01-27-2010 (Newsletter Issue 6/10)IP Bulletin Issued Monthly NowAs of January 2010, the Slovenian Industrial Porperty Bulletin will be issued monthly (formerly bi-monthly).
It will be available free of charge in an electronic format at the Slovenian IPO's website on the last workday of the current month.
The 2010 publication dates are: January 29th, February 26th, March 31st, April 30th, May 31st, June 30th, July 30th, August 31st, September 30th, October 29th, November 30th and December 31st.Source: Slovenian IP Office
Legal basis is the Industrial Property Act; its last amendment came into force on March 11, 2006.
Slovenia is a member of the Madrid Agreement and the Madrid Protocol. Since May 1st, 2004, Slovenia has been a member of the European Union.
Trademark protection is, except for some minor exceptions, obtained by registration.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, holograms, combinations or shades of colours, sounds, three-dimensional forms, the three dimensional form of a good or its packaging and any combination of the mentioned signs.
The following trademark types are registrable: trademarks (covering goods and/or services) and collective trademarks.
The application is filed with the Slovenian Intellectual Property Office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination and an examination of absolute grounds for refusal (e.g. distinctiveness, descriptiveness, deceptiveness), but no search for prior trademarks.
The processing time from first filing to registration is approx. 7 to 12 months. Before registration, the trademark application is published in a monthly “Bilten za industrijsko lastnino”.
The opposition period is 3 months from publication of the trademark application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
The opposition period is 3 months from publication of the registration or subsequent designation to Slovenia in the WIPO Gazette.
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months from the expiration date of the trademark.
If the trademark has not been used within 5 years from registration or has later not been used for 5 consecutive years, it may be subject to cancellation.
The official fee is EUR 100.00 for up to three classes and EUR 20.00 for each additional class.
Registration fees amount to EUR 150.00 for up to three classes and EUR 50.00 for each additional class.
Trademark Licence Agreement
In Slovenia a trademark licence agreement has to be in writing. A trademark can be licensed for all or only for some of the goods or services for which the trademark is registered. Licences may be exclusive or non-exclusive. Unless explicitly defined, it is deemed that a non-exclusive licence has been granted.
The licensor must ensure that the licensed rights are not encumbered or restricted in any manner in favour of third persons. The licensor must protect and defend the licensed rights against all claims by third parties.
The Industrial Property Act contains no obligation or time limit to record a licence agreement on the Trademark Register. The law does not define any effect of the recordal of a licence agreement. The practical effect of a recordal is that the essential information about the licence agreement is made public.
The licence agreement becomes effective upon its conclusion by both parties. The licensor or the licensee may request the recordal of the licence agreement.
It is advisable that the exclusive licence is recorded into the Register, since according to the Industrial Property Act; an exclusive licensee has the right to sue third parties for infringement. In general, contractually acquired rights may not have effect against third parties.
The use of the trademark by the licensee is regarded as effective use to defend a non-use cancellation regardless of whether the licence agreement is recorded or not. The licence agreement or an extract from the Register showing the recorded licence agreement may serve as additional supportive evidence for trademark use, but the recordal of the licence agreement as such is not obligatory for such use to be accepted as relevant use. Furthermore, any authorised use by third parties (not necessarily only by the licensee) is accepted as use in defence of a non-use cancellation action.
According to legal precedent, recordal of a licence allows the trademark holder to use the registered trademark regardless of possible allegations that this use infringes earlier rights (e.g. copyright, trademark rights). Again, if the licence agreement is not recorded, it may be argued that the licensee’s right to use the trademark has no effect against third parties.
According to the Industrial Property Act, the exclusive licensee has the right to sue third parties for infringement. Thus, it is advisable to record licence agreements on the Trademark Register. There is an evidentiary presumption that use of a recorded licensee is permitted use.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
|Word Mark Search (availability)
|Word Mark Search (identical)
|Extended Search (word mark, company name, domain)
|Device Mark Search (availability)
|Trademark Owner Search
|Company Name Search
|Domain Name Search (extended)
|i-Search (word mark availability + legal opinion)
The Prices above are S.M.D. Markeur Search Fees
We would like to thank the following law firms for their assistance in updating the information provided:
Janežič & Jarkovič, Ljubljana, SloveniaZivko Mijatovic & Partners
, Ljubljana, Slovenia
I.T.E.M. d.o.o. Patent and Trademark Agency, Ljubljana, SloveniaLicensing
I.T.E.M. d.o.o. Patent and Trademark Agency, Ljubljana, Slovenia
Janežič & Jarkovič, Ljubljana, Slovenia