INDUSTRIAL PROPERTY ACT (2001)

1INDUSTRIAL PROPERTY ACT

of 23 May 2001

as last amended on 6 February 2006

(as in force from 11 March 2006)

Chapter I

BASIC PRINCIPLES

Article 1

Scope of the Act

(1) This Act defines the types of industrial property rights under this Act and

proceedings for the grant and registration of these rights, judicial protection of rights

and representation of parties in the proceedings under this Act.

(2) Industrial property rights under this Act shall be patents, supplementary protection

certificates, industrial designs, marks and geographical indications.

(3) This Act integrates into the legal system of the Republic of Slovenia the provisions

of the Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998

on the legal protection of biotechnological inventions (OJ L 213, 30 July 1998 p. 13),

Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998

on the legal protection of designs (OJ L 289, 28 October 1998, p. 28), First Council

Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member

States relating to trade marks (OJ L 40, 11 February 1989, p. 1) and Directive

2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the

enforcement of intellectual property rights (OJ L 195, 2 June 2004, p. 16).

Article 2

National treatment

(1) Legal and natural persons that are foreign nationals shall enjoy, in respect of the

protection of industrial property rights in the Republic of Slovenia, the same rights as

domestic legal or natural persons, or other domestic nationals, in conformity with the

Agreement on Trade-Related Aspects of Intellectual Property Rights of 15 April 1994

(Official Gazette RS – MP, No 10/95), hereinafter referred to as “the TRIPS

Agreement”, or the application of the principle of reciprocity.

(2) The party invoking reciprocity shall be required to prove the existence of

reciprocity.

Article 3

Applications for the acquisition of industrial property rights

(1) Subject to Article 17, the acquisition of an industrial property right in the Republic

of Slovenia shall be requested by filing a national application with the Slovenian

1 Published in the Official Gazette RS Nos 45/01, 96/02, 37/04, 20/06 and 51/06. Unofficial translation.

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Intellectual Property Office, hereinafter referred to as “the Office”, in accordance with

this Act.

(2) The acquisition of industrial property rights in the Republic of Slovenia may also be

requested on the basis of applications filed abroad, if this is in conformity with an

international treaty which is binding on the Republic of Slovenia. The legal effect of the

rights conferred by such applications shall be the same as that of the rights conferred by

national applications, unless otherwise provided by a respective international treaty.

(3) A national application shall not give rise to an industrial property right if a prior

application has been filed, by the same person, under paragraph (2), for the acquisition

of the same right.

(4) The acquisition of industrial property rights abroad may also be requested on the

basis of applications filed with the Office, if this is in conformity with an international

treaty which is binding on the Republic of Slovenia.

Article 4

Priority of the earlier application

Where two or more applicants file applications to acquire protection for the same

invention, design or sign in the Republic of Slovenia, the applicant who has the earliest

date of filing or, if priority is claimed, the date of priority, shall have priority over the

other applicant.

Article 5

The Office

(1) The main tasks of the Office shall be:

(a) to receive applications by which the acquisition of industrial property rights is

requested;

(b) to carry out autonomously proceedings relating to the grant of patents and

registration of industrial designs, marks and geographical indications, and to grant

patents and register industrial designs, marks and geographical indications;

(d) to provide information services relating to industrial property rights;

(e) to represent the Republic of Slovenia, in conformity with the position, instructions

and authorisation by the Government of the Republic of Slovenia, in foreign and

international organisations in the field of industrial property;

(f) to perform other tasks which fall within its competence.

(2) The Office shall publish its Official Journal containing data on applications and

industrial property rights.

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(3) The Office shall be autonomous with respect to finances relating to payment of fees

under this Act and payments for services supplied under Article 7, and shall verify those

payments.

(4) The Office shall be managed by the Director who shall be responsible for its

operation and shall be appointed by the Government of the Republic of Slovenia.

Article 6

Decisions of the Office

(1) In proceedings for the grant or registration of industrial property rights and

maintenance thereof, and in proceedings concerning the keeping of registers of rights

and other registers, the Office shall issue decisions, orders and other acts pursuant to

this Act. In the absence of corresponding provisions in this Act, the Act regulating

general administrative procedure shall apply.

(2) Proceedings relating to applications under Article 3(2) or (4) shall be conducted by

the Office in conformity with international treaties which are binding on the Republic of

Slovenia and implementing rules and instructions relating thereto. In the absence of

corresponding provisions in the relevant international treaty, the provisions of this Act

shall apply mutatis mutandis.

Article 7

Information to the public

(1) Subject to Article 8, the Office shall make possible for any person to inspect files

relating to applications, and to have access to data relating to applications and rights

granted or registered.

(2) Against payment, the Office shall supply information on the state of the art

comprised in patent documents, and other services in the field of information and

documentation.

(3) The Minister competent for the field of industrial property shall issue an order on the

tariff fixing the kinds and the amount of payments under paragraph (2).

Article 8

Secrecy and inspection of applications

(1) The files relating to patent and industrial design applications shall be official secrecy

until the publication of the patent application in the Official Journal or the registration

of the industrial design.

(2) The files which are official secrecy shall be made available for inspection only with

the consent of the applicant.

(3) Any person who can prove that, in relation to his acts, the applicant informed him in

writing about his application and the scope of requested protection may obtain

inspection of the files which are official secrecy without the consent of the applicant.

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(4) Where a patent application relating to a deposited biological material has been

refused or withdrawn, the deposited biological material shall only be available to an

independent expert for twenty years from the date of filing of the application, if so

requested by the applicant.

(5) Even prior to the publication of the patent application in the Official Journal, the

Office may publish the following data or communicate them to third parties:

(a) the number of the application;

(b) the date of filing of the application and, where the priority is claimed, the date, State

or Office and file number of the previous application;

(d) the title of the invention.

Article 9

Fees

(1) For the acquisition and maintenance of rights under this Act, fees shall be paid in

time limits laid down by this Act. The amounts of fees shall be fixed by a decree issued

by the Government of the Republic of Slovenia.

(2) In proceedings in which fees under paragraph (1) shall be paid, the fees under the

Act regulating administrative fees shall not be payable.

(3) If procedural fees are not paid in due time, or are not paid in full, they are deemed to

be unpaid and the request to be withdrawn, unless otherwise provided by this Act. Upon

request, the Office shall refund the amount which has been paid.

Chapter II

PATENTS

Section I

Patents and short-term patents

Article 10

Subject-matter of patent protection

(1) Patents shall be granted for any inventions, in all fields of technology, which are

new, involve an inventive step and are susceptible of industrial application.

(2) Detailed conditions for the grant of patents in respect of individual fields of

technology with certain technical or technological characteristics shall be defined by a

decree issued by the Government of the Republic of Slovenia.

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Article 11

Exceptions to patent protection

(1) Discoveries, scientific theories, mathematical methods, and other rules, schemes,

methods and processes for performing mental acts as such shall not be considered

inventions within the meaning of Article 10.

(2) A patent shall not be granted for:

(a) inventions, the exploitation of which would be contrary to public order or morality;

(b) inventions of surgical or diagnostic methods or methods of treatment practised

directly on the living human or animal body, with the exception of inventions relating to

products, in particular substances or compositions for use in any of these methods.

Article 12

Novelty

(1) An invention shall be considered to be new if it does not form part of the state of the

art.

(2) The state of the art shall be held to comprise everything made available to the public

by means of an oral or written description, by use, or in any other way, before the date

of filing of the patent application. The right of priority shall have the effect that the date

of priority shall count as the date of filing for the purposes of this Article.

(3) The contents of the following applications, which have been filed before the date

referred to in paragraph (2) and which were published on or after that date, shall also be

considered as comprised in the state of the art:

(a) national patent applications, as originally filed with the Office;

(b) European patent applications, as originally filed with the European Patent Office,

hereinafter referred to as “the EPO”, under the European Patent Convention of 5

October 1973, hereinafter referred to as “the EPC”, requesting protection in the

Republic of Slovenia;

19 June 1970, as amended on 2 October 1979 and modified on 3 February 1984

(Official Gazette RS – MP, No 19/93), hereinafter referred to as “the PCT”, received by

the Office as the elected Office in accordance with Article 39 of the PCT.

(4) The provisions of paragraphs (1) to (3) shall not exclude from patentability any

substance or composition comprised in the state of the art where it is intended for use in

a method of treatment referred to in Article 11(2)(b) and such use is not comprised in

the state of the art.

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Article 13

Non-prejudicial disclosures

(1) For the purpose of applying Article 12, a disclosure of the invention shall not be

taken into consideration if it occurred no earlier than six months preceding the filing of

the application and if it was due to, or in consequence of:

(a) an evident abuse in relation to the applicant or his legal predecessor, or

(b) the fact that the applicant or his legal predecessor has displayed the invention at an

official, or officially recognised, international exhibition referred to in Article 62.

(2) The provision of paragraph (1)(b) shall apply only if the applicant states, when filing

the application, that the invention has been so displayed and files a supporting

certificate in conformity with Article 62(2).

Article 14

Inventive step

(1) An invention shall be considered as involving an inventive step if, having regard to

the state of the art within the meaning of Article 12(2), it is not obvious to a person

skilled in the art.

(2) If the state of the art also includes documents within the meaning of Article 12(3),

these documents are not to be considered in deciding whether there has been an

inventive step.

(3) Where an applicant, after having filed an application which has not yet been

published, files another application for the same invention, the first application is not to

be considered in deciding whether there has been an inventive step in the second

application.

Article 15

Industrial application

An invention shall be considered as susceptible of industrial application if it can be

made or used in any kind of industry, including agriculture.

Article 16

Subject-matter of short-term patent protection

(1) With the exception of processes, plant varieties and animal breeds, a short-term

patent may be granted for inventions which are new, susceptible of industrial

application and are the result of a creative effort.

(2) An invention shall be considered to be the result of a creative effort if it exhibits

either particular effectiveness or a practical industrial advantage.

(3) The provisions of this Act relating to patents shall apply mutatis mutandis to shortterm

patents, unless otherwise provided by this Act.

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Article 17

Secret inventions

(1) Invention which are important for the defence or security of the Republic of

Slovenia shall be deemed secret and shall be registered at the Ministry competent for the

defence.

(2) The conditions of exploitation of secret inventions, in particular compensation for

the exploitation, shall be subject to mutual agreement between the inventor and the

Ministry competent for the defence.

(3) The application for the invention referred to in paragraph (1) may be filed with the

Office if the Ministry competent for the defence does not wish to exploit it or if it

consents to the filing of the patent application.

Article 18

Rights conferred by a patent

(1) A patent shall confer on its owner the following exclusive rights:

(a) where the subject-matter of a patent is a product, to prevent third parties not having

the owner’s consent from the acts of making, using, offering for sale, selling, or

importing for these purposes that product;

(b) where the subject-matter of a patent is a process, to prevent third parties not having

the owner’s consent from the act of using the process, and from the acts of offering for

sale, selling, or importing for these purposes the product obtained directly by that

process.

(2) The scope of protection conferred by a patent shall be determined by the terms of the

claims. Nevertheless, the description and drawings shall be used to interpret the claims.

Article 19

Limitation of rights conferred by a patent

The rights conferred by a patent within the meaning of Article 18 shall not extend to:

(a) acts done privately and for non-commercial purposes;

(b) acts done for research and experimental purposes of any kind relating to the subjectmatter

of the patent irrespective of their final purpose;

accordance with a medical prescription nor acts concerning the medicine so prepared;

(d) the use on board vessels of other countries of the patented invention, in the body of

the vessel, in the machinery, tackle, gear and other accessories, when such vessels

temporarily or accidentally enter the waters of the Republic of Slovenia, provided that

the invention is used there exclusively for the needs of the vessel;

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(e) the use of the patented invention in the construction or operation of aircraft or land

vehicles of other countries, or of accessories to such aircraft or land vehicles, when

those aircraft or land vehicles temporarily or accidentally enter the territory of the

Republic of Slovenia;

(f) the acts specified in Article 27 of the Convention on International Civil Aviation of 7

December 1944 (Official Gazette FLRJ-MP Nos 3/54, 5/54, 9/61, 5/62, 11/63, 49/71,

62/73, 15/78, 2/80, Official Gazette RS-MP No 9/92), where these acts concern the

aircraft of a State benefiting from the provisions of that Article.

Article 20

Right based on prior use

(1) The rights conferred on the owner of a patent by virtue of Article 18 shall have no

legal effect vis-a-vis a person who was using the invention in the Republic of Slovenia

in good faith before the date of filing or, if priority is claimed, the date of priority, or

was making preparations for such use, and who continues such use. Such person retains

the right to use the invention, but has no right to give licence or otherwise use the

invention.

