SLOVENIA Law and Practice Contributed by: Nataša Pipan Nahtigal, Veronika Novak and Katarina Čepon, Šelih & partnerji
Limitations/Defences The trade mark owner cannot prohibit all third-party uses. Typical limitations and defences include: • use of signs or indications which are non-distinc- tive, or which relate to the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or provision of services, or other characteristics of the goods or services; • use of the trade mark for the purpose of identify- ing or referring to goods or services as those of the proprietor, in particular where it is necessary to indicate the intended purpose of a product or service (eg, accessories or spare parts); • use of a sign identical to or similar to the trade mark, where the third party began using that sign in good faith prior to the filing date or priority date; • the own-name defence (use of one’s own name or address in accordance with honest practices); • the non-use defence (where the proprietor is required to prove genuine use); and • the earlier rights defence. 2.6 Trade Mark Enforcement and Remedies Trade Mark Infringement, Dilution or Passing Off Trade mark infringement arises where a third party, without the consent of the trade mark proprietor, uses in the course of trade a sign that is (i) identical to the trade mark for identical goods or services, or (ii) identi- cal or similar to the trade mark for identical or similar goods or services, where such use gives rise to a like- lihood of confusion on the part of the relevant public, including the likelihood of association. Trade mark dilution is constituted where a third party uses, in the course of trade, a sign identical or similar to a trade mark that has a reputation, such that the relevant public establishes a link between the signs, and the use, without due cause, takes unfair advan- tage of or is detrimental to the distinctive character or reputation of the earlier trade mark, irrespective of any likelihood of confusion. Passing off , as a separate legal doctrine, is not rec- ognised under Slovenian law; however, equivalent protection is afforded under the rules on unfair com- petition. Such conduct is constituted where a third party, in the course of trade, uses signs that are lia-
mark for the first ten years, is EUR150, with an addi- tional EUR50 payable for each additional class. 2.4 Term, Use and Maintenance Term of Trade Mark Protection and Renewal Requirements Trade marks are protected for a period of ten years from the filing date, provided that they are registered. They may thereafter be renewed indefinitely for suc- cessive ten-year periods. To renew the trade mark, the owner shall pay a prescribed official fee. Genuine Use and Consequences of Non-Use Genuine use means actual use of the trade mark in the course of trade, and not merely symbolic use. Rel- evant criteria include whether the goods have been sold or the services offered under the mark, as well as advertising and marketing activities connected to genuine commercial activity. Use must not be purely internal or insignificant in commercial terms. If the trade mark is not put to genuine use within five years from registration, it becomes vulnerable to revocation. Furthermore, non-use may be invoked as a defence in infringement proceedings, as well as in opposition and invalidity proceedings. 2.5 Trade Mark Rights and Limitations Exclusive Rights Upon registration, the trade mark owner has the exclusive right to use the mark in the course of trade and to prevent third parties from: • using a sign identical to the trade mark in relation to goods or services identical to those covered by the trade mark; • using a sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services concerned, there exists a likelihood of confusion on the part of the public, including the likelihood of association; and • using a sign identical to or similar to the trade mark, irrespective of whether the goods or services are identical, similar or dissimilar to those covered by the trade mark, where the trade mark has a reputation in the Republic of Slovenia and where such use, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the trade mark.
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