On 5 March 2020, the Slovenian Parliament finally adopted amendments to the Industrial Property Act, transposing into the national legislation Directive (EU) 2015/2436 of the EU Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks. The amendments to the Slovenian IP Act will come into force on 29 March 2020, and will introduce major changes to trademark protection and related proceedings in Slovenia.
Definition of a Trademark
The amendments remove the graphical representation requirement for trademarks and stipulate that a trademark may consist of any signs that are capable of 1) distinguishing the goods or services of one undertaking from those of other undertakings; and 2) being represented on the register in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of protection afforded to its proprietor. This change is likely to open doors to registration of more types of non-traditional trademarks such as holograms, movement marks and similar signs, which have experienced obstacles to registration so far.
Absolute Grounds for Refusal or Invalidity
The amendments also redefine the absolute grounds for refusal based on earlier Slovenian or EU-wide geographical indications, protected designations of origin, and traditional names for wines, while introducing plant varieties and guaranteed traditional specialties as new absolute grounds for refusal. Other absolute grounds for refusal or invalidity (descriptiveness, lack of distinctiveness, morality and public order, misleading signs etc.) did not see major changes since they were already harmonised with Directive (EU) 2015/2436.
Relative Grounds for Refusal or Invalidity
Relative grounds for refusal were somewhat reworded (such as definition of reputation and well-known unregistered sign). Substantial changes were introduced within a definition of an earlier trademark that may be a basis for an opposition. In this part, the amendments to the Slovenian IP Act introduce a requirement that an earlier trademark application must mature to registration in order to be considered as a relative ground for refusal of a later trademark application, removing the need to file a substantiated request for suspension of opposition proceedings (until a preliminary question of validity of an earlier trademark is resolved). Interestingly, 16 years after Slovenia joined the EU, this is the first time that the national IP legislation specifically mentions EU trademark as an earlier right (apart from transitional period before joining the EU) that may be invoked against later rights. So far EUTMs were considered as earlier rights enjoying protection under international agreements to which Slovenia is a party.
Collective, Certification and Guarantee Marks
Slovenia did not opt to introduce the guarantee or certification marks in its legislation. However, collective trademark right provisions were considerably overhauled by the latest amendment to the Slovenian IP Act. Especially as regards the consequences of regulations governing the collective mark or its use being contrary to the law, limitations of the collective trademark rights, and rights and obligations of the members of the collective mark association.
Trademark Holder’s Rights
The non-exhaustive list of acts that may be prohibited by a trademark holder was extended to include use of a trademark in, or as a part of, a trade or company name, use in advertising contrary to Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising, and transit of infringing goods through Slovenia – provided that the holder of goods cannot prove that goods in transit are not infringing the trademark in the destination country. Transposing Article 11 of Directive (EU) 2015/2436, the new Article 47a of the Slovenian IP Act prohibits preparatory infringement acts (affixing an identical or similar sign to packaging, labels, tags, security or authenticity features or devices or any other means to which a trademark may be affixed, offering or placing on the market, or stocking for those purposes, or importing or exporting of such goods).
While previously non-use defence was limited to cancellation actions based on existence of relative grounds for refusal of a trademark, the amendments to the Slovenian IP Act extend this option also to oppositions, non-use revocations, and infringement proceedings. A welcome change in this regard is the new Article 54a of the Slovenian IP Act, which clarifies the time limits from which genuine use of an international designation is calculated. The starting date is defined as the date when the statement of the grant of protection is published in the WIPO Bulletin or, if the provisional refusal or statement of the grant of protection is not notified to the WIPO within 12 months, the day following expiration of a 12-months’ deadline from WIPO notification concerning the Slovenian designation.
