The Trademarks Law Review: Slovenia

Overview

Trademarks are protected in Slovenia by using three different paths: national registrations, international registrations designating Slovenia or the EU, and EU trademarks. This chapter deals with national specifics relating to trademark prosecution and enforcement.

To give an overview of trademark statistics in Slovenia, the number of national trademark applications slightly increased in 2021: from January to October 2021, 1,063 national trademark applications were filed. In the same period in 2020, 1,048 national applications were filed. The number of oppositions filed against national trademark applications increased by 100 per cent in the period from January to October 2021, amounting to 73 oppositions filed in comparison with the same period in 2020, when 36 oppositions were filed against national trademark applications. On the other hand, in the same period, the number of oppositions filed against international registrations decreased: from January to October 2021, six oppositions were filed, where in the same period in 2020, 16 such oppositions were filed.

Year in review

Publicly available court practice relating to trademarks is scarce, and disputes in the field of trademarks are not common in Slovenia. There are no really noteworthy publicly available court decisions from 2020 or 2021, but there are two decisions of the Supreme Court of the Republic of Slovenia dating back to 2019 that should be mentioned. The first concerned a negative declaratory lawsuit in which the plaintiff requested the court to rule that it had not infringed a registered trademark of the defendant, as it was the owner of a previously registered international trademark that had expired.2 The defendant, after the expiration of the validity of the applicant's international trademark in Slovenia, began to prevent the import and sale of the products – brandy under the trademarks Skënderbeu and Gjergj Kastrioti Skënderbeu – in Slovenia by taking action against the distributors of those products in Slovenia. The first instance court rejected the claim, stating that the plaintiff did not prove legal interest. The High Court confirmed that decision, albeit using different reasons for rejection. The Supreme Court then reversed the decision and decided that the plaintiff had shown legal interest for such a lawsuit. The decision is noteworthy, since there are no declarations of non-infringement possible in Slovenia and, pursuant to civil procedure rules, declaratory actions are only possible if they concern the existence or non-existence of a right or legal relationship, or the authenticity or non-authenticity of a document. A lawsuit requesting the court to rule that the plaintiff has not infringed a registered trademark is thus possible, provided that legal interest is shown.

The second concerns the nullity of a trademark.3 In these proceedings, the High Court of Ljubljana ruled that it is possible to invoke the nullity of a trademark as an objection only, and thus no counterclaim needs to be filed. The Supreme Court was of a different opinion, ruling that a declaration of invalidity cannot be made in proceedings for the assessment of infringement of a trademark right or in the assessment of objections brought by the alleged infringer in defence of a trademark owner's prohibition claim. Rather, the proceedings for a declaration of invalidity of a trademark are a special procedure. Thus, a counterclaim needs to be filed for the declaration of invalidity of a trademark: a mere objection that the trademark that has allegedly been infringed is invalid, posed during infringement proceedings, does not suffice.

Legal framework

i Legislation

As Slovenia is an EU Member State, the regulation of the trademarks is twofold, encompassing the EU-wide regime as well as national legislation. This chapter focuses on Slovenia's national legislation and its national specifics relating to the implementation of EU-wide rules.

The basic act regulating trademarks in Slovenia is the Industrial Property Act (ZIL-1),4 last amended on 14 March 2020, implementing part of Directive EU 2015/2436 to approximate the laws of EU Member States relating to trademarks. Various governmental regulations were issued on the basis of this act. Conflicts regarding company names is regulated in the Companies Act (ZGD-1).5

Slovenia is a member of the following:

  1. the TRIPS Agreement;
  2. the Paris Convention for the Protection of Industrial Property;
  3. the Madrid Agreement Concerning the International Registration of Marks and the Protocol relating to the Madrid Agreement;
  4. the Trademark Law Treaty;
  5. the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
  6. the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks; and
  7. the Nairobi Treaty on the Protection of the Olympic Symbol.

ii Authorities

The authority for trademarks in Slovenia is the Intellectual Property Office of the Republic of Slovenia (URSIL). URSIL's roles include handling trademark registration procedures, including oppositions, and keeping registers of trademarks and trademark applications. URSIL also provides services in relation to searches and trademark monitoring. URSIL further issues a monthly bulletin, Bilten za industrijsko lastnino, where 'i.a.' trademark applications are published for opposition purposes.6

The Slovenian district courts are competent for keeping the court register of companies where i.a. company names are entered.

