Amendments to the Industrial Property Act ZIL-1E

The Industrial Property (Amendment) Act ZIL-E (Official Gazette of the Republic of Slovenia, No 23/20), which transposes the Directive of European Parliament and Council 2015/2436/EU into Slovenian legislation, introduces some clearer definitions and regulations which were already in use, such as which marks shall be considered earlier marks for the purposes of filing an objection to trademark applications, the fact that the holder of a registered mark may demand the prohibition of the use of a trade name or company name which is similar to his mark, and others. The amendment also summarizes or transposes provisions from other sectoral legislation, such as provisions that industrial-property rights may be disposed of with a license, that industrial-property rights may be subject to enforcement, pledge and rights in rem etc.

Furthermore, the absolute and relative grounds for refusal of trademark registration are modified, whereas capacity for filing claims for judicial protection of industrial property rights has been extended, and now includes holders of licenses.

Also, the obligation of genuine use of the mark is emphasised, mostly with the goal of preventing misuses when someone registers a trade mark, which he does not use, but wishes to nevertheless object to the use of similar marks of others. Regarding objections filed against a trade mark application, the applicant shall now be able to demand that the opposing party demonstrate that it had genuinely used his trade mark during the preceding five years. A similar genuine-use defence shall be possible in trademark-violation claims and claims regarding the nullity of trade marks. In addition, it shall no longer be possible to file a claim regarding the nullity of a trade mark if the holder of the earlier mark knew/was aware of the other similar mark and had not opposed its use within five consecutive years.

ZIL-E also introduces the so-called cooling-off period for objections filed against trade mark applications. Accordingly, the applicant and the opponent shall, in case of a filed objection to a trade mark application, be able to file a joint request to the Slovenian Intellectual Property Office requesting a suspension of proceedings with the aim of trying to reach a friendly settlement. The Intellectual Property Office shall then be able to suspend proceedings for six months. ZIL-E also makes provision for a gradual transition to electronic operation of the Slovenian Intellectual Property Office.

Authors: Tamara Miljanović, Lawyer

Ana Kastelec, Attorney-at-Law

Amendments to the Industrial Property Act ZIL-1E

Amendments to the Industrial Property Act ZIL-1E

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