(2) The right of the person referred to in paragraph (1) to continue the use of the

invention may only be transferred together with his enterprise or business in which the

use or preparations for use have been made.

Article 21

Exhaustion of the rights conferred by a patent

(1) The rights conferred by a patent shall not extend to acts concerning a product

covered by that patent which are done in the Republic of Slovenia after that product has

been put on the market in the Republic of Slovenia by the owner of the patent or with

his express consent, unless there are grounds which, under the law of the Republic of

Slovenia, would justify the extension to such acts of the rights conferred by the patent.

(2) The exhaustion of the rights referred to in paragraph (1) may be extended beyond

the territory of the Republic of Slovenia, if this is in conformity with an international

treaty which is binding on the Republic of Slovenia.

Article 22

Term of a patent

(1) Subject to Article 91(3) and corresponding provisions of Article 109, the term of a

patent shall be twenty years as from the date of filing of the application.

(2) Immediately on expiry, the term of a patent may be extended once in the case of a

state of war or similar emergency conditions, for the duration of such state or

conditions, but not for more than five years.

(3) Immediately on expiry of the term of the patent, a supplementary protection

certificate may be granted once, in accordance with a decree issued by the Government

of the Republic of Slovenia, if the subject-matter of the patent is a product or a process

of manufacturing a product or a use of a product which has to undergo an administrative

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authorisation procedure required by law before it can be put on the market, but not for

more than five years.

Article 23

Term of a short-term patent

Subject to corresponding provisions of Article 109, the term of a short-term patent shall

be ten years as from the date of filing of the application.

Section II

European patent applications and European patents

Article 24

Applicable law

(1) Patents granted by the EPO in accordance with the EPC, hereinafter referred as

“European patents”, and applications for a European patent filed in accordance with the

EPC, hereinafter referred to as “European patent applications”, requesting protection in

the Republic of Slovenia shall be governed by this Act, unless otherwise provided by

the EPC.

(2) In case of conflict between the provisions of the EPC and those of this Act, the

provisions of the EPC shall prevail in respect of European patent applications and

European patents.

Article 25

Filing of European patent applications

(1) European patent applications, other than divisional applications, may be filed with

the Office in any language accepted under Article 14(1) and (2) of the EPC.

(2) Article 17 shall apply to European patent applications relating to inventions that may

affect the national security of the Republic of Slovenia.

Article 26

Effects of a European patent application

(1) A European patent application requesting protection in the Republic of Slovenia

which has been accorded a filing date shall be equivalent to a national application,

where appropriate with the priority claimed for the European patent application,

whatever its outcome may be.

(2) A published European patent application requesting protection in the Republic of

Slovenia shall confer the protection conferred under Article 122(4) as from the date on

which a translation of the claims of that application as published has been

communicated by the applicant to the person using the invention in the Republic of

Slovenia.

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Article 27

Effects of a European patent

(1) A European patent requesting protection in the Republic of Slovenia shall, subject to

paragraphs (2) to (4), confer as from the date of the mention of its grant by the EPO the

same rights as a patent granted by the Office under Article 18.

(2) The owner of the European patent shall furnish to the Office within three months

after the mention of its grant a translation of the claims into the Slovene language and

shall pay the prescribed fee for publication.

(3) Where, as a result of an opposition procedure before the EPO, the European patent is

maintained as amended, paragraph (2) shall apply mutatis mutandis.

(4) If the text of the claims contains reference signs used in drawings, those drawings

shall be attached to the translation referred to in paragraphs (2) and (3). The text in the

drawings, if any, shall also be translated into the Slovene language.

(5) The Office shall publish any translation filed in conformity with paragraphs (2), (3)

or (4).

(6) Where the owner of the European patent complies with paragraph (2), the Office

shall issue a decision on entry of the European patent in the Office’s patent register.

(7) If the translation referred to in paragraphs (2), (3) or (4) is not filed, or the

prescribed fee is not paid, in due time, the European patent requesting protection in the

Republic of Slovenia shall be deemed to be void.

Article 28

Authentic text of European patent applications or European patents

(1) Where a translation referred to in Articles 26 and 27 confers protection which is

narrower than that conferred by a European patent application or European patent in the

language of the proceedings, that translation shall be regarded as the authentic text,

except for opposition proceedings before the EPO.

(2) The applicant for or owner of the European patent may file a corrected translation of

claims at any time. The corrected translation shall take effect only after it has been

published by the Office, or communicated to the person using the invention in the

Republic of Slovenia by the applicant for or owner of the European patent.

(3) Any person who, in good faith, is using or has made effective and serious

preparations for using an invention, the use of which would not constitute infringement

of the application or patent in the original translation may, after the corrected translation

takes effect, continue such use in the course of his business and for the needs thereof

without payment.

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Article 29

Fees for European patents

(1) Subject to Articles 109 and 110, renewal fees in respect of European patents

requesting protection in the Republic of Slovenia shall be paid to the Office for each

year following that in which the order on the grant of the European patent is published.

Where the renewal fee for the third year of the maintenance of a European patent has

not been paid to the EPO, it shall be paid to the Office.

(2) Notwithstanding paragraph (1), the first renewal fee in respect of a European patent

shall fall due within two months after the order on the grant of the European patent is

published.

(3) Pursuant to Article 39 of the EPC, the European Patent Organisation shall be

remitted a proportion of fees paid under this Article.

Article 30

Conversion into a national patent application

(1) A European patent application requesting protection in the Republic of Slovenia

may be converted into a national patent application, where the European patent

application is deemed to be withdrawn pursuant to Article 77(5) of the EPC or, because

the translation of the application under Article 14(2) of the EPC has not been filed in

due time, pursuant to Article 90(3) of the EPC.

(2) The applicant shall pay, within the prescribed time limit, the prescribed fee, and file

a translation of the application into the Slovene language with the Office.

Article 31

Simultaneous protection

Where a European patent and a national patent having the same date of filing or, if

priority is claimed, date of priority, have been granted to the same person, the national

patent shall have no legal effect, to the extent that it covers the same invention as the

European patent, as from the date on which the time limit for filing an opposition to the

European patent has expired without an opposition having been filed, or as from the

date on which the opposition procedure has resulted in a final decision maintaining the

European patent.

Section III

PCT patent applications

Article 32

Applications under the PCT

(1) The Office shall act as a receiving Office under the PCT.

(2) The Office shall accept international applications filed by nationals of the Republic

of Slovenia or persons having their residence or seat therein.

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(3) International applications under the PCT shall be filed in English, French or German

language. They may also be filed in the Slovene language if a translation in English,

French or German language is submitted to the Office within the time limit prescribed

in implementing rules and instructions under the PCT.

(4) The Office shall collect fees in respect of applications under this Article on behalf

and for the account of the International Bureau of the World Intellectual Property

Organization.

(5) The EPO shall act as an International Searching Authority and International

Preliminary Examining Authority in respect of international applications under the PCT

filed with the Office.

(6) A designation or election of the Republic of Slovenia in an international application

under Article 2(viii) of the PCT shall be considered as a request for the grant of a

European patent having effect in the Republic of Slovenia under an international treaty

which is binding on the Republic of Slovenia.

Chapter III

INDUSTRIAL DESIGNS

Section I

Industrial designs

Article 33

Subject-matter of industrial design protection

(1) An industrial design shall be registered for a design to the extent that it is new and

has an individual character.

(2) “Design” means the appearance of the whole or a part of a product resulting from

the features of, in particular, the lines, contours, colours, shape, texture and/or materials

of the product itself and/or its ornamentation.

(3) “Product” means any industrial or handicraft item, including, inter alia, parts

intended to be assembled into a complex item, packaging, get-up, graphic symbols and

typographic typefaces, but excluding computer programmes. “Complex product” means

a product which is composed of multiple components which can be replaced permitting

disassembly and reassembly of the product.

(4) A design applied to a component part of a complex product shall only be considered

to be new and to have an individual character:

(a) if the component part, once it has been incorporated into the complex product,

remains visible during normal use of the latter, and

(b) to the extent that those visible features of the component part fulfil in themselves the

requirements as to novelty and individual character.

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(5) “Normal use” within the meaning of paragraph (4)(a) shall mean use by the end

user, excluding maintenance, servicing or repair work.

Article 34

Novelty and individual character

(1) A design shall be considered new if no identical design has been made available to

the public before the date of filing of the industrial design application or, if priority is

claimed, the date of priority. Designs shall be deemed to be identical if their features

differ only in immaterial details.

(2) A design shall be considered to have individual character if the overall impression it

produces on the informed user differs from the overall impression produced on such a

user by any design which has been made available to the public before the date of filing

of the application or, if priority is claimed, the date of priority.

(3) In assessing individual character, the degree of freedom of the designer in

developing the design shall be taken into consideration.

Article 35

Disclosure of a design

(1) For the purpose of applying Article 34, a design shall be deemed to have been made

available to the public if it has been published following registration or otherwise, or

exhibited, used in trade or otherwise disclosed, except where these events could not

have become known in the normal course of business to the circles specialised in the

sector concerned, operating within the European Community, before the date of filing of

the application or, if priority is claimed, the date of priority. The design shall not,

however, be deemed to have been available to the public for the sole reason that it has

been disclosed to a third person under explicit or implicit conditions of confidentiality.

(2) For the purpose of applying Article 34, disclosure shall not be taken into

consideration if a design for which protection is sought has been made available to the

public in the European Community:

(a) by the designer, his successor in title, or a third person as a result of information

provided or action taken by the designer, or his successor in title, and

(b) during the twelve month period preceding the date of filing of the application or, if

priority is claimed, the date of priority.

(3) Paragraph (2) shall also apply if the design has been made available to the public as

a consequence of an abuse in relation to the designer or his successor in title.

Article 36

Refusal of an industrial design

(1) A design shall not be registered as an industrial design if:

(a) it is not a design within the meaning of Article 33(2);

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(b) it does not fulfil the requirements of Article 33(1) or (4), or Articles 34 or 35, or is in

conflict with a design having effect in the Republic of Slovenia on the basis of an

application with an earlier date of filing;

of Industrial Property of 20 March 1883, last revised on 14 July 1967 (Official Gazette

SFRJ-MP Nos 5/74, 7/86, Official Gazette RS-MP No 9/92), hereinafter referred as “the

Paris Convention”, on the ground that authorisation by the competent authorities has not

been submitted;

(d) it includes or imitates badges, emblems or escutcheons other than those covered by

Article 6ter of the Paris Convention and which are of particular public interest, unless the

consent of the competent authorities to its registration has been given;

(e) it is contrary to public order or morality.

(2) An industrial design shall not subsist in features of appearance of a product, which

are solely dictated by its technical function.

(3) An industrial design shall not subsist in features of appearance of a product which

must necessarily be reproduced in their exact form and dimensions in order to permit

the product to which the design is applied to be mechanically connected to or placed in,

around or against another product so that either product may perform its function.

(4) Notwithstanding paragraph (3), an industrial design shall, under the conditions set

out in Article 34, subsist in a design serving the purpose of allowing multiple assembly

or connection of mutually interchangeable products within a modular system.

Article 37

Rights conferred by an industrial design

(1) The industrial design shall confer on its owner the exclusive right to use it and to

prevent any third party not having his consent from using it. The aforementioned use

shall cover, in particular, the making, offering, putting on the market, importing,

exporting or using of a product to which the design is applied, or stocking such a

product for those purposes.

(2) The scope of protection shall include any design which does not produce on the

informed user a different overall impression. In assessing the scope of protection, the

degree of freedom of the designer in developing the design shall be taken into

consideration.

(3) The rights referred to in paragraph (1) shall not extend:

(a) to the importation of spare parts and accessories for the purpose of repairing a ship

or aircraft temporarily entering the territory of the Republic of Slovenia, and to the

execution of repairs on such ship or aircraft, and mutatis mutandis to acts referred to in

Article 19, with the exception of subparagraph (c);

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(b) to acts of reproduction for the purposes of making citations or of teaching, provided

that such acts are compatible with fair trade practice and do not unduly prejudice the

normal exploitation of the design, and that mention is made of source.

(4) Any third person may assert the right based on prior use in respect of an industrial

design. In this case, provisions of Article 20 shall apply mutatis mutandis.

Article 38

Exhaustion of rights conferred by an industrial design

(1) The rights conferred by an industrial design shall not extend to acts relating to a

product to which the design is applied, when the product has been put on the market in

the Republic of Slovenia by the owner of the industrial design or with his consent.