Domain names are registered with Arnes, the Academic and Research Network of Slovenia, pursuant to the general terms for registering domain names under the top level domain, .si.7 Arnes is also the administrator for domain name disputes conducted pursuant to the alternative domain name under the top level domain .si dispute resolution rules adopted by Arnes.8

iii Substantive law

The legal basis for trademark protection in Slovenia is ZIL-1. The law provides special provisions for collective trademarks. Certification marks are not regulated under ZIL-1.

Well-known unregistered signs pursuant to Article 6-bis of the Paris Convention enjoy protection in Slovenia on the basis of ZIL-1 and are considered a valid basis for filing an opposition.

Company names are regulated in ZGD-1 and are entered into the companies' register on the basis of the Register of Companies Act.9 In addition, an opposition may be filed against a trademark application on the basis of a company name pursuant to ZIL-1. ZIL-1 further deals with trade names in the part relating to trademark infringement, and provides the possibility to the trademark owner to prohibit third parties from using a sign as a trade name or business name or as part of a trade name or business name.

Geographical indications are regulated in ZIL-1. Agricultural products and foodstuffs and wine, as well as other products from grapes and wine, may not be registered as geographical indications on the basis of ZIL-1. Rather, the registration of agricultural products and foodstuffs is regulated in the Agricultural Act,10 and the registration of wines is regulated in the Wine Act.11

Domain names under the top level domain .si are registered on the basis of the general terms for registering domain names under the top level domain .si.

Registration of marks

i Inherent registrability

National Slovenian trademark applications are filed with URSIL. The application may be filed electronically.

Trademark applications, if filed on paper, are filed by using a specific form. The list of goods and services concerned, the sign (its representation, if it concerns a device mark) and a power of attorney, duly signed by the applicant (if represented by a registered representative before URSIL), need to be submitted together with the application, as well as a proof of payment of the official fee. Foreign natural and legal persons having neither residence nor a real and effective industrial or commercial establishment in Slovenia need to appoint a representative before URSIL. The power of attorney and the proof of payment of the official fee may be late-filed. The official fee amounts to €100 for the trademark application, with up to three classes of the Nice classification and €20 for each additional class above three.

Upon receiving a complete application, URSIL conducts an absolute grounds examination. If the application meets the criteria pursuant to ZIL-1, a resolution on the publication is issued, and the application is published in the bulletin of URSIL, which is issued monthly. As of the date of publication, a three-month deadline for filing an opposition starts running. Upon its expiration, if no oppositions are filed, URSIL issues an office action inviting the applicant to pay the registration fee. The registration fee includes the fee for the first 10 years of validity and amounts to €150 for the trademark with up to three classes of the Nice classification, and €50 for each additional class above three. Once the fee is paid, URSIL issues a decision on registration of the mark and enters the mark in the trademark register.

In respect of internationally registered trademarks designating Slovenia, the rules on examination of national trademark applications are used mutatis mutandis. URSIL performs an absolute grounds check, but there is no separate publication for opposition purposes, no invitation to pay the registration fee and no entry in the trademark register.

ii Prior rights

An opposition may be filed against a trademark application, and trademark applications shall not be registered (relative grounds for refusal) where:

