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10 December 2007

No likelihood of confusion between TS SLOVENIA and TIS

The Slovenian Intellectual Property Office has rejected the opposition filed by Telekom Slovenije dd against the registration of the mark TS SLOVENIA based on its earlier registered marks TIS, ETIS, TELEKOM SLOVENIJE and TISA, finding that there was no likelihood of confusion between the marks. Among other things, the office rejected Telekom Slovenije's argument that 'TS' represented the abbreviation of its name.

02 October 2007

Slovenian Intellectual Property Office registers first sound mark

The Slovenian Intellectual Property Office has registered a sound mark for the first time. The office seems to have followed the case law of the Office for Harmonization in the Internal Market, under which sound marks represented graphically on a musical stave may be registered.

12 June 2007

MERCATOR opposition refused for the second time

In a case on remand from the Administrative Court, SIPO has dismissed an opposition to the registration of the mark MERCATOR, despite the fact that the court had set aside its earlier decision to dismiss the opposition. SIPO held that although prior MERCATOR marks cover similar goods and enjoy a reputation among consumers, the two sets of marks are sufficiently different graphically and conceptually to eliminate confusion.

07 March 2007

'Two Bulls' design not confusingly similar to RED BULL marks

The Slovenian Intellectual Property Office has refused Red Bull GmbH's opposition against an application to register the trademark WODKA MASZKA (and 'Two Bulls' design) covering alcoholic drinks. It held that the mark is not confusingly similar to several earlier RED BULL word and device marks owned by Red Bull.

05 December 2006

SCARPA not necessarily descriptive

The Slovenian Supreme Court has overturned a decision of the Slovenian Intellectual Property Office, in which it had refused an opposition against the registration of the trademark LA SCARPA on the grounds that the word 'scarpa', meaning 'shoe' in Italian, was descriptive. The Supreme Court remitted the case back to the office, instructing it to establish whether, among other things, the word is understood by the average Slovenian consumer.

18 October 2006

Shape of a bottle registered

The Slovenian Intellectual Property Office has allowed the registration of a trademark in the shape of a bottle covering goods in Class 32 of the Nice Classification, including mineral waters, sodas and other non-alcoholic beverages. However, it refused registration in respect of goods in Class 21 (bottles) and services in Class 39 (bottling and packing of drinks) on the grounds that the mark was descriptive for those goods and services.

09 May 2006

Amendments to Industrial Property Act in force

Amendments to the Slovenian Industrial Property Act have come into force. Among other things, the amendments identify the date from which to calculate the start of the five-year non-use grace period for trademark registrations and relax significantly the conditions to obtain a temporary injunction to prevent trademark infringement.

09 March 2006

Company name blocks trademark registration for the first time

The Slovenian Intellectual Property Office has partly refused a trademark application for EUROCITY due to the existence of the earlier company name Eurocity doo. This is the first time that the SIPO has refused a trademark application on the grounds that it is similar to an earlier company name since the Industrial Property Act came into force on December 7 2001.

04 March 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.

17 February 2005

Date of application for extended Community trademarks clarified

The Slovenian Intellectual Property Office has issued a decision clarifying the application date for Community trademark applications extended to Slovenia following its accession to the European Union on May 1 2004. It held that even if a Community trademark application was filed for registration before May 1 2004, it will be deemed as having the application date of May 1 2004.

06 May 2004

SIPO not sold on MERCATOR opposition

In Poslovni Sistem Mercator dd v Tabacofina-Vander Elst NV, the Slovenian Intellectual Property Office has dismissed the plaintiff's opposition to the registration of MERCATOR for cigarettes and tobacco. It held, among other things, that although the plaintiff's own MERCATOR marks are well known, the graphical and conceptual differences between the two parties' marks eliminated any likelihood of confusion.

07 October 2003

G-Star loses fight for ELWOOD mark

In G-Star International v Wheelie Den Distribution LLC, the Slovenian Intellectual Property Office has rejected G-Star International's opposition to the registration of the mark ELWOOD and design. It held that (i) G-Star's registration for ELWOOD was not well known in Slovenia, and (ii) its Slovenian registration was not valid at the time of Wheelie Den Distribution's application.