(2) The exhaustion of rights referred to in paragraph (1) may be extended beyond the

territory of the Republic of Slovenia, if this is in conformity with an international treaty

which is binding on the Republic of Slovenia.

Article 39

Other forms of industrial design protection

(1) Provisions of this Act concerning industrial designs shall be without prejudice to

provisions of other Acts relating to unregistered industrial designs, marks or other

distinctive signs, patents, utility models, typefaces, civil liability or unfair competition.

(2) An industrial design shall be eligible for copyright protection as from the date on

which the design was created or fixed in any form if it fulfils the conditions under

which such a protection is conferred under the Act regulating copyright and related

rights.

Article 40

Term of an industrial design

(1) The term of an industrial design shall be one or more periods of five years as from

the date of filing of the application.

(2) Subject to corresponding provisions of Article 109, the owner of an industrial design

may renew its term for one or more periods of five years each, up to a total term of 25

years from the date of filing of the application.

(3) The term of a multiple industrial design may be renewed, in conformity with

paragraph (2), as a whole, or in limited scope for only some products.

Section II

International deposit of industrial designs

Article 41

Requests under the Hague Agreement

(1) The requests under the Hague Agreement Concerning the International Deposit of

Industrial Designs of 28 November 1960, as completed on 14 July 1967 and amended

(URSIL/SIPO ZIL_EN_2006) 16

on 28 September 1979 (Official Gazette RS-MP No 20/94), hereinafter referred to as

“the Hague Agreement” shall be filed, in accordance with the Hague Agreement and

implementing rules and instructions thereto, with the International Bureau.

(2) In accordance with Article 8 of the Hague Agreement, provisions of this Act, with

the exception of the provision of Article 96(2), shall apply mutatis mutandis to requests

under the Hague Agreement by which protection of an industrial design is sought in the

Republic of Slovenia.

Chapter IV

MARKS

Section I

Marks and collective marks

Article 42

Subject-matter of mark protection

(1) Any sign, or any combination of signs, capable of distinguishing the goods or

services of one undertaking from those of another undertaking, and capable of being

graphically represented, in particular words, including personal names, letters,

numerals, figurative elements, three dimensional images, including the shape of goods

or of their packaging, combinations of colours as well as any combination of such signs,

shall be eligible for registration as marks.

(2) In deciding whether a sign is eligible for registration as a mark, all circumstances, in

particular the duration of its use, shall be taken into account.

(3) The nature of the goods or services to which a mark is to be applied shall in no case

form an obstacle to the registration of the mark.

Article 43

Absolute grounds for refusal

(1) A sign shall not be eligible for registration as a mark if:

(a) it cannot constitute a mark;

(b) it is devoid of any distinctive character;

value, geographical origin, or the time of production of the goods or of rendering of the

service, or other characteristics of the goods or services;

(d) it contains or consists of a geographical indication identifying wines or spirits,

where the mark application relates to wines or spirits not having this origin;

(e) it consists exclusively of signs or indications which have become customary in the

current language or in the bona fide and established practices of the trade;

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(f) it consists exclusively of the shape which results from the nature of the goods

themselves or is necessary to obtain a technical result or gives substantial value to the

goods;

(g) it is contrary to public order or morality;

(h) it deceives the public, in particular to the nature, quality or geographical origin of

the goods or services;

(i) it contains official signs or hallmarks for controlling or guaranteeing the quality of

goods, or imitations thereof;

(j) it has not been authorised by the competent authorities and should be refused

pursuant to Article 6ter of the Paris Convention;

(k) it includes or imitates badges, emblems or escutcheons other than those covered by

Article 6ter of the Paris Convention and which are of particular public interest, unless the

consent of the competent authorities to its registration has been given;

(l) it contains or consists of a designation of origin or a geographical indication

registered in accordance with the Council Regulation (EEC) No 2081/92 of 14 July

1992 on the protection of geographical indications and designations of origin for

agricultural products and foodstuffs (OJ L 208/92, p. 1), provided that the

circumstances referred to in Article 13 of that Regulation exist and the sign does not

relate to the same sort of product, and provided that the mark application has been filed

after the date of filing of the application for the registration of a designation of origin or

a geographical indication with the Commission.

(2) Paragraph 1(b), (c) and (e) shall not apply to marks which acquired a distinctive

character through long-term use.

(3) A sign which is ineligible for registration because it contains the name or

abbreviation of the name, State armorial bearing, emblem, flag or other official sign of

the Republic of Slovenia, or a part thereof, which is in breach of the provisions of

paragraph (1)(j) and (k), shall not be used in the course of trade without the consent of

the Government of the Republic of Slovenia.

Article 44

Relative grounds for refusal

(1) Further, a sign shall not be eligible for registration as a mark if:

(a) it is identical with an earlier mark of another owner, and the goods or services for

which the registration is applied for are identical with the goods or services for which

the earlier mark is registered;

(b) because of its identity with or similarity to the earlier mark of another owner and the

identity or similarity of the goods or services covered by the sign and the mark there

exist the likelihood of confusion on the part of the public, which includes the likelihood

of association with the earlier mark;

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registered for goods or services which are not identical with or similar to the goods or

services for which the registration has been applied for, the use without due cause of

such sign would take unfair advantage of, or be detrimental to, the distinctive character

or the repute of the earlier mark, or if it would indicate a connection between the goods

or services and the owner of the earlier mark, and provided that the interests of the

owner of the earlier mark are likely to be damaged by such use;

(d) it is identical with or similar to a mark or unregistered sign, which is in the Republic

of Slovenia a well-known mark within the meaning of Article 6bis of the Paris

Convention or Article 16(3) of the TRIPS Agreement;

(e) the owner of the mark registered in any Member State of the Union established

under the Paris Convention, hereinafter referred to as “the Paris Union”, or the World

Trade Organisation, hereinafter referred to as “the WTO”, proves that his agent or

representative applied, without the owner’s consent, for the registration of the sign in

his own name;

(f) its use would contradict an earlier right to a name, personal portrayal, plant variety,

geographical indication or other industrial property right, or an earlier copyright, unless

the owner of the earlier right gives his express consent to the registration of such sign.

(2) “Earlier mark” within the meaning of paragraph (1) means:

(a) mark which was applied for or registered in the Republic of Slovenia on the basis of

a national application before the date of filing of the application for the later mark or, if

priority is claimed, the date of priority;

(b) mark for which the protection was sought in the Republic of Slovenia on the basis of

an international application before the date of filing of the application for the later mark

or, if priority is claimed, the date of priority.

Article 45

Subject-matter of collective mark protection

(1) Any sign which meets the requirements of Article 42 and is capable of

distinguishing the goods or services of the members of the holder of the collective mark

from those of another undertakings as to their origin in a given enterprise or their

geographical origin, their nature, quality, or other properties, shall be eligible for

registration as a collective mark.

(2) The applicant for or holder of a collective mark may be any association of legal or

natural persons, including umbrella associations having legal personality, hereinafter

referred to as “the associations”, or legal persons governed by public law.

(3) The members of the holder may use a collective mark in conformity with regulations

referred to in Article 46.

(4) The provisions of this Act shall apply to the registration of collective marks, unless

otherwise provided by this Act.

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Article 46

Regulations governing use of a collective mark

(1) An applicant for a collective mark must submit, when filing the application,

regulations governing use of the collective mark.

(2) Regulations referred to in paragraph (1) shall include at least:

(a) the name and seat of the applicant;

(b) indication of the applicant’s business and information concerning the person whom

he officially and by laws represents;

(d) data concerning the group of persons having authority to use the collective mark;

(e) provisions concerning the rights and obligations of the members in the event of

infringement of the collective mark.

(3) The applicant for or holder of a collective mark shall immediately communicate to

the Office any amendment to the regulations, which shall be examined by the Office as

to its compliance with paragraph (2).

(4) Anyone may inspect the regulations governing use of a collective mark.

Article 47

Rights conferred by a mark

(1) A mark shall confer on the owner exclusive right to use the mark and other exclusive

rights under this Act. The owner of a mark shall be entitled to prevent all third parties

not having his consent from using in the course of trade:

(a) any sign which is identical with the mark in relation to goods or services which are

identical with those for which the mark is registered;

(b) any sign where, because of its identity with or similarity to the mark and the identity

or similarity of the goods or services covered by the mark and the sign, there exists a

likelihood of confusion on the part of the public, which includes the likelihood of

association between the sign and the mark;

services which are not similar to those for which the mark is registered, where the mark

has a reputation in the Republic of Slovenia and where the use without due cause of that

sign would take unfair advantage of, or be detrimental to, the distinctive character or the

repute of the mark.

(2) The following, inter alia, may be prohibited under paragraph (1):

(a) affixing the sign to the goods or to the packaging thereof;

(URSIL/SIPO ZIL_EN_2006) 20

(b) offering the goods, putting them on the market or stocking them for these purposes

under that sign, or offering or supplying services thereunder;

(d) using the sign on business papers and in advertising.

Article 48

Limitation of rights conferred by a mark

(1) The mark shall not entitle the owner to prohibit a third party from using in the

course of trade and in accordance with honest practices in industrial or commercial

matters:

(a) his own name or address;

(b) indications concerning the kind, quality, quantity, intended purpose, value,

geographical origin, the time of production of goods or of rendering the service, or other

characteristics of goods or services;

service, in particular as accessories or spare parts;

(d) any sign which is identical or similar to the mark, where the third party started to use

it in good faith before the date of filing of the application or, if priority is claimed, the

date of priority.

(2) Where the owner of an earlier mark as referred to in Article 44(2) has not opposed,

in a period of five successive years, the use of the later mark while being aware of such

use, he shall no longer be entitled on the basis of the earlier mark to file an action under

Article 114 or 119, or prohibit the use of the later mark in respect to the goods or

services for which the later mark has been used, unless registration of the later mark was

applied for in bad faith.

Article 49

Limitation of rights conferred by a collective mark

(3) The holder of a collective mark which consists also of an indication of the

geographical origin shall enable any person whose goods or services originate in the

geographical area concerned and meet the conditions for use set out in the regulations

governing use of the collective mark to become a member of the association which is

the holder of the mark.

Article 50

Exhaustion of rights conferred by a mark

(1) A mark shall not entitle the owner to prohibit its use in relation to goods which have

been put on the market in the Republic of Slovenia by the owner or with his consent.

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(2) Paragraph (1) shall not apply where there exist legitimate reasons for the owner to

oppose further commercialisation of the goods, especially where the condition of the

goods is changed or impaired after they have been put on the market.

(3) The exhaustion of rights referred to in paragraph (1) may be extended beyond the

territory of the Republic of Slovenia, if this is in conformity with an international treaty

which is binding on the Republic of Slovenia.

Article 51

Reproduction of marks in dictionaries

If the reproduction of a mark in a dictionary, encyclopaedia or similar reference work

gives the impression that it constitutes the generic name of the goods or services for

which the sign is registered, the publisher of the work shall, at the request of the owner

of the mark, ensure that the reproduction of the mark at the latest in the next edition of

the publication is accompanied by an indication that it is a mark.

Article 52

Term of a mark

(1) The term of a mark shall be ten years computed from the date of filing of the

application.

(2) Subject to corresponding provisions of Article 109, the owner of a mark may renew

its term an unlimited number of times, each time for ten years, computed from the date

of filing of the application.

(3) The term of a mark may be renewed, in accordance with paragraph (2), as a whole,

or in limited scope for only some goods or services.

Section II

International registrations of marks

Article 53

Filing of requests with the Office

(1) The Office shall accept requests under the Madrid Agreement Concerning the

International Registrations of Marks of 14 April 1891 as last revised on 14 July 1967

(Official Gazette SFRJ-MP No 2/74, Official Gazette RS-MP No 9/92), hereinafter

referred to as “the Madrid Agreement” and the Protocol Relating to the Madrid

Agreement Concerning the International Registrations of Marks of 27 June 1997

(Official Gazette RS-MP No 21/97), hereinafter referred to as “the Madrid Protocol”.

(2) Upon filing the request, or within three months after the receipt of the Office’s

invitation, the fee shall be paid. If the fee is not paid in due time, the request shall be

deemed to be withdrawn.

(3) The request for international registration of a mark shall be accompanied by a list of

goods or services in the language prescribed by the Madrid Agreement or the Madrid

Protocol, and implementing rules and instructions thereto.

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(4) If the request is not drawn up in conformity with the Madrid Agreement or the

Madrid Protocol, implementing rules and instructions thereto, this Act and executive

regulations thereto, the Office shall invite the person filing the request to amend the

request within three months from the receipt of the invitation. If the request is not

amended in due time, it shall be deemed to be withdrawn.