  1. it is identical to the sign of an earlier trademark and the goods or services for which the trademark is applied for are identical to the goods or services for which the earlier trademark is protected;
  2. by reason of the identity or similarity of the sign with an earlier trademark and the identity or similarity of the goods or services to which the sign and the trademark relate, there is a likelihood of confusion on the part of the public, where the likelihood of confusion includes the likelihood of association with the earlier trademark;
  3. it is identical or similar to the sign of an earlier trademark, irrespective of whether the goods or services for which the trademark is applied for are identical, similar or dissimilar to those for which the earlier trademark is protected, provided that the earlier trademark has a reputation in Slovenia and that the use of the later trademark would unfairly exploit or damage the distinctive character or reputation of the earlier trademark, without due cause;
  4. its use may be prohibited by virtue of a right to an unregistered sign used in the course of trade acquired before the date of filing of the application for the trademark or, if claimed, the date of priority;
  5. it has been applied for as a trademark in a person's own name by an agent or representative of the proprietor of the trademark without his or her consent, unless the agent or representative justifies his or her conduct;
  6. its use may be prohibited on the basis of a registered designation of origin or geographical indication for which an application has been filed in accordance with the regulations of Slovenia or of the European Union governing the protection of designations of origin or geographical indications prior to the date of filing of the trademark application or, if claimed, the date of priority; or
  7. its use may be prohibited on the basis of a right previously acquired in respect of a name (including a company name), a personal portrayal, a copyright or another industrial property right, unless the proprietor of the right previously acquired has expressly consented to the registration of such a trademark.

Pursuant to ZIL-1, the following are considered earlier trademarks:

  1. a national trademark registration or application filed before the conflicting trademark application (or, if priority is claimed, the date of priority);
  2. an EU trademark or an EU trademark application filed before the conflicting trademark application (or, if priority is claimed, the date of priority);
  3. a trademark, registered on the basis of international treaties binding on Slovenia or applications thereof filed before the conflicting trademark application (or, if priority is claimed, the date of priority); and
  4. an unregistered sign that, at the date of filing of the application for the trademark or, if priority is claimed, at the date of priority, is a trademark known in Slovenia under Article 6-bis of the Paris Convention.

iii Inter partes proceedings

An opposition against a national trademark application is filed within three months after its publication in the bulletin of URSIL or, against an internationally registered trademark, within three months as of its publication in the WIPO Gazette. The opposition needs to be fully substantiated by the end of the opposition deadline. The power of attorney and the proof of payment of the official fee may be late-filed. The official fee for an opposition against a national trademark application amounts to €75, and for an opposition against an international registration, €85.

Once the opposition is complete, URSIL sends it to the applicant and invites it to respond within three months. The deadline may be extended for an additional three months. URSIL then examines whether the opposition is well founded within the limits of the allegations made by the opponent and the applicant for the trademark and the evidence adduced. If URSIL finds that the opposition is not well founded, it shall reject it by decision and proceed with the registration of the trademark. If it finds that the opposition is well founded and that the trademark may not be registered in respect of all the goods or services for which the trademark is applied for, it shall, by decision, refuse the application for registration of the trademark in its entirety. If it finds that the opposition is well founded and that the trademark may not be registered in respect of some of the goods or services for which the trademark has been applied, it shall, by decision, refuse the application for registration of the trademark in respect of those goods or services, and the proceedings for registration of the trademark shall continue in respect of the remainder of the goods or services.

With the latest amendment of ZIL-1 in March 2020, the possibility of requesting proof of use of a trademark as the basis for opposition was introduced provided that, on the date of filing of the application or the priority date of the subsequently applied-for trademark, five years have already elapsed since the date of registration of the earlier trademark in the register. Proof of use shall encompass evidence of real and effective use within the past five years preceding the date of application (or the date of priority) of the conflicting trademark application. URSIL then invites the opponent to submit proof of use within three months. If the opponent does not provide evidence of use or does not provide justifiable reasons for the trademark's non-use, URSIL rejects the opposition. If the earlier trademark was used in respect of some of the goods and services, it shall be, for the purposes of opposition, considered that it was registered only in respect of those goods and services. Additionally, with this amendment of ZIL-1, the possibility of a suspension of the proceedings was introduced if the parties wish to explore the possibility of reaching a settlement. The opposition proceedings are suspended for six months on the basis of a request filed by both parties.

