Trademark protection in Slovenia

A sign or any combination of signs that enables the goods or services of one undertaking to be distinguished from those of other undertakings and can be represented graphically may be registered as a trademark.

The procedure for registering a trademark in Slovenia starts with an application to the Slovenian Intellectual Property Office.

The application 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 checks whether the application meets the conditions for registration of the trademark, but it does not check the existence of previously registered identical or similar trademarks. If the application satisfies all the required conditions, the Office publishes it in its official bulletin. The holder of a previously registered identical or similar trade mark may, within three months of the date of publication of the application, file a written opposition to the registration.

Before filing an application

Before applying for registration of a trademark, we recommend that you find out what can be registered as a trademark, whether an identical or similar trademark is already registered, and how the registration procedure works.

The following information is particularly important:

Importance of trademark registration

A trademark confers on the holder the exclusive right to prevent third parties from using, for the identical or similar goods or services, a sign which is identical or misleadingly similar to their trademark without their consent. However, a registered trademark does not exclude the right of any person to register an identical or similar sign to designate another type of goods or services, unless it is a well-known trademark.

What is a trademark?

A trademark is a legally protected sign if such a sign makes the goods or services of a particular undertaking distinguishable from those of another undertaking and can be displayed in the register in such a manner as to enable the competent authorities and the public to determine clearly and precisely the subject matter of the protection. A trademark may consist of any signs, in particular words, including personal names, or images, letters, numerals, colours, the shape of a good or its packaging, or sounds.

What cannot be registered as a trademark?

A sign cannot be registered as a trademark if:

• it cannot constitute a trademark;
• it is devoid of any distinctive character;
• in trade, it serves solely to designate the type, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or provision of services or other characteristics of the goods or services;
• it consists solely of signs or indications which have become customary in the current language or in the bona fide and established trade practices;
• it consists solely of the shape or other characteristic that results from the nature of the goods themselves or the shape or other characteristic of the goods which is necessary to obtain a technical effect or gives substantial value to the goods;
• it is contrary to public order or morality;
• it deceives the public, in particular as to the nature, quality or geographical origin of the goods or services;
• it includes or imitates coats of arms, flags and other national symbols which are protected pursuant to Article 6ter of the Paris Convention, 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. 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 a trademark. This does not apply to collective marks whose bearers are the ministries or Government of the Republic of Slovenia (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;
• it is excluded from registration in accordance with the regulations which provide protection for designations of origin and geographical indications;
• it is excluded from registration in accordance with the regulations which provide protection for traditional terms for wine;
• it is excluded from registration in accordance with the regulations which provide protection for traditional specialities guaranteed;
• it consists of a plant variety name that has been previously registered in accordance with the regulations which provide protection for plant variety rights and relates to plant varieties of the same or closely related species or contains the essential elements of such a name. 

Registration of a collective mark

A legal entity acting as an association of manufacturers, producers, service providers or traders and legal entities governed by public law may register a sign as a collective mark. A collective mark means a trademark that is described as such upon the filing of the application and whose sign allows distinguishing the goods or services of the members of the holder of such a mark from the goods or services of other undertakings. An applicant for a collective mark must enclose with the application the rules on the collective mark.

What cannot be registered as a collective mark?

A sign cannot be registered as a collective mark if one of the absolute grounds for trademark refusal applies. A collective mark may also not be registered if it does not meet the conditions for a collective mark, if the rules on the collective mark are not submitted at the same time as the application for a collective mark, if the rules on the collective mark do not provide for the essential particulars, if the collective mark might mislead the public as to the character or importance of the trademark, or if the rules are contrary to public order and morality, unless the applicant remedies the deficiency found.

Procedure for obtaining protection

The procedure for obtaining trademark protection from the Slovenian Intellectual Property Office consists of a few basic steps.

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

Opposition to registration

The Office does not carry out a full examination of trademark applications, i.e. whether the possible registration of a trademark would infringe the earlier rights of others. The Office will only carry out such an examination on the basis of an opposition filed by the holder of the earlier right.