(5) An executive regulation issued by the Minister competent for the field of industrial

property shall define, in greater detail, the contents of the request referred to in

paragraph (1) and procedures relating thereto.

Article 54

Examination of international marks

(1) In accordance with Article 5 of the Madrid Agreement or Article 5 of the Madrid

Protocol, the provisions of this Act, other than those of Article 103, shall apply mutatis

mutandis to requests under the Madrid Agreement and the Madrid Protocol, by which

the protection of a mark is sought in the Republic of Slovenia.

(2) The publication of data concerning the international registration of a mark in the

Gazette of the International Bureau shall be construed as the publication of the mark

application in the Republic of Slovenia.

(3) Where the owner of the mark for which protection is sought in the Republic of

Slovenia under the Madrid Agreement or the Madrid Protocol does not comment on the

intended refusal of the protection of the mark, of which he has been notified in

conformity with Article 5 of the Madrid Agreement or Article 5 of the Madrid Protocol,

the Office shall, notwithstanding Article 129(5), mail the decision through a postal

service directly to the owner of the mark.

Chapter V

GEOGRAPHICAL INDICATIONS

Article 55

Subject-matter of protection of registered geographical indications

(1) Geographical indications eligible for registration are indications which identify a

good as originating in a territory, or a region or a locality in that territory, where a given

quality, reputation or other characteristic of the good is essentially attributable to its

geographical origin.

(2) The name of a good, which has become generally known through long-term use in

the course of trade as the name indicating that the good originates in a specific place or

region, is also eligible for registration as a geographical indication.

(3) Geographical indications relating to a good of special historic or cultural importance

may be protected by a decree issued by the Government of the Republic of Slovenia.

(4) Geographical indications for agricultural products and foodstaffs as well as for

wines and other products obtained from grapes or wine shall not be eligible for

registration under this Act.

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Article 56

Grounds for refusal

A geographical indication shall not be eligible for registration if:

(a) it indicates or suggests that the good in question originates in a geographical area

other than the true place of origin in a manner which misleads the public as to the

geographical origin of the good;

(b) although literally true as to the territory, region or locality in which the good

originates, it falsely represents to the public that the good originates in another territory;

designation for a specific kind of goods;

(d) in the light of a mark’s reputation and renown and the length of time it has been

used, registration is liable to mislead the consumer as to the true identity of the product.

Article 57

Protection against general use

Registered geographical indications may not become generic or common names which

would be freely used in the course of trade.

Article 58

Rights conferred by a registered geographical indication

(1) A registered geographical indication is a collective right and may be used as such in

the course of trade only by those who, in accordance with the specification referred to in

Article 104(2), produce or market the goods protected by the geographical indication.

(2) The use of a registered geographical indication by unauthorised persons shall be

prohibited.

(3) The use of a registered geographical indication shall be prohibited where the goods

do not originate in the place indicated by the geographical indication, even if the true

origin of the goods is indicated, and where the geographical indication is used in

translation or accompanied by expressions such as “kind”, “type”, “style”, “imitation”

or the like.

Article 59

Limitation of rights conferred by a registered geographical indication

(1) A mark shall not be cancelled nor its use prohibited where a mark which is identical

with or similar to a registered geographical indication has been applied for or registered

in good faith, or where rights to a mark have been acquired through use in good faith

before the geographical indication has been registered.

(2) A registered geographical indication shall not exclude the right of any person to use,

in the course of trade, that person’s name or the name of that person’s predecessor in

business, except where such name is used in such a manner as to mislead the public.

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Article 60

Term of a registered geographical indication

The term of a registered geographical indication shall be unlimited.

Chapter VI

GENERAL PROVISIONS CONCERNING PROCEDURES BEFORE THE

OFFICE

Article 61

International right of priority

(1) Any person who has duly filed an application for a patent, industrial design or mark

in any Member State of the Paris Union or WTO shall enjoy, for the purpose of filing

the application in the Republic of Slovenia, a right of priority, for patents during a

period of twelve months, and for industrial designs and marks during a period of six

months following the date of filing of the first application.

(2) A person claiming the right of priority referred to in paragraph (1) shall indicate,

when filing the application in the Republic of Slovenia, the date of the claimed priority.

Within three months after the filing of the application, the number and State or Office of

the first application shall be communicated to the Office. If the applicant fails to comply

with the provision of this paragraph, the priority shall be deemed not to have been

claimed.

(3) Upon the request of the Office or, in case of dispute, upon the request of the court,

the person requesting the right of priority shall submit a copy of the first application,

certified by the competent authority in the Member State of the Paris Union or WTO, in

which such application was filed. A copy of the first application may not be required

before the expiration of sixteen months from the filing of the first application.

(4) Where the copy of the first application referred to in paragraph (3) is not the Slovene

language and the validity of the priority claim is relevant to the determination of

whether the invention concerned is patentable, the Office or, in case of dispute, the

court may require that a translation of the first application in the Slovene language be

filed by the person requesting priority within three months from the receipt of the

invitation.

(5) Multiple priorities may be claimed in respect of several previous applications filed

in one or several countries.

(6) The applicant may claim the right of priority for a patent application on the basis of

a utility model application.

(7) Upon request and against payment of the fee prescribed by the Act regulating

administrative fees, the Office shall issue a priority certificate. An executive regulation

issued by the Minister competent for the field of industrial property shall define, in

greater detail, the contents of the priority certificate and proceedings relating to the

issuance thereof.

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Article 62

Temporary protection at certain international exhibitions

(1) A person who displays an invention, appearance of the whole or a part of a product,

or who uses a specific sign for marking goods or services, at an official or officially

recognised international exhibition, falling within the terms of the Convention on

International Exhibitions, signed on 22 November 1928 and last revised on 30

November 1972, in the Republic of Slovenia or other Member State of the Paris Union

or WTO, may claim in his application, within three months after the closing of the

exhibition, the right of priority as of the first day of the display of the invention or

appearance of the whole or a part of the product, or of the use of the sign.

(2) A person claiming the right of priority referred to in paragraph (1) shall indicate,

when filing the application in the Republic of Slovenia, the type of exhibition, the place

at which it was held, the opening and closing dates and the first day of exhibition or use,

and submit a written certificate issued by a competent authority in the Member State of

the Paris Union or WTO, attesting to the official or officially recognised international

nature of the exhibition. If the applicant fails to comply with the provision of this

paragraph, the priority shall be deemed not to have been claimed.

(3) The claiming of priority under paragraph (1) shall not extend the time limits of the

international right of priority referred to in Article 61(1).

Article 63

Correction or addition of a priority claim

(1) The applicant may request a correction or addition of a priority claim with respect to

a patent application within sixteen months from the date of priority or, where the

correction or addition would cause a change in the date of priority, sixteen months from

the date of priority as so changed, provided that such a request is filed within four

months from the date of filing of the application.

(2) When filing the request, the applicant shall pay a fee. If the fee is not paid, the

request shall be deemed to be withdrawn.

(3) Any request referred to in paragraph (1) received after the applicant has requested

the publication under Article 89(2) shall be deemed not to have been filed, unless the

request under Article 89(2) is withdrawn before the technical preparations for

publication of the application have been completed.

(4) Where the correction or addition of a priority claim causes a change in the date of

priority, the time limits shall be computed from the date of priority as so changed.

Article 64

Restoration of the right of priority

(1) Where a patent application which could have claimed the priority of an earlier

application has a filing date which is later than the date on which the priority period

expired, but within two months from that date, the applicant may request the restoration

of the right of priority, if he failed to file the application within the time limit referred to

in Article 61(1) in spite of all due care required by the circumstances having been taken.

(URSIL/SIPO ZIL_EN_2006) 26

(2) The request for restoration of the right of priority shall be filed within two months

from the date on which the priority period expired and before technical preparations for

publication of the application have been completed. Upon filing the request, the fee

shall be paid. If the fee is not paid, the request shall be deemed to be withdrawn.

Article 65

Prohibition to extend the scope of an application

(1) As from the date of filing, the subject-matter of a patent application may not be

extended beyond he subject-matter of the application as initially filed.

(2) As from the date of filing, in the case of an industrial design application, the

appearance of the whole or a part of a product shall not be substantially modified, or the

number of products increased.

(3) As from the date of filing, in the case of a mark application, the sign shall not be

substantially modified, or the original number of goods or services increased.

Article 66

Extension of time limits

(1) The applicant for or owner of a right may request, prior to the expiration of a time

limit, its extension for up to three months.

(2) The time limits for filing an action as well as those referred to in paragraph (1) and

in Articles 13(1), 27(2), 35(2), 61(1), 62(1), 63(1), 64(2), 67(2), 68(2), 80(3), 86(3),

91(1), 92(3), 94(2) and (3), 101(1) and (5), 109, 110, 117(1), 130(2) and 137(2) shall

not be extended.

Article 67

Further processing after the non-observance of a time limit

(1) The applicant, who has failed to comply with a time limit set out for the fulfilment

of the obligations required in the proceedings for the acquisition of a right, may request

that the non-observed time limit be deemed to have been complied with, that legal

consequences of such non-observance be abolished, and that the Office continues the

proceedings for the acquisition of the right.

(2) The request for further processing shall be filed, the omitted act must be completed,

and the fee shall be paid within two months from the date on which the applicant was

informed of the failure to comply with the time limit and the legal consequences of such

non-observance. If the omitted act is not completed or if the fee is not paid in due time,

the request shall be deemed to be withdrawn.

(3) The grant of further processing may not be requested for the non-observance of the

time limit referred to in paragraph (2) and the time limit for filing an opposition or

action, or if a request for the grant of restitutio in integrum or for correction or addition

of a priority claim or for restoration of the right of priority has been filed.

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(4) If the Office grants a request for further processing, Article 68(6) or (7) shall apply

mutatis mutandis.

Article 68

Restitutio in integrum

(1) A party to the proceedings before the Office who, in spite of all due care required by

the circumstances having been taken, was unable to observe any time limit set out for

the obligations required by the Office in accordance with this Act and the executive

regulations issued pursuant to this Act, may request, on the basis of justifiable reasons,

to have his rights re-established if the non-observance had the consequence of causing

the deeming of the application, or of any request, to have been withdrawn, or the

rejection or refusal, or the loss of the right.

(2) The request for the grant of restitutio in integrum shall be filed within three months

from the removal of the cause of non-compliance with the time limit, or, if the party

only learned subsequently about that non-compliance, from the day when the party

learned. Upon filing the request, the omitted act shall be completed and a fee shall be

paid. Failure to observe this condition shall lead to the request being deemed to be

withdrawn.

(3) The request for the grant of restitutio in integrum may not be refused, wholly or in

part, without previously notifying the requesting party in writing of the reasons for the

intended refusal, in whole or in part, and without inviting him to react, within three

months from the receipt of the invitation, to the reasons.

(4) The request for the grant of restitutio in integrum shall only be admissible within

one year following the expiry of the unobserved time limit.

(5) The grant of restitutio in integrum shall not be requested for the non-observance of

the time limit prescribed for the filing of the opposition or action, or the copy of the first

application, the request for the grant of restitutio in integrum, the request for the grant of

further processing, the request for the right of priority, the request for a correction or

addition of priority claim, or the request for restoration of the right of priority.

(6) Any person who in good faith has used or made effective and serious preparations

for using an invention or an industrial design which is the subject of a published

application in the course of the period between the loss of the right referred to in

paragraph (1) and publication of the mention of re-establishment of that right, may,

without payment, continue such use in the course of his business or for the needs

thereof.

(7) Where the applicant for or owner of a mark has his right re-established, he may not

invoke his rights to any person who, in good faith, has put goods on the market or

supplied services under a sign which is identical with or similar to the mark in the

course of the period between the loss of the right referred to in paragraph (1) and

publication of the mention of re-establishment of that right.

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Article 69

Withdrawal of a request

(1) A party to the proceedings before the Office may, at any time in the course of a

proceeding, withdraw any request he might have filed.

(2) The request is deemed to be withdrawn as of the date when the Office receives the

request for its withdrawal.

(3) On the basis of the request for the withdrawal of a request, the Office shall issue an

order on the termination of the proceeding.

(4) If the applicant withdraws a request for the grant of a patent after technical

preparations for publication of the application have been completed, and the application

has been published, the publication of the application shall not be deemed to form part

of the state of the art under Article 12.

Article 70

Notification of the applicant before refusal of a right

(1) The Office may not issue a decision on refusal, in whole or in part, of a request for

the grant or registration of a right without previously informing the applicant in writing

of the reasons and without inviting him to react, within three months from the receipt of

the invitation, to the reasons or amend the submitted request.

