Industrial design protection in Slovenia

The registration procedure starts with an application to the Intellectual Property Office, which can be filed by Slovenian applicants themselves or through an agent registered in the register of agents at the Office or by foreign applicants only through an agent.

The application must be filed either in person at the reception office of the Office or by post or fax. The Office verifies whether the application fulfils the conditions for registration of the industrial design, with the exception of the conditions of novelty and individual character, which the holder of the industrial design must prove in court in the event of a dispute. If the application satisfies all the required conditions, the Office publishes the registration of the industrial design in its official bulletin. The applicant can also request a delay in publication for up to 12 months.

An industrial design can also be registered in Slovenia under the  Hague Agreement Concerning the International Registration of Industrial Designs (the 1960 Act and the 1999 Act) through an international application to the World Intellectual Property Organization (WIPO) in Geneva and the designation of Slovenia in the appropriate section of the application form.

Before filing an application

Before applying for registration of an industrial design, we recommend that you find out what can be registered as an industrial design, whether your product is truly new in design and has an individual character, how the registration procedure works, who can help you with the application.

The following information is particularly important:

Importance of industrial design registration

A registered industrial design gives the holder the exclusive right to use the design of the product and prevent third parties from using it without the holder’s consent. This use covers, in particular, making, offering, placing on the market, importing, exporting and using the product to which the design relates or storing such a product for such purposes.

Since novelty and an individual character are essential conditions for the protection of the design of a product by an industrial design, it is of the utmost importance that filing the application for registration of an industrial design precedes any other act which gives the public access to the design of the product, i.e. before the display at trade fairs or exhibitions or the advertising or marketing of the new product, and that the design of the product, by its individual character, makes a different impression on the consumer than other known designs of products.

What is an industrial design?

An industrial design is an exclusive right of a natural or legal person protecting the design of an industrial or craft product. The design of a product is defined by the features of the lines, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

What cannot be registered as an industrial design?

The design of a product cannot be registered as an industrial design in the following cases:

• it is determined solely by its technical function;
• it must be reproduced in its exact form and dimensions;
• it is contrary to public order or morality;
• it bears or imitates official signs or hallmarks used to control or guarantee the quality of the goods;
• it has not been authorised by the competent authorities and must be refused pursuant to Article 6ter of the Paris Convention.
  
  Emblems that contain or imitate coats of arms, flags and other national symbols which are protected in the Republic of Slovenia pursuant to Article 6ter of the Paris Convention cannot be registered as industrial designs unless the competent authorities have given consent to the registration thereof. Coats of arms, flags, symbols, abbreviations and the names of international intergovernmental organisations are also protected in the same way. Additional content is available on the World Intellectual Property Organization’s (WIPO) website on Article 6ter, where there is also a database of such protected signs Article 6ter Express.
  The Slovenian coat of arms, flag or constituent parts thereof, or the flag of the Slovenian nation and the text of the anthem and the notation of its melody may not be protected or used as an industrial design; this does not apply to collective trademarks whose bearers are the ministries or Government of the Republic of Slovenia (Article 8 of the Act Regulating the Coat of Arms, Flag and Anthem of the Republic of Slovenia and the Flag of the Slovenian Nation).

• it includes or imitates badges, emblems or escutcheons, other than those covered by Article 6ter of the Paris Convention, that are of particular public interest, unless the competent authorities have given consent to the registration thereof.

Procedure for obtaining protection

The procedure for obtaining industrial design protection from the Intellectual Property Office consists of a few basic steps. They are presented below.

Finding relevant information

Before applying for registration of an industrial design, we recommend that you find out what can be registered as an industrial design, how the registration procedure works, who can help you with the application, etc.

Maintenance of an industrial design

The term of an industrial design is one or more periods of five years from the date of filing of the application, up to a total term of 25 years. It may be renewed every five years on payment of the appropriate fees.

If industrial designs are obtained through an application relating to several product designs, the industrial designs may be renewed in their entirety or in a reduced number.

During the term of the industrial design, monitor for possible infringements.

Notifying the Office of changes to the industrial design

The Office keeps registers of industrial property rights. If you wish to transfer your industrial design to a new holder, or if you have changed your name, registered name, address or registered office, you must register the change in the relevant register.

You can also contact the Office if you need a certificate of the industrial design from the register.

Industrial design protection abroad

In principle, an application for registration of an industrial design is filed in those countries where we want to protect our interests or where we expect our competitors to try to exploit the design of our product by making the product and by placing it on the market.

There are three different options for obtaining industrial design protection or registering an industrial design in other countries.

National applications with foreign offices

The national application is filed with the relevant authority of the country where protection is sought. The applicant, as a general rule, carries out the procedure only through an agent who is entered in the register of the country concerned. In most countries, the procedure is similar to the procedure before the Slovenian office, except that, before registration, some offices also check whether the product is new in design and has an individual character. The fees for registration and the duration of the design are set by national legislation.

International application

The second option is to file an international application in accordance with the Hague Agreement for industrial designs (the 1960 Hague Act and the 1999 Geneva Act.) The contracting parties to both acts are all major European countries, including Slovenia.

Slovenian applicants can file an application under this agreement directly with the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, either by themselves or through an agent. The official languages are English and French. With a single application, protection can be obtained in more than 50 contracting states to these agreements at the same time, i.e. in all of them or only in those indicated by the applicant in the application form. The acquisition of protection has the same effect as if the application had been filed separately in each country and all the formalities for obtaining protection under national legislation had been fulfilled. Once the WIPO has published the registration of the industrial design, the national office of the designated country checks whether the design of the products meets the conditions for registration.

Forms and fees

The minimum fee for registering an industrial design for one design in two member states: 498 Swiss francs.

The application form with instructions on how to complete your application , the schedule of fees and the application for the indicative calculation of fees are available on the WIPO’s website.

European application

The third option for obtaining protection for an industrial design abroad is the Community Design, which is valid in all Member States of the European Community and has the same effect throughout the territory of the Community. There are two types of protection, i.e. an unregistered Community design (UCD) and a registered Community design (RCD).

Protection for an unregistered Community design is acquired from the first day it is disclosed to the public in the EU Member States without any application or registration procedure and lasts for three years. The right only extends to preventing imitation of the protected design.

An application for a registered Community design may be filed by any citizen of Slovenia or any legal person having its registered office in the territory of Slovenia with the European Union Intellectual Property Office (EUIPO) in Alicante in Spain, either by themselves or through an agent registered in the register of that Office. The application is filed in one of the official languages of the Member States of the European Community (including Slovenian), and the registration procedure is carried out at the applicant’s choice either English, French, Italian, Spanish or German.

An application with the EUIPO may be filed:

• by post to the following address: European Union Intellectual Property Office, Avenida de Europa, 4, E-03008 Alicante)
• by fax to + 34 965 131 344
• electronically.

Fees

The fee for registering a Community design for one design: 350 euros
The term of a registered Community design is one or several five-year periods, up to a total term of 25 years.

If the application is filed with a Slovenian office, the applicant must pay a fee of 50 euros for sending the application to the EUIPO.