Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 8 months, if no objections or oppositions arise.
If I register my trademark in Slovenia, do I have protection in other territories?
No. Slovenia is the territorial limit of the protection.
Do I need to sign a Power of Attorney?
Yes. A power of attorney is required to complete the application.
Are there any benefits from a pre-filing use of the trademark?
Rights to a trademark are primarily established through registration. However, pre-filing use offers minimal benefits such as:
- Demonstrate the mark’s acquired distinctiveness
- Dismiss oppositions based on non-distinctiveness
Will there be problems in case I don’t use my trademark after registration?
Not using a registered trademark makes it vulnerable to cancellation.
What are the types of trademark that can be registered in Slovenia?
Marks which are capable of being recreated graphically and adding distinction to the good or service are registrable.
- Names/personal names
- 3-dimensional shapes
What are the phases of application after a trademark has been filed in Slovenia?
The process of trademark application in Slovenia in its proper order is as follows:
Examination – All applications will be examined in terms of:
- Compliance with the requirements
- Goods and services must be properly classified
- The mark is clearly described and easy to understand
- The mark is distinct or different from others
- The mark is not deceiving
Publication – Third parties will be given an opportunity to initiate a dispute or opposition. Information about the application will be made accessible to everyone:
- Applicants’ name and address
- Applicants’ state/country of incorporation
- Application’s date and number
- Goods and/or services
- Information on priority claim
- Trademark representation
Registration – If the application was not rejected during the examination phase and if all oppositions are dismissed, the trademark office will then issue the registration certification.
What type of trademark is non-registrable?
The trademark law of Slovenia prohibits the registration of any of these marks:
- Marks that are not compatible with moral principles and public order
- Generic marks and common words
- Names/flags/symbols of international organizations or nations/regions/states
- Marks that are lacking in distinctive qualities
- Names of geographic locations
Does Slovenia use the "Nice Classification" system?
Yes. Nice Classification is effective in Slovenia. A single application is sufficient to allow the trademark to cover multiple classes of goods/services.
Does the Community Trademark apply for Slovenia?
Yes. Slovenia is a European Union member which makes the Community Trademark (currently European Union Trade Mark) registration effective in this jurisdiction.
Is there any possibility to claim priority in Slovenia?
Yes. The home filing date can be recognized as the Slovenia filing date if:
- Home country is a signatory of the Paris Convention
- Home filing date does not exceed 6 months from the date of filing in Slovenia
- Home country is a WTO (World Trade Organization) member
- International registration can be based in Slovenia
What do I need to do to satisfy the use requirement?
The mark must be used within 5 years from the date it was registered and there should be no 5-year gap between each genuine use. Use must be on a business scale and must occur in the territory of Slovenia.
Once my trademark has been registered, for how many years will be valid?
Registered marks in Slovenia are valid for 10 years starting from the application date.
What will be the renewal date of my trademark?
The first renewal date is computed 10 years from the filing of application date.
Is it legal to use my trademark even if it is not yet registered?
Use of unregistered marks for selling goods or services is legal.
Does having a registered trademark in Slovenia afford me any right?
Registration of trademark is mandatory in order for the owners to establish rights.
What is the web address of the trademark national office?
Slovenia’s trademark office is available online via this URL address: www.uil-sipo.si
Is there any need to use my trademark before I apply for registration?
No. Applicants can apply for registration even if they have not used the mark yet.
What are the grounds for a Trademark Application to be opposed?
Applications can be opposed on any of these grounds:
- Proprietary rights
- Unauthorized use of national insignia and / or state emblem
- Company name rights
- Personal name rights
- Registered design rights
- Registration under a different name such as name of agent or other representatives
- Notorious mark rights
- Breach of copyright
- Misleading/disparaging/deceptive mark
Who can contest my trademark registration?
The following people can contest the registration:
- Owners of an earlier conflicting right
- Owners of a conflicting mark that was registered earlier
- Owners of earlier rights to a personal name, industrial property, variety of plant, geographical indication, or copyright
- Owners of a mark that was registered in WTO or Paris Union that was applied for by an agent or representative without the proprietor’s permission
Is it possible to cancel a registration?
Yes. Registered marks are possible to cancel on the grounds of:
- Unsatisfied requirements under Section VIII.A.
