In the field of trademark law, IPI advises its clients, examines the relevant registers and registers trademarks before the Slovenian Intellectual Property Office (SIPO), the European Union Intellectual Property Office (EUIPO), through international registration within the Madrid system at the World Intellectual Property Organization (WIPO) and it also helps in registration procedures abroad. It legally advises and represents its clients in opposition procedures against registration of a trademark and prepares drafts of submissions for the court regarding trademark issues. IPI also prepares different documents in the field of trademark law (such as transfer contracts, license agreements, trademark coexistence agreements etc.). For more information, write us on info@ipi.si.

According to Article 42 of the Industrial Property Act, signs, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of another undertaking, and capable of being graphically represented, can be registered as trademarks. This can be done by words, letters, numerals, figurative elements, three dimensional images, including the shape of goods or of their packaging, combinations of colours as well as any combination of such signs.

Unlike copyright, in most countries trademarks have to be registered before a competent intellectual property office in order to obtain protection. When a trademark is registered, its holder has the exclusive right to use it, which means that he or she can prevent third parties not having his or her consent from using in the trade any sign which is identical or similar to the trademark in relation to goods or services which are identical or similar to those for which the trademark is registered. In the case of a trademark with reputation or a well-known trademark, the holder may prohibit the use of identical or similar signs even for different goods or services.

The registration of a trademark has a territorial effect, which means the protection is limited to the territory in which it is registered. Because of this it is recommended to register the trademark in every country, where the holder intends to offer goods or services under the trademark. The registration is also limited in time, in Slovenia trademark protection lasts for 10 years from the date of filing the application, while the holder may renew the protection for the next 10 years as many times as he or she wishes to.

When a trademark is registered, its holder may fully or partially transfer it to a third party, license it, burden it with a right in rem or cancel it. In addition, he or she has the right to object the registration of identical or similar trademarks and demand judicial protection of the trademark.

Trademark registration in Slovenia

In Slovenia trademarks are registered before the Slovenian Intellectual Property Office (SIPO). The application can be filed either through a Slovenian applicant or a representative in trademarks and designs matters (mandatory for foreign applicants). Before the application is processed, application fees have to be paid. SIPO then examines whether the application meets the formal and substantial requirements. Article 43 of the Industrial Property Act determines the absolute grounds for refusal of a trademark application, which SIPO examines ex officio. Namely, a sign shall not be eligible for registration as a trademark if:

– it cannot constitute a trademark;
– it is devoid of any distinctive character;
– it serves, in trade, to designate merely the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;
– it contains or consists of a geographical indication identifying wines or spirits, where the trademark application relates to wines or spirits not having this origin;
– it consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
– it consists exclusively of the shape which results from the nature of the goods themselves or is necessary to obtain a technical result or gives substantial value to the goods;
– it is contrary to public order or morality;
– it deceives the public, in particular to the nature, quality or geographical origin of the goods or services;
– it contains official signs or hallmarks for controlling or guaranteeing the quality of goods, or imitations thereof;
– it includes or imitates badges, emblems or escutcheons, unless the consent of the competent authorities to its registration has been given;
– it contains or consists of a registered designation of origin or geographical indication and the sign relates to the same sort of product, provided that the trademark application has been filed after the date of filing of the application for the registration of a designation of origin or a geographical indication with the Commission.

When SIPO confirms that the required conditions are met and there are no absolute grounds for refusal, it publishes the trademark in its official journal. It usually takes 1-2 months from the filing of the application to the publication.

Within 3 months from the publication, the holders of earlier trademarks can object the registration of the trademark on the basis of relative grounds for refusal (Article 44 of the Industrial Property Act). These grounds relate mainly to the existence of either earlier well-known trademarks or earlier identical or similar trademarks that have already been applied for or registered for the identical or similar goods. It usually takes 6-12 months for SIPO to decide on the objection.

If the objection is justified, the application is fully or partially denied with a decision that is final in the administrative procedure. There is no appeal against that decision, however, it is possible to file an action in the administrative dispute, but only within 30 days from the notification of the decision. If there is no objection or the objection is unjustified, SIPO notifies the applicant to pay within the next 3 months the registration fee for the first 10 years. The fee varies according to the number of classes for which protection is sought. After the fee has been paid SIPO issues the decision on the registration of the trademark and all the relative information on the trademark is published in the official journal of SIPO. The registration is valid for 10 years, and can be renewed every subsequent 10 years. The renewal is not limited in time.

