domain
names. From April 4 2005 registrants will no longer be restricted to certain set formats for their domain names. Trademark holders meeting
the local presence requirements have until March 31 to file an application to
register their trademarks as '.si' ccTLDs prior to this relaxation.

Portfolio Management

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25 Jan 2016

Plaintiff's legal interest in non-use trademark cancellation equals public interest in removing unused trademarks from register

In a recently released decision the Ljubljana Higher Court held that a plaintiff's legal interest in non-use cancellation of a trademark which had not actually been used should always be recognised, although Article 120(1) of the Industrial Property Act appears to provide that only parties with a specific interest can request cancellation.

1 Apr 2015

SIPO: limitation of goods/services within class not possible at renewal

In a decision concerning the renewal of the national trademark EVA, the Slovenian Intellectual Property Office has decided that it is not possible to limit the list of goods and services within a class when applying for the renewal of a trademark registration, even though Article 52(3) of the Industrial Property Act explicitly states that it is possible to do so.

5 Feb 2015

Supreme Court issues landmark decision in cancellation action

In Terraco AB v Calcit doo, the Supreme Court has held that the lack of use of a CTM in Slovenia does not constitute a ground for rejecting an invalidation action against a national trademark based on that CTM. The decision is significant as it is the first time that a Slovenian court has considered this issue.

11 Jun 2014

SIPO held to have committed procedural violation during provisional refusal phase

SIPO has granted protection to the international trademark LIGHT RADIO for a restricted list of goods in Class 9 following a decision by the Administrative Court that a significant violation of the administrative procedure provisions had occurred during the provisional refusal phase.

Trademark law

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27 May 2014

Patent applications increase, but trademark and design applications decrease in 2013

The SIPO has published its annual report for 2013, which includes statistics related to patents, designs and trademarks. While the total number of patent applications increased compared to 2012, the report shows a decrease in the number of national industrial design applications and of applications filed with WIPO under the Hague Agreement, as well as a considerable decrease in the number of national and international trademark applications.

30 Apr 2014

SIPO to start applying common practice on B&W marks from July

SIPO has published the Slovenian translation of the Common Communication on the Common Practice of the Scope of Protection of Black and White Marks, issued within the framework of the OHIM Convergence Programme. The subject of the communication is the convergence of the different handlings of trademarks in B&W and/or greyscale as regards priority, relative grounds and genuine use.

4 Feb 2014

Amendment regarding restitution of lapsed trademark applications introduced

An amendment to Article 67 of the Industrial Property Act has introduced a new time limit to request the continuation of the proceedings following a lapsed trademark application. Previously, the procedure could be continued even several years after the applicant had failed to meet a deadline.

19 Nov 2013

MARTINI SPIRITO granted protection despite initial objections on absolute grounds

The Slovenian Intellectual Property Office has granted protection to Bacardi’s international trademark MARTINI SPIRITO for "alcoholic beverages (except beers)", despite having refused it provisionally on absolute grounds. The case reveals a deficiency in the Slovenian trademark examination procedure - SIPO had failed to provide specific facts and reasons for its provisional refusal, leaving Bacardi in the dark.

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Ben Natter

Partner

New York NY, United States

Haug Partners LLP

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