Cover oppositions, invalidity actions, revocation actions and other proceedings

Nullity actions, actions for the removal of a mark from the register, challenges to the right to a trademark and non-use cancellation requests are dealt with in court proceedings. A lawsuit needs to be filed with the competent court (i.e., the District Court of Ljubljana).

A request for the nullity of a trademark can be filed by any interested third party for one of the following reasons: the mark was registered contrary to the provisions relating to absolute grounds for refusal or the relative grounds for refusal, or if it was filed in bad faith. A lawsuit on the basis of relative grounds for refusal may be filed by the following:

  1. the owner of a previously registered trademark;
  2. the owner of a previously acquired unregistered mark used in the course of trade;
  3. the owner of a trademark that has been applied for in his or her name by his or her agent or representative without his or her consent;
  4. a person entitled to use a designation of origin or geographical indication; and
  5. the owner of another previously acquired right referred to in subsection ii, bullet point g, above.

If the owner of an earlier trademark has not opposed the use of a later trademark for a period of five consecutive years, although it was aware of such use, it shall no longer have the right, on the basis of its earlier trademark, to apply for a declaration of nullity of the later trademark in respect of the goods or services in respect of which the later trademark is used, unless the later trademark was not applied for in good faith.

A request for the removal of a trademark from the register may be filed if, as a result of the proprietor's acts or omissions, the trademark has become a common name in the trade for the goods or services for which it is registered or if the proprietor of the trademark, or someone else with its consent, uses the trademark in respect of the goods or services in respect of which it is registered in such a way as to deceive the public, in particular as to the nature, quality or geographical origin of those goods or services.

A lawsuit challenging a right to a trademark may be filed by legal or natural persons who request the court to declare that the sign used by them in the course of trade to designate their goods or services is identical or similar to a trademark used by someone else to designate its goods or services of the same or similar kind, and that this sign was commonly known as the designation of the goods or services of the plaintiff before the defendant applied for the trademark, and also that the court, by its decision, declares the plaintiff to be the proprietor of the trademark. The court shall not uphold a challenge if the defendant who is the proprietor of the trademark proves that, prior to the filing of the application, it has been using the contested sign for the same or a similar type of goods or services for the same or a similar period of time or for a longer period of time than the plaintiff. The action may not be brought after the expiry of a period of five years from the date of registration of the trademark in the register.

In respect of non-use cancellation of a trademark, any person may file this if the owner has, without just cause, failed for a continuous period of five years to make genuine and effective use in Slovenia of the trademark to designate the goods or services in respect of which the trademark is registered. Cancellation of the trademark may not be sought if the owner has begun or has resumed genuine and effective use of the trademark during the period between the expiry of the continuous period of five years referred to above and the filing of the action for cancellation of the trademark. That circumstance may not be relied on by an owner of a trademark who has begun to use or to resume use of the trademark within a period of three months preceding the filing of the action, if it began preparations for use or resumption of use of the trademark only after it was aware that it was threatened with the filing of an action for cancellation of its trademark. It is on the owner to prove the use of the trademark. The trademark is cancelled in respect of those goods or services in respect of which it is established that the trademark has not been used in the territory Slovenia as from the date on which the judgment becomes final.

iv Appeals

An administrative appeal can be filed against URSIL's decision within 30 days as of its receipt. It is filed with the Administrative Court of the Republic of Slovenia. The proceedings are regulated in the Administrative Dispute Act.12

Civil litigation

As explained above, all disputes relating to trademarks, apart from opposition proceedings, are dealt with by the courts. It is expected that once Slovenia implements Directive 2015/2436 in full, disputes relating to the non-use, cancellation and nullity of trademarks will be handled by URSIL.

i Forums

The District Court of Ljubljana is the only first instance court competent for trademark disputes. The second instance court is the High Court of Ljubljana. The third instance court is the Supreme Court of Ljubljana, dealing with extraordinary legal remedies; however, any revision needs to be allowed by it.

