SLOVENIA Law and Practice Contributed by: Nataša Pipan Nahtigal, Veronika Novak and Katarina Čepon, Šelih & partnerji
Famous or Well-Known Marks Such trade marks are protected if they have a reputa- tion in the Republic of Slovenia or for EU trade marks if they have reputation in the EU. 2.3 Trade Mark Registration System Trade Mark Registration Trade mark registration is required to obtain full and enforceable trade mark rights, as exclusive rights arise upon registration of the trade mark. For unregistered signs, protection is limited. Procedure, Timelines and Costs of Registration Trade mark application is filed with SIPO, which is responsible for application examination and registra- tion. The applicant must file a trade mark application together with: • list of goods/services; • where the mark is not a word mark, a representa- tion of the mark must be filed, whether in visual form or, where appropriate (eg, for sound marks), in another suitable format; • proof of payment of official application fees; The trade mark application is first examined by the Office and, if it meets the formal requirements, is published. Third parties then have a period of three months to file an opposition against the registration. If no opposition is filed, or if the opposition is unsuc- cessful or only partially successful, SIPO notifies the applicant that the trade mark will proceed to registra- tion upon payment of the official registration fee. Once the fee is paid, the trade mark is registered. In the absence of opposition, the trade mark regis- tration process typically takes approximately four months. • Power of Attorney, where applicable. Multi-class applications are allowed. The application fee for a trade mark covering up to three classes is EUR100, with an additional EUR20 payable for each additional class. For a collective trade mark, the application fee is EUR250, with an additional EUR50 for each additional class. The reg- istration fee, which includes maintenance of the trade
• Industrial Property Act (Official Gazette of the Republic of Slovenia [Uradni list RS], No. 51/06; ZIL-1) 2. Regulations: • Rules on trade marks (Official Gazette of the Republic of Slovenia [Uradni list RS], No. 93/20 and 9/24) • Rules on the procedure relating to requests con- cerning the international registration of a trade mark (Official Gazette of the Republic of Slovenia [Uradni list RS], No. 124/06) • Regulation on Fees Charged by the Intellectual Property Office of the Republic of Slovenia (Official Gazette of the Republic of Slovenia [Uradni list RS], No. 127/23) 3. Case law Types of Signs That are Protected Words, numbers, logos, colours, shapes and sounds. Unregistered or Common Law Trade Marks Unregistered trade marks may constitute grounds for opposition to the registration of a trade mark, provid- ed that the unregistered sign was used in the course of trade prior to the filing date of the trade mark appli- cation or the claimed priority date, if any. 2.2 Requirements for Trade Mark Protection The Essential Elements of Trade Mark Protection The essential elements are: • distinctiveness; • absence of absolute grounds for refusal; • absence of conflicting earlier rights; • registration as the basis of protection; and • use requirement (five years since the trade mark registration). Acquired Distinctiveness or Secondary Meaning A sign shall not be refused registration on grounds of lack of distinctiveness if, before the filing date, it has acquired distinctive character through use. This may be established, eg, by evidence of the duration and intensity of use, advertising efforts, and the market share of the goods or services under the mark.
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