(2) If the applicant reacts in due time to the reasons for refusal of his request, or amends

the request, the Office shall, before issuing the decision, verify whether the reasons for

the refusal, in whole or in part, still exist.

Article 71

Administrative litigation

There shall be no appeal against a decision or order issued by the Office; however, an

action in the administrative litigation proceedings may be filed with the Administrative

Court of the Republic of Slovenia in Ljubljana. The court shall decide on the case at its

seat in Ljubljana.

Article 72

Proceedings relating to actions

(1) The court shall immediately notify the Office of the receipt of an action under this

Act and of the final decision. The court shall submit its judgement, together with the

confirmation that it is legally binding, to the Office for execution.

(2) The Office shall issue a decision through which the court decision is executed.

(3) Proceedings relating to actions under this Act shall be expeditious. The court shall

accord priority to decisions relating to actions under this Act.

(3) Paragraphs (1) and (2) shall not apply to litigations concerning infringements of

rights.

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Article 73

Inventor, designer

(1) In the procedure for the grant of a patent, the inventor mentioned as such in the

application shall be deemed to be the inventor, except when the court decides otherwise.

(2) Paragraph (1) shall apply mutatis mutandis to designers.

(3) The Office shall not verify the accuracy of the data on the inventor or designer.

Article 74

Owner of a right

(1) Patents shall be granted and industrial designs or marks registered in the name of the

person who is designated as the applicant at the time of the grant or registration.

(2) Where several persons are designated as joint applicants, paragraph (1) shall apply

mutatis mutandis. Mutual relations between the persons designated as joint applicants

shall not be determined by the Office.

Article 75

Transfer and licensing of rights

(1) The owner of a patent, industrial design or mark may assign by contract, in part or in

whole, his right and conclude licence agreements.

(2) Paragraph (1) shall apply mutatis mutandis to the applicant.

(3) Neither a collective mark nor a geographical indication may be transferred or be

subject of a licence agreement.

Article 76

Date of the acquisition of a right

(1) Subject to paragraph (2), the rights under Articles 18, 37, 47 and 58 shall be

acquired as of the date of their entry in the corresponding register.

(2) Subject to Article 122, the right under Article 18(1) may not be not enforceable by

an action under Article 121 for infringement of a patent before the date of issuance of a

declaratory decision under Article 93(1)(a) or (b), or before the date of the entry of a

European patent already granted in the Office’s register.

Article 77

Lapse of rights

Notwithstanding the terms laid down in Articles 22, 23, 40 and 52, the granted or

registered rights shall lapse:

(a) in case that the owner renounces his right, on the day following the date on which

the request for renunciation is received by the Office;

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(b) if prescribed fees are not paid in conformity with the provisions of this Act;

provided by this Act, on the date specified in such decision.

Article 78

Correction of errors

(1) The Office may at any time, ex officio or upon request, correct errors in names,

dates and numbers, and other obvious errors in its acts, publications and registers.

(2) Corrections of errors shall be published in the Official Journal.

Chapter VII

PROCEDURE FOR THE ACQUISITION OF RIGHTS

Section I

Filing of applications and examination as to formal requirements

Article 79

Requirements of an application

(1) The application shall contain a statement to the effect that the acquisition of a right

is requested, and:

(a) for patents, all items listed in Article 86(1);

(b) for industrial designs, all items listed in Article 94(1);

regulations referred to in Article 46.

(2) The application shall also contain:

(a) a power of attorney, if the application has been filed by a representative;

(b) the translation in the Slovene language of the application which has been filed in a

foreign language in accordance with Article 81(2);

(3) Executive regulations issued by the Minister competent for the field of industrial

property shall define, in greater detail, the contents of the application, and proceedings

relating to the grant of patents and registration of industrial designs and marks.

Article 80

Form of the application and the means of filing

(1) The application for the acquisition of a right shall comply as to its contents and form

with provisions of this Act and the regulations issued pursuant to this Act. It shall be

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legible and transmitted in a manner which enables a clear and proper reproduction of its

contents.

(2) The application shall be filed in writing, either directly or by post, by facsimile

machine or by other electronic means of communication. An executive regulation issued

by the Minister competent for the field of industrial property shall define, in greater

detail, the manner of filing applications by other electronic means.

(3) Where an application, which has been transmitted by facsimile machine or by other

electronic means, is not legible or can not be clearly and properly reproduced, the Office

shall invite the applicant to submit, within three months following the receipt of the

invitation, a copy of that application in writing. If the requested copy is not transmitted

in due time, the application shall be deemed to be withdrawn.

(4) When filing the application, or no later than three months after the date of receipt of

the invitation, the filing fee shall be paid. If the fee is not paid in full in due time, the

application shall be deemed to be withdrawn.

Article 81

Language of applications

(1) Applications shall be filed in the Slovene language, unless otherwise provided by

this Act or an international treaty which is binding on the Republic of Slovenia.

(2) Applications may be filed in a foreign language, provided that it includes at least the

indication of the right requested, and the indication allowing the applicant to be

contacted by the Office, in the Slovene language or in one of the official languages of

the EPC, the Madrid Agreement, the Madrid Protocol or the Hague Agreement.

(3) If an application is filed in a foreign language, the applicant shall submit to the

Office the translation thereof in the Slovene language within three months following

receipt of the invitation. If the Office does not receive the translation in due time, the

application shall be deemed to be withdrawn.

(4) The Office shall conduct the proceedings on the basis of the application in the

Slovene language.

Article 82

Date of filing

(1) Subject to Article 81(2), the Office shall accord the date of filing and number to any

application containing at least:

(a) a statement to the effect that the acquisition of a right is requested;

(b) indications allowing the identity of the applicant to be established or allowing the

applicant to be contacted by the Office;

(2) Essential items referred to in paragraph (1)(c) are the following:

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(a) for patents, a part of the application which on the face of it appears to be a

description;

(b) for industrial designs, a photograph or graphical representation of the appearance of

the whole or a part of the product or, with two-dimensional products, where deferment

of publication under Article 94(2) has been requested, a specimen of that product or its

part;

the protection is sought and, for collective marks, also the regulations referred to in

Article 46.

(3) Subject to Article 83, the date of filing of an application shall be the date on which

the Office has received all items referred to in paragraph (1), unless otherwise provided

by this Act or by an international treaty which is binding on the Republic of Slovenia.

The Office shall issue a receipt to the applicant to the effect that it received the

application, indicating the date of filing and number of the application.

(4) If the application does not contain all items referred to in paragraph (1) and can not

be accorded the date of filing and number, the Office shall, as soon as it receives the

indication allowing it to make contact with the applicant, notify the applicant

accordingly and invite him to amend the application within three months from the

receipt of the invitation, to fulfil at least the conditions laid down in paragraph (1).

(5) If the application referred to in paragraph (4) is amended in due time so as to contain

all items referred to in paragraph (1), the Office shall accord to the application the date

of filing and number. The date of filing of such application shall be the date when the

Office received all of the items referred to in paragraph (1), and shall issue a receipt to

that effect to the applicant.

(6) If the application referred to in paragraph (4) is not amended in due time, or is not

amended as requested, it shall be deemed to be withdrawn, and the Office shall notify

the applicant accordingly.

Article 83

Particularities concerning the filing date

(1) Where, in establishing the filing date, it appears that a part of the description is

missing from the application, or that the application refers to a drawing which appears

to be missing from the application, the Office shall promptly notify the applicant

accordingly and invite him to amend the application within three months from the

receipt of the invitation.

(2) Where a missing part of the description or a missing drawing is filed with the Office

within the time limit prescribed in paragraph (1), that part of the description or that

drawing shall be included in the application, and the date of filing shall be the date on

which the Office has received that part of the description or that drawing, or the date on

which it has received all of the items referred to in Article 82(1), whichever is later.

(3) Where the applicant claims the priority under Article 61 in respect of an application

from which a part of the description or a drawing appears to be missing, the missing

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part of the description or missing drawing shall be completely contained in the earlier

application.

(4) Where the applicant claims the priority under Article 61, the essential items of the

application referred to in Article 82(2)(a) shall be deemed to have been filed, for the

purposes of the date of filing, if the applicant, when filing the application in the

Republic of Slovenia, indicates the date, number and State or Office of the previous

application. In such case, the applicant shall submit the copy of the previous application

referred to in Article 61(3) within three months from the receipt of the invitation, unless

the previous application was filed with the Office, or is available to the Office from a

digital library which is accepted by the Office for that purpose. If the applicant fails to

submit the copy, the right of priority shall be deemed not to have been requested.

Article 84

Invitation to submit all items

(1) Where an application to which the date of filing and number were accorded does not

contain all items referred to in Article 79, the Office shall invite the applicant to amend

the application within three months from the receipt of the invitation, and to remedy

deficiencies.

(2) If the application referred to in paragraph (1) is not amended in due time, or is not

amended as requested, it shall be deemed to be withdrawn, except in cases referred to in

Articles 128(4) and 129(5).

Article 85

Examination of an application as to formal requirements

(1) When an application contains all items referred to in Article 79, the Office shall

examine whether the items of the application or supplements or evidence, if any, are, as

to their contents and form, drawn up as prescribed by this Act and the regulations issued

pursuant to this Act.

(2) In the case of a patent application, the Office shall also examine whether the

invention meets the requirements of Article 87(2) and (4), and whether all fees have

been paid, including any renewal fees under Articles 109(4) or 110(4).

(3) If, in the case of a mark application, the Office establishes that the list of goods and

services contains a good or service which is not classified according to the international

classification established by the Nice Agreement Concerning the International

Classification of Goods and Services for the Purposes of the Registration of Marks of

15 June 1957, as revised on 14 July 1967 (Official Gazette SFRJ-MP No 51/74, Official

Gazette RS-MP No 9/92), hereinafter referred as “the Nice Classification”, or is

classified in the wrong class, the Office may, in the case of minor irregularities, on its

own motion, classify the good or service according to the Nice Classification, or correct

the classification, and inform the applicant accordingly. Where the Office groups or

corrects more than five classifications of goods or services according to the Nice

Classification, it shall invite the applicant to pay, within one month from the receipt of

the invitation, the fee for classification. If the applicant fails to pay the fee in due time,

the application for the goods or services which the Office classified according to the

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Nice Classification or corrected the classification thereof, shall be deemed to be

withdrawn.

(4) If, in the case of a mark application, the Office establishes that a good or service in

the list of goods and services is indicated by a term that is too vague for the purposes of

a correct classification according to the Nice Classification, or if the Office does not act

according to paragraph (3), it shall invite the applicant to remedy irregularity within

three months from the receipt of the invitation. If the applicant fails to remedy the

irregularity in due time, the application for the goods or services which were not clearly

indicated or correctly classified according to the Nice Classification shall be deemed to

be withdrawn.

(5) If any deficiencies are noted in the application or in supplements or evidence, the

Office shall invite the applicant to remedy deficiencies within three months from the

receipt of the invitation.

(6) If the applicant does not remedy all deficiencies in due time, the application shall be

deemed to be withdrawn, except in the cases referred to in paragraphs (3) and (4), and in

Articles 128(4) and 129(5).

(7) If the Office establishes that all the items of the application or supplements or

evidence, if any, comply, as to their contents and form, with the provisions of this Act

and the regulations issued pursuant to this Act, the proceedings shall continue:

(a) for patent applications, under Article 88 and subsequent articles;

(b) for industrial design applications, under Article 96;

Section II

Special provisions for patents

Article 86

Requirements of a patent application

(1) A patent application shall contain:

(a) a request for the grant of a patent;

(b) a description of the invention;

(d) a short summary of the subject-matter of the invention, hereinafter referred to as

“the abstract”;

(e) if necessary, one or more drawings of the invention.

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(2) Not later than up to the issue of an order on the publication of the application, the

applicant may file a divisional application in respect of subject-matter which does not

extend beyond the content of the earlier application. The divisional application shall be

deemed to have been filed on the date of filing of the earlier application and shall have

the benefit of the same right to priority as the earlier application.

(3) Short-term patents shall be requested when filing the patent application or within

twelve months from the date of filing. After the expiry of this time limit, the request

shall be irrevocable.

Article 87

Substance of requirements of a patent application

(1) The request for the grant of a patent shall contain data on the applicant (surname,

forename and address, or firm and seat), the title of the invention defining its subjectmatter,

and other data relating to the application which are prescribed by an executive

regulation.

(2) The description of the invention shall include the presentation of the problem,

information on the state of the art or of other solutions available by that time and their

deficiencies which have been known to the applicant, together with a description of the

new solution to the problem. The invention shall be described in a manner sufficiently

clear and complete for it to be carried out by a person skilled in the art to which the

subject-matter of the invention relates.