ii Pre-action conduct

In Slovenia, there is no need to send a cease and desist letter prior to initiating court proceedings. However, in cases where a lawsuit is filed without sending a cease and desist letter first, and if it can be considered that the defendant does not give a rise to a claim and has admitted the claim in the defence or at the main hearing before the main proceedings, the plaintiff must reimburse the defendant's legal costs. Such cases would include, for example, a non-use cancellation action.

iii Causes of action

Apart from the actions described above, a trademark infringement lawsuit may be filed with the District Court of Ljubljana against any person who interferes with the rights of the trademark owner without the trademark owner's consent. Pursuant to ZIL-1, a trademark shall confer on the proprietor the exclusive right to use it. Without prejudice to the rights of the owner acquired before the date of filing of the application for the trademark or the date of priority, the owner of the trademark shall have the right to prevent third parties who do not have its consent from using a mark in the course of trade in connection with goods or services:

  1. that is identical with the trademark in respect of identical goods or services that are covered by the trademark;
  2. that, by reason of its identity or similarity to the trademark, and the identity or similarity of the goods or services covered by the trademark and the sign, is likely to cause confusion among the public, including a likelihood of association between the sign and the trademark; or
  3. that is identical or similar to the trademark, whether or not the goods or services are identical or similar to those covered by the trademark, provided that the trademark has a reputation in Slovenia and that the use of such a sign would, without due cause, unfairly take advantage of, or be detrimental to, the distinctive character or repute of the trademark.

The right to prevent third parties from using the sign shall include, in particular, the prohibition of:

  1. affixing of the sign to goods or their packaging;
  2. offering goods bearing that sign, placing them on the market or storing them for those purposes, or offering or providing services under that sign;
  3. importing or exporting goods bearing that sign;
  4. the use of the sign on business documents and in advertising;
  5. the use of the sign as a trade name or business name or as part of a trade name or business name;
  6. the use of the sign in comparative advertising in a manner contrary to the provisions of Slovenia or of the European Union on misleading and comparative advertising.

Apart from the trademark owner, the following have the capacity to sue:

  1. the person entitled to use the collective mark;
  2. the beneficiary of a geographical indication;
  3. the licensee, to the extent that the rights of the trademark owner are transferred to it by law or by a transaction, if the trademark owner so consents;
  4. the exclusive licensee, if the trademark owner fails to bring infringement proceedings itself within a reasonable period after notification; and
  5. a professional association established for the protection of industrial property rights, to the extent that the rights of the owner are transferred to it by law or by a legal transaction.

It is also possible to file a lawsuit on the basis of unfair competition, which is regulated in the Prevention of Restriction of Competition Act (ZPOmK-1).13 Pursuant to ZPOmK-1, unfair competition is an act by a company in its market conduct that is contrary to good commercial practice and that causes or threatens to cause damage to other companies (the general clause). The sale of goods bearing indications or particulars that create or are likely to create confusion as to the origin, method of production, quantity, quality or other characteristics of the goods, and unjustified use of the name, business name, trademark or other designation of another undertaking, whether the latter has given its consent or not, and where such use creates or is likely to create confusion in the market are, inter alia, regarded as acts of unfair competition, but the criteria of the general clause as to what is an act of unfair competition need to be met in any case.

As regards company names, the provisions relating to the enforcement of industrial property rights apply mutatis mutandis also to enforcement of company names.

iv Conduct of proceedings

Civil court proceedings are initiated with a lawsuit. The defendant is given the opportunity to respond within 30 days as of the receipt of the lawsuit and the invitation of the court to respond, which are sent to the defendant together.

The parties need to present their arguments and offer all evidence proving their assertions. The court may establish facts not pleaded by the parties and take evidence not adduced by the parties only if it appears from the hearing and the evidence that the parties intend to dispose of claims that they cannot dispose of, but it may not base its decision on facts on which the parties have not been given the opportunity to be heard.