IP Rights as Object of Property and Licensee’s Rights
Amendments to the Slovenian IP Act regulate trademarks as an object of property (in the same way as Section 5 of Directive (EU) 2015/2436) and also define conditions under which a trademark holder may invoke its rights against a licensee which is contravening provisions of a license agreement. While under the previous legislation the right to seek protection against trademark infringement was only reserved to an exclusive licensee (subject to limitations within the law or a license agreement), and under condition the trademark holder consents thereto, this right to protection is now extended to non-exclusive licensees. The exclusive licensee, on the other hand, may now seek protection against infringement without trademark holder’s consent when the trademark holder fails to act against an infringement within reasonable time (“reasonable” time is not specified by the law and will need to be defined by court practice). Amendments also explicitly stipulate that the licensee has a right to join infringement proceedings as an interested party in order to obtain damages suffered. This was not the case under previous legislation, when the licensee had to prove legal interest to join the court proceedings on a case-by-case basis.
In addition to non-use defence, the opposition proceedings are likely to undergo additional changes in terms of required substantiation and evidence submitted by opposing parties. Under the earlier version of the Slovenian IP Act, the IP Office would be examining whether an opposition is grounded “based on the opposition and opinion of the applicant, if filed” and would refuse or register a trademark after “examining the substantiation of the opposition”, allowing examiners to rely also on facts (known to them) outside of the opposition file that would allow them to determine whether an opposition is grounded. The new Article 102c states that the IP Office will examine whether an opposition is grounded “within limits of opponent’s and applicant’s substantiations, and submitted evidence”. It remains to be seen whether the Slovenian IP Office will interpret this as an introduction of fully adversarial procedure. If this is the case, parties to the opposition proceedings will need to make sure to submit all arguments and evidence in their favour since the final decision will be based solely on the strength of their arguments and weight of their evidence.
Another novelty in the opposition proceedings is an option to suspend proceedings for six (6) months to allow parties to the dispute to explore settlement possibilities. Unlike automatic “cooling-off” period in the EUIPO opposition procedure, the Slovenian “cooling-off” period is available only upon joint request of the parties.
While invalidation and revocation proceedings remain to be handled by the District Court in Ljubljana as a court with exclusive jurisdiction in IP matters (transferring these procedures to the Slovenian IP Office was left for a later date), legal remedies section of the Slovenian IP Act did see some important and logical changes, which are especially relevant due to different effects of judgements in invalidation or revocation procedures. Namely, relative grounds for refusal and bad faith application were moved from revocation action provisions in Article 119 of the Slovenian IP Act (“removal from register action”, or “tožba na izbris znamke” in Slovenian) to invalidation action provision in Article 114 (“annulment action”, or “tožba na ničnost znamke” in Slovenian).
This difference is important because a judgement declaring invalidity of a trademark (due to existence of absolute and/or relative grounds for refusal and/or bad faith) will have an effect as of the start (ex tunc), while a judgement revoking a trademark (when sign becomes a common name or misleading for the goods and/or services covered) will have an effect as of the day a judgement becomes final (ex nunc). Unfortunately, the ex nunc effect also applies for a non-use revocation judgement where an option to seek revocation from an earlier date (when non-use revocation conditions were met or a court action was filed) was not used by the Slovenian legislator.
Finally, the amendments to the Slovenian IP Act also change misdemeanour provisions in Article 134 and (after Slovenia being a member of the euro area for 13 years) change fines to reflect the new official currency (Euro). This article still defines a submission of a fake written evidence that the patented invention fulfils all the substantive criteria, and a representation before the IP Office without a status of a registered patent or trademark representative as misdemeanours. However, it no longer includes the use of Slovenian state official emblems without Government’s consent.
Effect of Amendments
The amendments to the Slovenian IP Act will apply to all pending procedures and trademarks as of 29 March 2020, with the exception of procedures where a legal remedy or a court proceeding were initiated before this date.
Andrej Bukovnik is a partner at Bukovnik & Kulbaba IP Guardians, a Brussels based firm specializing in protection of Intellectual Property Rights in Eastern Europe and Central Asia (www.bk-ip.eu). He is a Slovenian and EU Trademark & Design Attorney and a member of INTA.
For more information contact Andrej Bukovnik at email@example.com