(3) If an invention relates to biological material defined by an executive regulation,

which is not available to the public and can not be described in a manner to be carried

out by a person skilled in the art to which the subject-matter of the invention relates, the

description of the invention shall be supplemented by a certificate of the deposit of

biological material with an international depository authority under Article 7 of the

Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for

the Purposes of Patent Procedure of 28 April 1997, and amended on 26 September 1980

(Official Gazette RS-MP No 21/97).

(4) The claims shall define the subject-matter for which protection is sought. They shall

be clear and concise and be supported by the description.

(5) The abstract shall merely serve for use as technical information; it may not be taken

into account for any other purpose, in particular not for the purpose of interpreting the

scope of the protection sought.

(6) A patent application may relate to several inventions, provided that they are so

linked as to form a single inventive concept.

Article 88

Examination of requirements for the grant of a patent

(1) In the examination preceding the grant of a patent, the Office shall examine:

(a) whether, subject to Article 11, the subject-matter of the claimed invention is

patentable;

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(b) whether the claimed invention meets, at first sight, the requirements of Articles 12,

14 and 15.

(2) In the examination preceding the grant of a short-term patent, the Office shall

examine:

(a) whether, subject to Article 11(1) and (2)(a), the subject-matter of the invention to

which the application relates may be protected by a short-term patent;

(b) whether the claimed invention meets, at first sight, the requirements of Articles 12,

15 and 16.

(3) If the Office establishes that the claims of the patent application meet all the

requirements of paragraph (1), or that the claims of the short-term patent application

meet all the requirements of paragraph (2), it shall decide to publish the application in

the Official Journal.

(4) If the Office establishes that the claims of the patent application do not meet all the

requirements of paragraph (1), or that the claims of the short-term patent application do

not meet all the requirements of paragraph (2), it shall refuse the application.

(5) If the Office establishes that the claims of the patent application do not meet the

requirements of paragraphs (1) and (2) only in part, it shall refuse the application only

in that part.

Article 89

Publication of a patent application

(1) The Office shall publish a patent application after the expiry of a period of eighteen

months from the date of the filing or, if priority has been claimed, the date of priority.

(2) The applicant may request that the application be published before the expiry of the

period referred to in paragraph (1), but no earlier than after the expiry of three months

from the date of the filing or, if priority has been claimed, the date of priority.

(3) The Office shall publish a patent application together with the mention of the grant

of the patent.

Article 90

Grant of a patent

(1) The Office shall issue a decision on the grant of a patent and enter the patent in the

be the date of the grant of a patent.

(2) Until the issuance of a decision under Article 93, the scope of protection shall be

determined by the contents of claims as published.

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Article 91

Time limit for submission of a written evidence

(1) Owners of patents or exclusive rights from patents shall submit to the Office no later

than the expiry of the ninth year of the patent term written evidence that the patented

invention satisfies all the requirements of Articles 10, 12, 14 and 15.

(2) Owners of patents or exclusive rights from patents shall pay, when submitting the

evidence under paragraph (1) or within three months from the receipt of the invitation, a

fee for the declaratory decision. If the fee is not paid in due time, the evidence shall be

deemed not to have been submitted.

(3) If the owner of a patent or exclusive right from a patent fails to act in accordance

with paragraph (1), the patent shall lapse on the date of the expiry of the tenth year of

the patent term.

(4) If the owner of a patent submits the evidence referred to in paragraph (1) with

respect to an action under Article 121, the Office shall issue one of the decisions

referred to in Article 93 using an expeditious procedure.

(5) The provisions of this Article shall not apply to short-term patents.

(6) In the case of a European patent, which is valid in the Republic of Slovenia on the

basis of a European patent application filed in accordance with Article 3(2), the

provisions of this Article and of Articles 92 and 93 are directly fulfilled as of the date on

which the EPO publishes the mention of its granting.

Article 92

Forms of written evidence

(1) A Slovene translation of a European patent, or several European patents, granted for

the same invention by the EPO shall be considered evidence as referred to in Article 91.

(2) If no application for a European patent has been filed for the same invention, the

Slovene translation of a patent for the same invention, granted, following substantive

examination, by another authority which, under Article 32 of the PCT, enjoys the status of

International Preliminary Examining Authority, or by any other patent office with which a

relevant treaty has been concluded, may be submitted as evidence under Article 91.

(3) If the granting proceedings, which constitute the evidence under paragraph (1) or

(2), have not yet been finished, the applicant shall inform the Office accordingly in the

time limit prescribed in Article 91(1). On the basis of that information, the Office shall

interrupt the proceedings. The proceedings shall continue if the applicant submits

evidence under this Article within three months after the grant of the patent. If the

evidence under this Article is not submitted in due time, the patent shall lapse on the

date of the expiry of the tenth year of the patent term.

(4) A Slovene translation of a patent which constitutes the evidence referred to in

Article 91 shall not confer protection which is broader than that conferred by it in the

original text.

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(5) Where the Office doubts the correctness of the translation, it may request that the

owner of a patent or exclusive right from a patent submits, within three months from the

receipt of the invitation, a certified text of the Slovene translation which constitutes the

evidence from Article 91. If the certified text of the Slovene translation is not filed in

due time, the evidence is deemed not to have been submitted.

(6) When the evidence is submitted pursuant to paragraph (2), the owner of a patent or

exclusive right from the patent shall submit a list and copies of all other patents which

could be considered as evidence, including data on patent applications and patents

which have been refused. If the list and copies of the patents do not supplement the

evidence, the evidence is deemed not to have been submitted.

(7) If the Office establishes that the evidence under this Article is forged or is not true, it

declares the patent to be void.

(8) When the owner of a patent or exclusive right from a patent does not have an

evidence referred to in paragraph (1) or (2), he may request, against payment of a fee,

that the Office obtains relevant data or opinions to be used as the basis for the issuing of

one of the decisions under Article 93 from any of the authorities or offices listed in

paragraph (2).

Article 93

Issuing declaratory decisions

(1) On the basis of the submitted evidence and other documents under Article 92, the

Office shall issue:

(a) a declaratory decision stating that the invention meets the requirements of Articles

10, 12, 14 and 15, and that the claims of a patent granted entirely meet those

requirements; or

(b) a declaratory decision stating that the invention meets the requirements of Articles

10, 12, 14 and 15 only in part, and thereby correspondingly amending the claims of a

patent granted; or

Articles 10, 12, 14 and 15 on the date of the filing of the application, and thereby

declaring the patent to be void.

(2) A decision under paragraph (1)(b) or (c) may not be issued by the Office if it has not

previously notified the owner of a patent of the intended amendments of claims or the

nullity of a patent, and if the owner of a patent has not been invited to comment, within

three months from the receipt of the invitation, on the decision, or amend the claims. If

the owner of a patent comments on the decision, or amends the claims in due time, the

Office shall, before issuing the decision under paragraph (1)(b) or (c), verify if the

reasons for the issuance thereof still exist. If the owner of a patent fails to comment on

the decision in due time, it shall be deemed that he shares the opinion of the Office.

(3) Patent claims which are amended pursuant a decision under paragraph (1)(b) shall

not confer protection which is broader than that conferred by claims of a patent granted

by a decision under Article 90.

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(4) Where the Office establishes, on the basis of the submitted evidence under Article

92, that the patent granted does not meet the requirement of Article 87(6), it shall divide

the patent into several patents preserving the date of filing of the initial application and,

if priority is claimed, the date of priority.

Section III

Special provisions for industrial designs

Article 94

Requirements of an industrial design application

(1) An application for an industrial design shall contain:

(a) a request for the registration of an industrial design;

(b) a photograph or graphical representation of the appearance of the whole or a part of

the product, or of the products in case of a multiple application, in the number of copies

prescribed by an executive regulation.

(2) The applicant may request, when filing the application, that the essential data of the

application shall not be published before the expiry of twelve months from the date of

filing of the application or, if a priority is claimed, the date of priority. The multiple

application can not contain a request for deferment of publication for only some

products.

(3) Where the industrial design is two-dimensional, including a textile design or

hologram, and a request for deferment of publication is made in accordance with

paragraph (2), the application may, instead of containing a photograph or graphical

representation of the appearance of the whole or a part of the product, be accompanied

by a specimen of that product or the part thereof. The photograph or graphical

representation of the product, in the number of copies prescribed by an executive

regulation, shall be submitted no later than two months before the expiry of the time

limit for requested deferment of publication under paragraph (2). In the opposite case,

the application shall be deemed to be withdrawn.

Article 95

Substance of requirements of an industrial design application

(1) The request for the registration of an industrial design shall contain data concerning

the applicant (surname, forename and address, or firm and seat), an indication of the

product to which the subject-matter of the application relates, a suggestion for the

classification according to the international classification established by Locarno

Agreement on International Classification for Industrial Designs of 8 October 1968

(Official Gazette SFRJ-MP, No 51/74, Official Gazette RS-MP, No 9/92), hereinafter

referred as “the Locarno Classification”, and other data relating to the application which

are prescribed by an executive regulation.

(2) An industrial design application may cover several products, provided that they

belong to a single class of the Locarno Classification.

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(3) The photograph or graphical representation of the appearance of the whole or a part

of the product shall clearly show the novelty and the individual character of the

appearance of the product for which protection is sought.

Article 96

Examination of requirements for the registration of industrial designs

(1) The Office shall examine whether the design to which the application relates may be

protected by an industrial design, subject to provisions of Article 36, but excluding item

(b).

(2) Where the Office establishes that the design to which the application relates meets

the requirements of paragraph (1), it shall issue a decision on the registration of the

industrial design, enter the industrial design in the register and publish the mention of

the registration.

(3) Where the Office establishes that the design to which the application relates does not

meet the requirements of paragraph (1), it shall refuse the application wholly or in part.

Section IV

Special provisions for marks

Article 97

Requirements of a mark application

(1) A mark application shall contain:

(a) a request for the registration of a mark;

(b) a list of the goods or services for which the protection is sought;

regulation.

(2) A collective mark application shall contain, besides items listed in paragraph (1),

also the regulations referred to in Article 46.

(3) A separate application shall be filed for each sign, however, the registration of the

same mark may be requested, in the same application, for several kinds of goods or

services. The applicant may also request, on the basis of several applications, the

registration of several different or similar marks for the same kind of goods or services.

(4) Any application listing goods or services belonging to two or more classes of the

Nice Classification may, during the registration procedure, including administrative

litigation, be divided, upon the request of the applicant, into several applications. Each

application shall preserve the date of filing of the initial application and, if priority is

claimed, the date of priority.

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Article 98

Substance of requirements of a mark application

(1) The request for the registration of a mark shall contain data concerning the applicant

(surname, forename and address, or firm and seat), where the sign is in colours, an

indication of colours, where the mark is a three-dimensional mark or a collective mark,

a statement to that effect, and other data relating to the application which are prescribed

by an executive regulation.

(2) Goods and services shall be classified in the list of goods or services in accordance

with the Nice Classification.

Article 99

Examination of absolute requirements for the refusal of a mark

(1) In the examination preceding the publication of a mark application, the Office shall

examine whether the sign to which the application relates may be registered as a mark,

subject to provisions of Articles 42 and 43. Where the application relates to a collective

mark, the Office shall also examine whether the application meets the requirements of

Articles 45 and 46.

(2) Where the Office establishes that the sign to which the application relates meets the

requirements of paragraph (1), it shall publish the application.

(3) Where the Office establishes that the sign to which the application relates does not

meet the requirements of paragraph (1), it shall refuse the application wholly or in part.

Article 100

Opposing observations by third parties

(1) Following the publication of a mark application, any person may present to the

Office observations concerning the registration of a sign, subject to Articles 42 and 43,

and shall state the reasons.

(2) The person submitting such observations to the Office shall not be a party to the

proceedings before the Office.

(3) The Office shall communicate the observations by third parties referred to in

paragraph (1) to the applicant who may comment on them.

Article 101

Opposition against registration of a mark

(1) Within three months following the publication of a mark application, a written

notice of opposition to registration of the mark may be filed with the Office by the

owner of an earlier mark.

(2) The notice of opposition may only be given on the grounds referred to in Article 44

and shall contain supporting evidence.

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(3) The opposition under paragraph (1) may also be filed by the owner of a mark which

has been registered in any Member State of the Paris Union or WTO and has been

applied for in the Republic of Slovenia by his agent or representative without the

owner’s consent.