Trademark registration abroad

Trademarks can be registered abroad in 3 possible ways:

a) EU trademark registration at the European Union Intellectual Property Office (EUIPO)

For the applicants seeking trademark protection on the entire territory of the EU, it is advisable to register the trademark through a single application at the European Union Intellectual Property Office (EUIPO), located in Alicante, Spain. By registering the trademark at EUIPO the applicant becomes the holder of the EU trademark and thus gains exclusive rights to use the trademark in all 28 member states. This has the same effect as registering the trademark in each individual member state.

The registration of an EU trademark takes place directly through EUIPO. The application can be filed by a Slovenian citizen (or a citizen of any other member state) or a legal person with the place of business in Slovenia (or any other member state), alone or through a representative in trademarks and designs matters. Once the application has been filed, EUIPO examines whether the absolute prerequisites for the registration are met. If they are, EUIPO publishes the EU trademark in its official journal. Within 3 months from the publication the holders of earlier identical or similar trademarks may oppose the application. These can be either holders of earlier EU trademarks or earlier national trademarks. Even if the earlier trademark is registered only in one member state, if the opposition is justified, EUIPO will deny the registration of the EU trademark on the entire territory of the EU. The applicant may appeal against the decision denying the registration. If there is no objection or the objection is unjustified, the trademark is registered and published in EUIPO’s official journal. It usually takes 5-6 months to register an EU trademark.

b) International trademark registration at the World Intellectual Property Organization (WIPO)

On the basis of a national trademark (registered at SIPO, for example) or an EU trademark, it is possible to register the trademark in more than 100 member states of the Madrid Agreement Concerning the International Registration of Marks or the Protocol Relating to the Madrid Agreement. This kind of registration enables the applicant to initiate several parallel registration proceedings before national intellectual property offices of the member states of the Madrid Union through a single application at the World Intellectual Property Organization (WIPO), located in Geneva, Switzerland.

The precondition of an international registration is the earlier filing of the application or the registration of the trademark in Slovenia (or any other member state of the Madrid Union) or the EU trademark. With an international registration the applicant seeks protection of the trademark in the selected member states of the Madrid Union. With this, formal proceedings before national intellectual property offices and the payment of separate registration fees can be avoided, while enabling the same degree of protection as before national offices. The applicant therefore pays a single registration fee that varies according to the nature of the trademark, the number of classes of goods and services as well as the number of countries in which protection is sought.

After the application has been filed, WIPO examines whether the trademark meets the formal prerequisites and, if it does, publishes the trademark in its official journal. Then, the countries in which protection is sought examine whether the substantive conditions are met. This is done in accordance with national rules on trademark registration. The individual countries may deny the registration of the trademark on their territory, however, if they do not do that in 12-18 months from the publication in the international register, the trademark is considered registered. In the case of denial, the holder of the trademark is able to initiate the same means of appeal as if the application was filed directly in the country, where registration was denied. In the case of a deadlock of the registration in an individual country (because of the alleged non-compliance with formal prerequisites or an objection by a holder of an earlier trademark, for example), the help of the local trademark representative, who manages the proceeding in this country in the name of the applicant, is usually needed. This is due to the fact that only local representatives are usually able to perform acts before national registration offices. In the case of a final denial of the registration, the application fees for this country are not reimbursed.

c) National trademark registration at foreign intellectual property offices

The third option is to register the trademarks directly before the national intellectual property office where protection is sought. This option is resorted to when the applicant seeks protection in a non-member of the Madrid Union (South Africa, for example) or when protection is sought only in a specific country and, thus, the registration in the Madrid Union as a whole would result in unnecessary costs. In most countries, registration processes are similar to the one before SIPO. For this kind of registration, applicants would usually need a national representative. IPI cooperates with various foreign representatives and offers its clients the possibility to register the trademark in every country of the world, however, it has to be considered that in some countries costs might be relatively high due to the fact that the registers are not electronic or are not reliable.

What do you need to submit to register a trademark:

– name and surname of the applicant (or the company name, if the applicant is a legal person);
– address of the applicant;
– authorization to represent the applicant before SIPO or EUIPO;
– text of the trademark or its sign, if it’s graphical (in .jpg format with resolution at least 800X600 pixels); and
– list of the goods or services, for which the trademark is registered (the applicant selects subclasses from the Nice classification; EUIPO’s website offers the tool TMClass, which can be of help for the selection of subclasses).