All assertions and evidence need to be submitted by the parties by the end of the first oral hearing. The court can take into account the facts and evidence filed later on only if, through no fault of their own, the parties were unable to raise them at the first hearing or if, in the court's judgment, their admission would not have delayed the resolution of the dispute. There is no evidentiary rule in Slovenia, and the facts may be proven with any kind of evidence. Proceedings are carried out in Slovenian, and all evidence in foreign languages needs to be translated into Slovenian by a sworn court interpreter.

If the court does not invite the parties to file preparatory briefs, each party is given the opportunity of filing two preparatory briefs.

The preparatory and first oral hearings are usually scheduled within one to two years after the lawsuit was filed, and they are usually scheduled together, first the preparatory and then the first oral hearing. The purpose of the preparatory oral hearing is to discuss openly the legal and factual aspects of the dispute in order to allow the parties to supplement their arguments and legal submissions, to propose further evidence, to make submissions and to seek to reach a judicial settlement. It is also used to draw up a programme for the conduct of the proceedings.

It is up to the judge to decide which evidence will be carried. The parties and witnesses are usually not heard at the first oral hearing, but rather at later hearings that can be scheduled within one to two months after the first (or subsequent) hearings, or even later. The court may also appoint an expert if the determination or clarification of a fact requires expertise that is not available to the court, although experts are usually appointed in patent infringement matters and not in trademark cases. It usually takes two to three years for the court to issue a judgment at the first instance, and another six months for the second instance court to issue a judgment.

The stamp duty to be paid by the plaintiff on the basis of the Court Fees Act14 depends on the value of the dispute. Attorneys' costs also depend on the value of the dispute, and can be recovered only in the amount as set out in the Attorneys' Tariff.15 As a general rule, the losing party needs to reimburse the costs of the proceedings, such as stamp duty, attorneys' costs pursuant to the Attorneys' Tariff, the costs of translations and the costs of court-appointed experts. If a party is partially successful in the proceedings, the court may, depending on the success achieved, order each party to bear its own costs or, taking into account all the circumstances of the case, order one party to reimburse the other party for an appropriate proportion of the costs. The court may also order that one party shall pay all the costs incurred by the other party if the other party has failed only in a relatively small part of its claim and that part has not resulted in any special costs.

v Remedies

Pursuant to ZIL-1, the court may order the following remedies (depending on the claims posed by the plaintiff):

  1. prohibition of an infringement and future infringements;
  2. recall of the infringing items from the economic flows, taking into account the interests of bona fide third parties;
  3. removal of the situation created by the infringement;
  4. irrevocable removal of the infringing objects from economic flows;
  5. destruction of the infringing objects;
  6. destruction of the means of the infringement that are wholly or mainly intended to be used, or are used, for the infringement, and that are in the possession of the infringer;
  7. surrender to the plaintiff of the infringing objects in return for payment of the costs of production;
  8. publishment of the judgment.

The infringer shall also be liable to pay damages to the trademark owner in an amount to be determined under the general rules on damages or in an amount equal to the agreed or customary royalty.

Publicly available court practice relating to royalties is scarce. In its latest publicly available decision,16 the High Court of Ljubljana granted a royalty to a plaintiff in the amount of €2,600.88. The matter concerned an infringement of a trademark registered in connection with services for the storage, warehousing and transport of waste oils and other waste hazardous to humans and the environment under Class 39 of the Nice classification. The defendant provided these services at its service stations by using the containers under dispute to collect waste oils, oily plastic packaging and oily rags. The royalty was calculated taking into account an annual royalty of 4 per cent of the purchase price of each container and the number of days of use.

Other enforcement proceedings

Pursuant to ZIL-1, it is possible to file an application for issuing an interim injunction in trademark infringement cases. The court shall grant an interim injunction if the applicant shows that it is the owner of a trademark, and its right has been infringed or is in real danger of being infringed.

In addition to the above two conditions, the applicant shall also show as probable one of the following conditions:

  1. a risk that the enforcement of the claims will be prevented or substantially impeded;
  2. that an injunction is necessary to prevent the occurrence of damage that is difficult to repair; or
  3. that the alleged infringer would not suffer more serious adverse consequences from the grant of the interim injunction than would have been suffered by the right holder in the absence of the interim injunction if the interim injunction were to prove unfounded in the course of the proceedings.