(4) Where the ground for opposition is Article 44(1)(f), a notice of opposition under this

Article may also be filed by an owner of the earlier right referred to in Article 44(1)(f).

(5) When filing the opposition, or no later than three months from the receipt of the

invitation, the opposition fee shall be paid, and a power of attorney shall be submitted,

if the opposition has been filed by a representative.

(6) If the opponent withdraws the opposition, the withdrawal may not be cancelled later

on.

(7) If the opposition does not meet requirements under this Article, it shall be deemed

not to have been filed.

Article 102

Examination of the application following the opposition

(1) The Office shall notify the applicant for a mark of an opposition filed. The applicant

may, within three months from the receipt of the notification, comment on the

opposition.

(2) On the basis of the opposition and any observations from the applicant for a mark,

the Office shall examine the grounds for the opposition.

(3) Where the examination of the opposition reveals that the opposition is not grounded

and that the mark may be registered in respect of the goods or services for which the

application has been made, the Office shall refuse the opposition.

(4) Where the examination of the opposition reveals that the opposition is grounded and

that the mark may not be registered in respect of all or some of the goods or services for

which the application has been made, the Office shall refuse the application wholly or in

part.

Article 103

Registration of marks

(1) Where no notice of opposition to registration of the mark has been filed or where

opposition has been refused or has been deemed not to have been filed, the Office shall

invite the applicant to pay, within three months from the receipt of the invitation, the

registration fee which includes the maintenance fee for the first ten years.

(2) Following the payment of the fee referred to in paragraph (1), the Office shall issue

a decision on registration of the mark, enter the mark in the register and publish the

mention of the registration.

(3) If the applicant fails to pay the fee referred to in paragraph (1) in due time, the

application shall be deemed to be withdrawn.

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Section V

Special provisions for geographical indications

Article 104

Registration of geographical indications

(1) A request for the registration of a geographical indication may be filed by

associations of legal or natural persons, chambers, communes, larger local communities

or State authorities.

(2) The request under paragraph (1) shall be accompanied by a specification including

in particular:

(a) indication to be registered as a geographical indication;

(b) indication of the good to which that geographical indication relates;

chemical, microbiological, organoleptic or other characteristics of the good;

(d) indication of location or region, including borders;

(e) a description of the method of obtaining the good and, if necessary, the authentic and

unvarying local methods;

(f) details bearing out the link between the good and the location or region;

(g) details of inspection structures;

(h) labelling details.

(3) Where the request complies with the provisions of this Article and of Articles 55 and

56, the Office shall issue a decision on the registration of the geographical indication,

enter the geographical indication in the register and publish the mention of the

registration.

(4) Provisions of this Article shall not apply to geographical indications which have

been protected by virtue of Article 55(3).

Chapter VIII

REGISTERS AND MAINTENANCE OF RIGHTS

Article 105

Registers

(1) The Office shall keep registers of patents, supplementary protection certificates,

industrial designs, marks and geographical indications, and registers of applications for

the above-mentioned rights. Registers shall be open to public inspection, unless

otherwise provided by this Act.

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(2) The date of the grant of a patent or a supplementary protection certificate, or the date

of issuance of a decision on the registration of industrial design, mark or geographical

indication shall be considered as the date of entry in the register.

(3) The Office shall deliver extracts from registers on request and against payment of a

fee prescribed by the Act regulating administrative fees.

(4) An executive regulation issued by the Minister competent for the field of industrial

property shall define, in greater detail, the contents of registers, the contents of requests

for entry of alterations in registers, the procedure for entry of such alterations, the

contents of extracts from registers and the procedure for deliverance of such extracts.

Article 106

Contents of registers

(1) The register of patents shall contain primarily the following entries: registration

number, date of filing and number of the application, requested right of priority, date of

publication, date of entry in the register, number and date of issuance of the declaratory

decision under Article 93, data concerning the owner (name and address), type of the

patent, data concerning the inventor (name and address), title of the invention, data

concerning the maintenance of the patent, date of lapse of the patent.

(2) The register of supplementary protection certificates shall contain primarily the

following entries: registration number, date of filing and number of the application, date

of publication of the application and the grant, date of entry in the register, data

concerning the applicant and the holder (name and address), title of the product,

registration number of the patent on the basis of which the supplementary protection

certificate has been granted, number and date of the authorization to place the product

on the market in the Republic of Slovenia or on the Community market as a medicinal

product or plant protection product, indication of the state, where the authorization has

not been issued by a competent Community authority under a centralised procedure,

date until which the certificate is effective, data concerning the maintenance of the

certificate, date of lapse of the certificate.

(3) The register of industrial designs shall contain primarily the following entries:

registration number, date of filing of the application, requested right of priority, date of

publication, date of entry in the register, data concerning the owner (surname, forename

and address, or firm and seat), data concerning the designer (surname, forename and

address), if the designer so wishes, indication of the product, number of products,

classification code according to the Locarno Classification, data concerning the renewal

of the industrial design, date of lapse of the industrial design.

(4) The register of marks shall contain primarily the following entries: registration

number, date of filing of the application, requested right of priority, date of publication

of the application and the registration, data on opposing observations by third parties,

data concerning any opposition and opponent, date of entry in the register, data

concerning the owner or holder (surname, forename and address, or firm and seat),

appearance of the mark, list of goods or services and classification code according to the

Nice Agreement, data concerning the international registration, data concerning renewal

of the mark, data concerning the cancellation of the mark, date of lapse of the mark.

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(5) The register of geographical indications shall contain primarily the following

entries: registration number, date of filing of the request, date of publication, date of

entry in the register, geographical indication, the kind of the good and the location to

which the indication relates.

(6) Information on litigations of which the Office has been notified and final

judgements shall be entered ex officio in the registers referred to in Article 105(1).

(7) Provisions of this Article shall apply mutatis mutandis to registers of applications.

Article 107

Entry of alterations in the registers

(1) Upon request, all subsequent alterations regarding a right or the owner of a right

shall be entered in the register referred to in Article 105(1). The provisions of this

paragraph shall apply mutatis mutandis to applications and applicants.

(2) Transfers of rights or licences shall be entered in the corresponding register at the

request of one of the parties to the contract.

(3) The person who has been entered in the register as the owner of a right prior to the

alteration may, by submitting relevant evidence, contest any alteration which has been

unduly entered without his consent, instituting an action in the administrative litigation

filed with the Administrative Court of the Republic of Slovenia in Ljubljana, which has

exclusive territorial jurisdiction.

Article 108

Procedure for entry of alterations

(1) A single request may relate to more than one alteration in the register. A single

request shall also be sufficient where the alteration or alterations relate to more than one

application and/or right of the same person, provided that the alteration or alterations are

the same for all applications and rights concerned, and the numbers of all applications

and rights concerned are indicated in the request.

(2) When filing the request or within three months from the receipt of the invitation, a

fee for the entry of each alteration in the register for each application or right shall be

paid. If the fee is not paid in due time, the request shall be deemed to be withdrawn.

(3) Where the request for the alteration is filed by the person who has been entered in

the register as the owner of a right, the Office shall immediately issue a decision on the

entry of alteration and enter such alteration in the register.

(4) Where the request for the alteration is filed by the person who has not been entered

in the register as the owner of a right, that person shall submit, when filing the request

or within three months from the receipt of the invitation, the consent of the owner of the

right for the entry of the requested alteration in the register or, of his own choosing,

other documents evidencing the legal basis for the entry of the alteration. Where the

Office doubts the veracity of any indication contained in the request for the alteration or

if the submitted documents are in a foreign language, it may require that, within three

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months from the receipt of the invitation, additional documents or a Slovene translation

of the submitted documents be furnished.

(5) If the requesting party fails to submit additional documents or their translation

requested under paragraph (4) in due time, the request for entry of alterations shall be

deemed to be withdrawn.

(6) The Office shall decide on the entry of an alteration by a decision.

Article 109

Renewal fees

(1) The renewal of rights shall be subject to the payment of fees which shall be due,

calculated from the date of filing of the application:

(a) in respect of patents, each year for one subsequent year;

(b) in respect of industrial designs, each five years for subsequent five years;

(2) The fees under paragraph (1) shall be paid within twelve months preceding the due

date.

(3) The application fee for patents includes the renewal fee for the first three years. The

application fee for industrial designs includes the renewal fee for the first five years.

(4) Where the procedure for the grant of a patent lasts more than three years from the

date of the filing of the application, or the procedure for the registration of an industrial

design more than five years from such date, the provisions of paragraphs (1) and (2)

shall apply mutatis mutandis to patent and industrial design applications.

Article 110

Payment of renewal fees in a subsequent time limit

(1) Where a renewal fee has not been paid in accordance with Article 109 on or before

the due date, it may still be paid within six months following the due date, provided that

the additional fee, amounting to 50 % of the fee which has not been paid in due time, is

paid.

(2) The Office shall remind the owner of a right of the failure of due payment of the

renewal fee under Article 109(1), of the possibility of payment under paragraph (1) of

this Article, and of the consequences of non-payment.

(3) The non-payment of renewal fees in due time or, following the reminder of the

Office, within the subsequent time limit referred to in paragraph (1), together with the

additional fee, shall entail lapse of the right on the day following the due date referred to

in Article 109(1).

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(4) Paragraphs(1) and (2) shall apply mutatis mutandis in the cases referred to in Article

109(4). If in such cases the renewal fee and the additional fee have not been paid in the

subsequent time limit, the application shall be deemed to be withdrawn.

Chapter IX

JUDICIAL PROTECTION AND ENFORCEMENT OF RIGHTS

Section I

Judicial protection

Subsection I

Nullity of rights

Article 111

Actions for a declaration of nullity

Any interested party may bring an action in the court of competent jurisdiction to

declare nullity of a patent, short-term patent, industrial design or mark.

Article 112

Actions for a declaration of nullity of a patent

(1) Actions to declare nullity of a patent may be filed on one or more of the following

grounds:

(a) on the date of the filing of the application the invention did not meet all

requirements under Articles 10, 11, 12, 14 and 15 or, in the case of a short-term patent,

requirements under Article 16;

(b) the invention does not disclose the invention in a manner sufficiently clear and

complete for it to be carried out by a person skilled in the art to which the invention

relates;

application or, if the patent was granted on a divisional application, beyond the content

of the initial application.

(2) Actions to declare nullity of a patent may also be filed in instances where a

declaratory decision under Article 93(1)(a) or (b) has already been issued, or where the

patent has lapsed.

(3) Where an action to declare nullity of a European patent valid in the Republic of

Slovenia pursuant to an international treaty, and which has been the subject of an

opposition at the EPO, has been filed during the opposition procedure at the EPO, the

court shall interrupt the proceedings until the decision of the EPO on the opposition has

become final.

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Article 113

Actions for a declaration of nullity of an industrial design

Actions to declare nullity of an industrial design may be filed, subject to the date of the

filing of the application, on one of the following grounds:

(a) the industrial design has been registered contrary to Article 36;

(b) the applicant for or the owner of the industrial design has not been entitled to an

industrial design protection.

Article 114

Actions for a declaration of nullity of a mark

(1) Actions to declare nullity of a mark may be filed where the mark has been

registered, subject to the date of the filing of the application, contrary to Article 42 or

43.

(2) Actions to declare nullity of a collective mark may be filed where the collective

mark has been registered, subject to the date of filing of the application, contrary to

Article 42, 43, 45 or 46.

(3) Where the ground for the action under paragraph (2) is a collective mark which has

been registered contrary to Article 46, the court shall reject the action if the holder of

the collective mark, prior to the issuance of the court’s decision, amends the regulations

referred to in Article 46.

Subsection II

Contesting of rights

Article 115

Contesting the right to a patent or industrial design

(1) An inventor, his heir or other successor in title may, at any time during the validity

of a patent, file an action with a court of competent jurisdiction, requesting that he be

declared owner of the patent, if the patent has been granted in the name of a person who

is not the inventor, his heir or other successor in title.

(2) The designer, his heir or other successor in title may, at any time during the validity

of an industrial design, file an action with a court of competent jurisdiction requesting

that he be declared owner of the right, if the industrial design was registered in the name

of a person who is not the designer, his heir or other successor in title.

(3) The action referred in paragraphs (1) or (2) may also be filed by a person who is

entitled to the rights conferred by a patent or industrial design if the patent was granted

or industrial design was registered in the name of the inventor or designer or a third

person, which the inventor or the designer unjustifiably authorised that the patent be

granted or industrial design be registered in his name.