- Bad faith
- Mark is banned in Slovenia
- Inclusion of a protected emblem or badge
- Contradiction with moral principles or public policy
- Inclusion of a geographical indication
- Generic mark
- Inclusion of a protected armorial bearing, state emblem or flag
- Proprietary rights
- Non-distinctive mark
- Descriptive mark
- Misleading/deceptive/ disparaging mark
Are there any rights established by having a registered trademark?
Only the owners of a registered mark in Slovenia can obtain these rights:
- Exclusive right to use the mark
- Right to initiate an opposition case against parties applying for a conflicting mark
- Right to appeal for the cancellation of conflicting registrations filed at a later date
- Right to sue third parties for infringing the registered mark
- Right to accept payment from third parties for infringement
- Right to license/authorize third parties to use the mark
- Right to demand from the customs authorities the seizure of counterfeit imported goods
How long is the opposition period?
The opposition period will officially start on the publication date and will end three months after that date.
Is Slovenia a member of the Madrid System?
Yes. Slovenia is a treaty to Madrid Protocol and Madrid Agreement.
Do I need to present periodic statement of use?
No. Trademark owners are not required to file a periodic statement of use.
When should I renew my trademark?
The registered mark must be renewed every 10 years.
What will be the renewal date of my trademark?
The first renewal date is computed 10 years from the filing of application date.
Is there any documentation that should be presented when renewing a trademark?
Documentation is not necessary if the same attorney will renew the mark, but a power of attorney will be required if a different attorney from the initial registration will renew the mark.
If my trademark expires, do I have a grace period?
If the owner fails to renew the mark on time, a grace period of 6 months is available.
What is a trademark?
A trademark identifies products and services in order to distinguish them in the market. The name, the verbal element, is not the only component that distinguishes a trademark; figurative elements such as logos, design, images, colors and sounds also create an identity that can be protected through trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this symbol to show that the trademark has been filed at the trademarks office and is still undergoing the registration process.
SM Some countries use this symbol to show that the service mark has been filed at the trademarks office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
There are many ways to lay claim to your work. Trademarks, patents, and copyrights offer protection for owners of intellectual property. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or a service in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea because we all have them. You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to a problem to secure a patent.
Copyright protect published, performed, or printed creative works. People who produce artistic or musical work seek to protect their “right” to stop others from “copying” what they do. Copyright protection protects any original creative works of authors including:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
A trademark, patent, or copyright are all examples of ways you protect your intellectual property. Your right to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
You recognize a registered trademark by the symbol of a circle-R following the trademark name or graphic image. Various typographic symbols show copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but a best practice is to use a circle-R or circle-C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM sign shows the brand name for an unregistered trademark classified as a product (classes 1 to 34). The owner uses this sign to mark what they believe is their brand mark.
- SM: The SM sign is identical to the TM sign except it designates a service mark (classes 35 to 45).
- ®: ®: Use the ® symbol once you register a trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to mark a copyright. The word copyright is substitute sign for Follow it with the year of the publication and owner's name. Use it whether the work has obtained copyright registration or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe are best describe your business activity.
There are 45 classes – 34 for products and 11 for services – which countries from around the world have standardized for international use under the 'Nice International Classification'.
These classes group all known products and services. You can register the same trademark if there are similar classes, for example, you may register the trademark KING for computers in class 23, and you can also register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is possible, then for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. You can choose multiple classes under which to conduct business if you feel the protection must extend beyond only one class.
You can perform a search of your class with the following tool Trademark Class Search
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing if they have legal coverage, and they put up big marketing campaigns with names that later they find they cannot use. Performing a Comprehensive Search Study before you decide to register your brand mark is a wise decision especially when you consider future risks of litigation.
It is a good idea to conduct a Study before you start doing business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. That company may be able to object to your use of the trademark and prohibit you from using the mark in a court of law.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you find professional help. Our company offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list identical and similar trademarks, and finally, it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you have some knowledge about trademark registration, you can search using any online trademark search tool. If not, we recommend hiring a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially a trademark search because the entire process is complex and takes time.
Notice that if you do not complete the application process carefully, the registration process could be extended for many months and cost far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace given the increasing number of unregistered and common law marks. Globalization of markets also raises the question of entering international markets and registration of marks in foreign countries to protect your brand and your property rights.
You need to understand that even a completed comprehensive trademark search does not guarantee acceptance and registration of your mark. A Trademark Comprehensive Study includes a more extensive review process and, more significantly, a formal opinion estimating the probability of your application's acceptance.