The court may grant any interim order that is capable of achieving the purpose of the security, in particular, to restrain the alleged infringer from the alleged infringement and from future infringements; and to seize, exclude from circulation and store infringing articles and the means of infringement that are wholly or mainly intended or used for the infringement.

Ex parte interim injunctions are possible, but rare. In general, it is quite difficult to obtain an interim injunction in Slovenia.

Unjustified use of a trademark in the course of commercial business is also a criminal offence pursuant to the Criminal Code,17 carrying an imprisonment sentence of up to three years. Legal entities can also be liable for this criminal offence pursuant to the Liability of Legal Persons for Criminal Offences Act.18 The following sentences may be imposed on legal entities: a fine, confiscation of property, the dissolution of the legal person and the prohibition to dispose of securities held by the legal entity. Trademark matters are rarely dealt with in criminal proceedings, and owners tend not to use this path when trying to protect their rights in Slovenia.

As regards customs measures, it is important to note that pursuant to ZIL-1, the trademark owner shall have the right to prevent third parties from bringing goods in commercial circulation into Slovenia without those goods also having been released for free circulation, provided that those goods, including their packaging, come from countries that are not Member States of the European Union or of the European Economic Area and are marked, without the authorisation of the trademark owner, with a sign that is identical with, or indistinguishable in its essential characteristics from, the trademark registered in respect of such goods. The trademark owner shall, however, cease to have the above-stated right if, in the course of proceedings for the establishment of an infringement of trademark rights instituted in accordance with the provisions of the European Union on customs measures for the enforcement of intellectual property rights, the declarant or the proprietor of the goods proves that the trademark owner does not have the right to prohibit the goods from being placed on the market in the country of final destination.

Outlook

In the past few years, the number of disputes relating to intellectual property rights has been decreasing. In 2017, there were 74 cases relating to the enforcement of IP rights, in 2018 there were 47, in 2019 only 21 and in 2020, altogether 32.19 Publicly available court practice does not provide answers to the challenges that arise in relation to trademark infringement on the internet or on social networks.

Footnotes

1 Eva Gostiša is senior counsel at Jadek & Pensa Law Office.

2 File No. III Ips 68/2018, dated 19 March 2019.

3 File No. III Ips 32/2018, dated 19 February 2019.

4 Industrial Property Act, Official Gazette of the Republic of Slovenia, No. 45/01, as amended.

5 Companies Act, Official Gazette of the Republic of Slovenia, No. 42/06, as amended.

6 The database of applied for/registered national marks is available online: https://www2.uil-sipo.si/.

9 Register of Companies Act, Official Gazette of the Republic of Slovenia, No. 13/94, as amended.

10 Agricultural Act, Official Gazette of the Republic of Slovenia, No. 45/08, as amended.

11 Wine Act, Official Gazette of the Republic of Slovenia, No. 105/06, as amended.

12 Administrative Dispute Act, Official Gazette of the Republic of Slovenia, No. 105/06, as amended.

13 Prevention of Restriction of Competition Act, Official Gazette of the Republic of Slovenia, No. 36/08, as amended.

14 Court Fees Act, Official Gazette of the Republic of Slovenia, No. 37/08, as amended.

15 Attorneys' Tariff, Official Gazette of the Republic of Slovenia, No. 2/15, as amended.

16 File No. V Cpg 555/2020, dated 18 February 2021.

17 Criminal Code, Official Gazette of the Republic of Slovenia, No. 55/08, as amended.

18 Liability of Legal Persons for Criminal Offences Act, Official Gazette of the Republic, No. 59/99, as amended.

19 Data provided by doc. dr. Eneja Drobež, adviser to the Constitutional Court of the Republic of Slovenia, and Magda Teppey, the judge of the High Court of Ljubljana, in their analysis of the state of enforcement of intellectual property rights in the Republic of Slovenia in 2020, December 2021

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