An opposition may be filed by:

• a holder of an earlier trademark;
• a holder of an unregistered sign used in trade that was obtained before the filing date of the trademark application or the date of priority if priority is claimed;
• a holder of a trademark which the holder’s agent or representative has applied for in their own name without the holder’s consent;
• a person entitled to the use of the designation of origin or geographical indication for which an application has been filed in accordance with the legislation of the Republic of Slovenia or the European Union;
• a holder of an earlier right to a name, personal portrayal, or copyright or other industrial property right, unless the holder of the earlier right has given express consent to the registration of such a trademark.

Subject matter of the opposition

An opposition may be filed to the registration of:

• a later trademark in respect of which an application has been filed with the Slovenian Office (national trademark) and is published in the industrial property bulletin;
• a later trademark registered for Slovenia under the Madrid Agreement Concerning the International Registration of Marks or the Protocol Relating to the Madrid Agreement (an international trademark);
• a later EU trademark (EUTM) in respect of which an application has been filed with the European Union Intellectual Property Office (EUIPO).

Legal basis for filing an opposition

An opposition to the registration of a national or international brand may be filed on the grounds set out in Article 44 of the Industrial Property Act (ZIL-1), while an opposition to an EU trademark may be filed on the grounds set out in Article 8 of the European Union Trade Mark Regulation (EUTMR). The most common ground for an opposition is the existence of an earlier trademark.

An earlier trademark means:

• a trademark that was registered in the Republic of Slovenia on the basis of a national application before the filing date of the application for the later trademark or, if priority is claimed, the date of priority;
• a European Union trademark (hereinafter: EU trademark) that was registered before the filing date of the application for the later trademark or, if priority is claimed, the date of priority;
• a trademark that was registered on the basis of international treaties that are binding on the Republic of Slovenia before the filing date of the application for the later trademark or, if priority is claimed, the date of priority;
• applications for trademarks in the Republic of Slovenia, EU trademarks and on the basis of international treaties that were filed before the filing date of the application for the later trademark or, if priority is claimed, the date of priority, provided they are registered;
• an unregistered sign that, on the filing date of the trademark application or, if priority is claimed, the date of priority, is a well-known trademark in the Republic of Slovenia under Article 6bis of the Paris Convention.

Maintenance of the validity of the trademark

The validity of a trademark is 10 years from the date of filing of the application and may be extended indefinitely for the same period.

Note that maintenance fees must be paid every 10 years. 

During the term of the trademark, monitor for possible infringements.

Notifying the Office of changes to the trademark

The Office keeps registers of industrial property rights. If you wish to transfer your trademark 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 trademark from the register.

Trademark protection abroad

There are three ways to register a trademark in other countries: a national application in the selected country, an international application or a European application.

National applications with foreign offices

The national application is filed with the relevant authority of the country where trademark protection is sought. The applicant may, as a rule, carry 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 there are any previously registered identical or similar national trademarks, which may be grounds for refusal of the application.

International application

On the basis of an application for a Slovenian trademark or, in the case of certain countries, on the basis of a Slovenian registration, it is possible to register a trademark in the 124 Contracting Parties to the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement.

International trademark registration fees consist of the basic fee and the supplementary and complementary fees. The amount of the fee is determined depending on the countries in which protection is sought and depending on the number of classes. Information on the amount of international fees is available on the WIPO website.

The registration procedure can therefore start at the Slovenian Office and continue at the World Intellectual Property Organization (WIPO) in Geneva and the authorities of the countries for which registration is requested. In certain cases, the applicant needs an agent only for the procedure before the authorities of individual foreign countries.

All information about international trademark registration is available on the WIPO website.

The holder of a registered international trademark may file a request for a change to an international trademark on the appropriate form directly with the International Bureau of WIPO in Geneva: Form for the recording of a change to an international trademark:

• by post to the following address:
  World Intellectual Property Organization
  34, chemin des Colombettes, P.O. Box 18
  1211 Geneva 20, Switzerland,
• by email.

European application

The second option for obtaining trademark protection abroad is the registration of an EU trademark (EUTM), which is valid in all Member States of the European Community and has the same effect throughout the territory of the Community.

An application 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 in English, French, Italian, Spanish or German.

You can file an application with the EUIPO:

• electronically online,
• by post to the following address:
  European Union Intellectual Property Office
  Avenida de Europa, 4
  E-03008 Alicante.

For information on fees for an EU trademark or to calculate the fees, please see the relevant webpage of the EUIPO portal.