Slovenia Amends Industrial Property Act
The amendments to the Slovenian Industrial Property Act entered into force on July 27, 2023. The amendments aim to harmonize national legislation with the EU and international law, simplify procedures and make them more efficient and affordable.
The amendments transpose into national legislation Article 45 of Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trademarks.
Procedures for revocation and declaration of invalidity will now be initiated before the Slovenian Intellectual Property Office (SIPO). These procedures were previously held before the District Court in Ljubljana. The grounds for revocation due to non-use and for the declaration of invalidity remain the same, but the rules for administrative procedure in accordance with the Industrial Property Act and the General Administrative Procedure Act will now apply, instead ofthe Civil Procedure Act rules. These rules somewhat differ, for example, in terms of document delivery, deadlines and costs of proceedings.
The official fee for revocation or declaration of invalidity before the SIPO will be EUR 500. Previously, a court fee depending on the value of the dispute was applicable.
The new provisions limit the filings to two writs by each party to the proceedings – the applicant may supplement a revocation or declaration of invalidity application once, and the other party may supplement their response once. There was no such limitation for revocation and invalidation actions held before the court.
The amendments expressly stipulate that evidence in a foreign language must be translated into Slovenian.
Parties may now file actions against the SIPO’s decisions before the Administrative Court of Slovenia. Previously, complaints against the District Court’s decisions were filed with the Higher Court in Ljubljana. The court fee for an action before the Administrative Court is currently EUR 148, while the fee for filing an appeal before the Higher Court depended on the value of the dispute.
Pending revocation and declaration of invalidity procedures initiated before the amendments entered into force will be resolved before the court and in accordance with the previous law.
It is important to note that the District Court remains competent for deciding on trademark revocation or invalidation in case of a counterclaim in an infringement action. In such cases the Court must inform the SIPO that such a procedure was initiated before the Court.
A representative before the courts may be an attorney at law or a person that has passed the state bar examination, whereas the SIPO representatives do not need to be attorneys at law but patent or trademark attorneys who are registered and on the SIPO’s list of IP attorneys.
Assessing evidence of use is a relatively new area for the SIPO examiners, as the option to require evidence of use in an opposition procedure based on an earlier right vulnerable to non-use was only introduced in Slovenia with the amendments of the Industrial Property Act in 2020. It will be interesting to see the SIPO’s approach in assessing the evidence and whether there will be any noticeable difference between decisions issued by the SIPO and the District, Higher and Administrative Courts. It will also be interesting to see whether the number of revocation or invalidation cases will now increase due to the change of the competent body; these cases are relatively rare in Slovenia – there are only a couple per year.
A change was also introduced with respect to proving the reputation of EU trademarks which clarifies the uncertainty due to the previous wording that only mentioned the reputation in Slovenia and was wrongly interpreted in a way that the reputation of trademarks, including EU trademarks, must relate to Slovenia. Article 44 (1) (c) now expressly stipulates that for EU trademarks, reputation in the EU should be proven.
The amendments harmonize national legislation with the European Patent Convention (EPC), the Agreement on the application of Article 65 EPC (London Agreement), the Agreement on a Unified Patent Court (UPCA) and Regulation (EU) No 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection.
Inconsistencies in patent rights provisions, in particular the lack of indirect infringement regulations, have been harmonized with the UPCA.
Inconsistencies with the EPC regarding the exemptions from patent protection have been eliminated. The content of the law in this regard did not change but is defined more precisely in accordance with the EPC.
The amendments also comprise the update and clarification of obligations regarding the submission of translations of European patent (EP) claims upon entering the national phase, along with the clarification of any additional changes or limitations during this phase in accordance with the EPC and the London Agreement. The amendments stipulate that the SIPO will declare a EP entered into the national register invalid ex officio when the EP is revoked at the European Patent Office (EPO).
The amendments provide that if the EPO has not granted unitary effect to a EP due to formal reasons, the patent owner may enter the patent in the SIPO’s Patent Register as a national patent.
In accordance with Regulation (EU) No 1257/2012, the amendments regulate the prohibition of the simultaneous effect of a EP as a national patent in Slovenia if the EP has been granted unitary effect in Slovenia.
The amendments stipulate additional ways for a national patent holder to maintain the validity of the patent beyond its tenth year by enabling the submission of several written documents as a basis for the SIPO to issue a declaratory decision.
The amendments enable the SIPO to conclude contracts with other international organizations and other IP offices to provide information services, in particular in relation to unpublished patent applications and unpublished inventions.
The amendments also shorten the time limit for requesting a continuation of proceedings after a missed deadline (for fulfilling the obligations required during the proceedings for the acquisition of a right) from six months to only four months from the missed deadline. This could affect legal certainty, especially in connection to EPs in cases when the holder has missed a deadline for entering the national phase. This provision will be applicable as of September 27, 2023.
It is no longer expressly required that Powers of Attorney (POAs) are given to representatives in written form, which could be interpreted that scanned copies of POAs are acceptable and originals no longer required. In cases where there is more than one representative for a right, if not indicated otherwise, the SIPO will deliver the documents to the most recently registered representative.
Finally, a uniform attorney’s tariff was introduced, which should be accepted by the Association of Slovenian Intellectual Property Attorneys (ASIPA) within one year from the amendments’ entry into force.
Prepared by: Barbara Mencin and Maja Žnidarič Plevnik
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Source: Slovenian Government website