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Article 116

Contesting the right to a mark

(1) Legal or natural persons may file an action with a court of competent jurisdiction

requesting the court to decide that a sign which they use in trade for marking their

goods or services is identical or similar to a mark used by a third person in marking his

goods or services of the same or similar kind and that the sign was generally known as

the sign for designation of the goods or services of the legal or natural person before the

defendant filed his mark application, and requesting the court to issue a decision

declaring the plaintiff to be the owner of the mark.

(2) The court shall rule against the request referred to paragraph (1) if the defendant

owner of the mark proves that he had used the contested sign for the same or similar

goods or services for as long as or longer than the plaintiff before filing his application.

(3) The action referred to in paragraph (1) may not be filed after the expiry of five-year

period following the date of entry of the mark in the register.

Article 117

Entry in the register of the new owner

(1) Within three months from the receipt of a final judgement that rules favourably on

the actions referred to in Articles 115 or 116, the plaintiff may request to be entered in

the register as the owner of the patent, industrial design or mark and to be issued a

certificate to that effect.

(2) If the successful plaintiff does not submit a request to be entered in the register as

the owner of the right within the time limit laid down in paragraph (1), the right shall be

ex officio removed from the register.

(3) Any rights a third person has acquired from the person who has been entered in the

be binding on the new owner if entered in the corresponding register or if correctly

applied for the entry before the action was filed.

Subsection III

Right of the inventor or designer to be named

Article 118

Actions for recognition of the right to be named

(1) An inventor or designer may file an action with a court of competent jurisdiction

requesting:

(a) that he be named in the application and in all documents;

(b) that a final judgement be published at the defendant’s expense.

(2) The action referred in paragraph (1) may be filed at any time during the validity of

the patent or industrial design.

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Subsection IV

Removal and cancellation of marks

Article 119

Actions for removal of marks from the register

(1) Actions to remove marks from the register and to prohibit the use of signs may be

filed with the court of competent jurisdiction on one of the following grounds:

(a) the applicant was acting in bad faith when filing the application;

(b) the mark has been registered, subject to the date of the filing of the application,

contrary to Article 44, except in the cases referred to in Article 139;

name in the trade for goods or services in respect of which it is registered;

(d) in consequence of the use made of it by the owner of the mark or with his consent in

respect of the goods or services for which it is registered, the mark is liable to mislead

the public, particularly as to the nature, quality or geographical origin of those goods or

services.

(2) Save the grounds referred to in paragraph (1), actions to remove collective marks

from the register and to prohibit the use of signs may be filed on one or more of the

following grounds:

(a) the holder of the collective mark ceased to exist;

(b) the collective mark is used contrary to the regulations under Article 46;

manner as to contradict Article 46.

(3) The court shall rule against the action filed under paragraph (1)(b) if the defendant

proves that the reasons under Article 120 for cancellation of an earlier mark referred to

in Article 44 exist.

(4) Where the ground for an action under paragraph (1) or (2) is Article 44(1) (c), (d) or

(e), the plaintiff may, instead of the removal of the mark from the register, requests the

transfer thereof on his name.

(5) In the case provided for in paragraph (2)(c), Article 114(3) shall apply mutatis

mutandis.

(6) The action under paragraph (1)(b) shall not been admissible after the expiry of fiveyear

period following the entry of a right in the register, unless the applicant was acting

in bad faith when filing the mark application.

(7) The mark shall be removed from the register as of the date on which the judgement

on the removal has become final.

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Article 120

Actions for cancellation of marks on account of non-use

(1) Any interested party may file an action with a court of competent jurisdiction

requesting cancellation of a mark if, within a continuous period of five years from the

date of entry of the right in the register, or the day on which the mark has been seriously

and effectively used in the Republic of Slovenia for the last time, the owner without

proper reasons fails to use the mark in connection with the goods or services in respect

of which it is registered.

(2) Cancellation of a mark may not be requested where, during the interval between the

expiry of the five-year period referred to in paragraph (1) and filing of the action for

cancellation, the owner has started or resumed to seriously and effectively use the mark.

The commencement or resumption of use within a period of three months preceding the

filing of the action which began at the earliest on expiry of the time limit referred to in

paragraph (1) shall, however, be disregarded where preparations for the commencement

or resumption occur only after the owner becomes aware that the action for cancellation

of his mark may be filed.

(3) The owner of the mark shall prove the use of the mark in the cancellation procedure.

(4) Use of the mark with the consent of the owner or by any person who has authority to

use it shall be deemed to constitute use by the owner.

(5) A collective mark shall be deemed to be used by the holder where it is used by at

least one person who has authority to use it.

(6) The following shall also constitute use of the mark:

(a) use of the mark in a form differing in elements which do not alter the distinctive

character of the mark in the form in which it was registered;

(b) affixing of the mark to goods or to the packaging thereof in the Republic of Slovenia

solely for export purposes.

(7) The Office shall cancel the mark as of the day on which the judgement on

cancellation has become final for those goods or services for which it is established that

the mark has not been used in the territory of the Republic of Slovenia.

Section II

Enforcement of rights

Article 120a

Capacity to enforce rights

(1) The rights to enforce judicial protection belong, in addition to owners of the right

referred to in Articles 18, 37, 47 and 58, mutatis mutandis also to:

(a) persons entitled to use a collective mark;

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(b) persons entitled to use a geographical indication;

them by law or through a legal transaction; and

(d) professional associations established for the protection of industrial property rights

to the extent to which the owner’s rights are assigned to them by law or through a legal

transaction.

Article 121

Actions for infringement of rights

(1) Against a person who encroaches a right listed in Articles 18, 37, 47 or 58 without

the owner’s consent, the owner of the right may file an action with a court of competent

jurisdiction requesting that:

(a) the infringement already commenced and future infringements be prohibited;

(b) the objects of infringement be recalled from the channels of commerce, taking

account of the interests of bona fide third parties;

(č) the objects of infringement be irrevocably removed from the channels of commerce;

(d). the objects of infringement be destroyed;

(e) the means of infringement that are owned by the infringer and intended or used

exclusively or principally for infringement be destroyed;

(f) the objects of infringement be surrendered to the plaintiff against the reimbursement

of the costs of their production;

(g) the judgment be published.

(2) In deciding on the claims referred to in paragraph (1)(b) to (f.), the court shall take

account of the circumstances of the case, in particular proportionality between the

seriousness of the infringement and the claim, as well as the interest of the owner of the

right to ensure an effective protection of rights.

(3) In proceedings against a person whose services have been used to infringe the right,

and the existence of such infringement has already been finally established in

proceedings against the third party, the infringement shall be presumed to exist.

Article 121a

Compensation for damage

(1) For infringements under this Act, general rules governing causation of damage shall

be applicable, unless otherwise provided by this Act.

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(2) The infringer shall pay to the owner of the right damages in the amount to be

defined under general rules on compensation for damage, or in the amount which is

equal to agreed or customary license fee.

Article 122

Additional provisions governing infringement of patent rights

(1) In the case of infringement of a patent conferring protection on a process for

obtaining a new substance, such substance shall be deemed, in the absence of proof to

the contrary, to be of an identical composition or identical and made under the protected

process. The burden of proof shall be borne by the defendant or alleged infringer whose

legitimate interests in protecting his business secrets shall be taken into account.

(2) Where the action under Article 121 refers to infringement of patent rights or a

published European patent application requesting protection in the Republic of

Slovenia, the court shall interrupt proceedings until the Office issues a declaratory

decision under Article 93(1)(a) or (b), or until the European patent is entered in the

Office’s patent register.

(3) In the case of infringement of a patent in respect of which a declaratory decision

under Article 93(1)(a) or (b) has not yet been issued, the court shall, for the use of

invention during the interval between the granting of the patent and the issuance of the

declaratory decision, impose on the infringer the payment of compensation reduced with

respect to the given circumstances.

(4) Paragraph (3) shall apply mutatis mutandis to a published patent application filed

abroad under Article 3(2), for the use of invention during the interval between the

publication of the application and the granting of the patent or, where the European

patent has been entered in the Office’s register, the date on which the EPO published its

decision on the grant of the European patent.

Article 122a

Presentation of evidence

(1) If the court decides to take the proposed evidence and that evidence is in the

possession of the opposite party, that party shall present such evidence at the request of

the court.

(2) Paragraph (1) shall also be applicable for banking, financial and commercial

documents under the control of the opposite party if the infringement was committed on

a commercial scale. An act shall be deemed to be performed on a commercial scale if it

has been performed for direct or indirect economic advantage.

(3) The provisions of the Act regulating civil procedure shall apply to the proceedings

for the presentation of evidence, unless otherwise provided by this Act.

(4) After the taking of evidence referred to in paragraph (1), the court shall ensure that

confidential information from the parties to the proceedings be protected and that

judicial proceedings not be used in bad faith with the sole purpose to obtain confidential

information from the opposite party.

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Article 123

Provisional measures

(1) The court shall order provisional measures to secure non-monetary claims under this

Act if the claimant shows probable grounds for belief that:

(a) he/she is the owner of the right according to Articles 18, 37, 47 and 58; and

(b) his/her right has been infringed or there exists an actual danger to be infringed.

(2) The claimant shall also show probable grounds for belief that:

(a) a danger exists that the enforcement of claims will be made impossible or rather

difficult;

(b) the adoption of a provisional measure is necessary to avoid damage difficult to

repair; or

does not have more detrimental consequences for the alleged infringer that would have

the non-adoption of such measure for the owner of the right.

(3) The claimant who proposes the order of a provisional measure without prior

notification and hearing of the opposite party shall show probable grounds for belief, in

addition to the requirements of paragraphs (1) and (2), that any delay of the order is

likely to cause the owner of the right a damage difficult to repair. In that event, the

opposite party shall be given notice after the execution of the order at the latest.

(4) The owner of the right shall not be obliged to prove the existence of a danger that

the enforcement of claims will be made impossible or rather difficult if he/she shows

probable grounds for belief that the proposed provisional measure would cause the

infringer only insignificant damage. The danger shall be deemed to exist when the

claims are to be enforced abroad, with the exception of Member States of the European

Union.

(5) The court may order any provisional measure to secure non-monetary claims

referred to in paragraph (1), with which the purpose of security can be achieved, in

particular:

(a) to interdict to the alleged infringer the continuation of infringement already

commenced and future infringements;

(b) to seize, exclude from circulation and take into custody the objects of infringement

and the means of infringement that are intended or used exclusively or principally for

infringement.

(6) The court shall decide on the opposition against a decision on the adoption of a

provisional measure within 30 days following the filing of the answer to the opposition,

or by the end of the time limit set for the filing of the answer to the opposition.

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(7) The provisions of the Act regulating execution of judgements and insurance of

claims shall apply to the proceedings for the adoption of provisional measures, unless

otherwise provided by this Act. Proceedings shall be expeditious.

Article 123a

Order for provisional measures in patent infringements

Where the proposal for order of a provisional measure referred to in Article 123 relates

to a patent infringement, the court shall order the provisional measure if also the

following two conditions are fulfilled:

(a) that the owner of the right submits a declaratory decision under Article 93(1)(a) or

(b); and

(b) that the owner of the right proposes the order of provisional measure within three

months after he has learned of the alleged infringement.

Article 124

Preservation of evidence

(1) The court shall issue an order to preserve evidence if the owner of the right presents

reasonably available evidence that:

(a) he/she is the owner of the right according to Articles 18, 37, 47 and 58;

(b) his/her right has been infringed or there exists an actual danger to be infringed; and

evidence at a later time.

(2) The owner of the right who requests the order to preserve evidence without prior

notification and hearing of the opposite party shall show probable grounds for belief, in

addition to the requirements of paragraph (1), that there is a danger of evidence of

infringement being destroyed as the result of conduct of the opposite party or that it will

be impossible to take such evidence at a later time. In that event, the opposite party shall

be given notice after the execution of the order at the latest.

(3) The court may issue the order referred to in paragraph (1) to take any evidence, and

in particular:

(a) to inspect places, business records, inventory, databases, computer memory units or

other things;

(b) to seize samples of the objects of infringement;

(d) to appoint and examine experts; and

(e) to examine witnesses.

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(4) Preservation of evidence may be requested even after the decision by which the

proceedings are completed has become final, if this is necessary before or during the

proceedings with extraordinary remedies.

(5) The provisions concerning provisional measures of the Act regulating execution of

judgements and insurance of claims shall apply mutatis mutandis to the proceedings for

preservation of evidence under this Article, unless otherwise provided by this Act.

Proceedings shall be expeditious.

(6) Where it is subsequently found that the request for preservation of evidence has been

unfounded or that the owner of the right has not justified it, the opposite party shall have

the right to claim:

(a) the return of the seized objects;

(b) the prohibition of the use of information obtained; and

(7) In the proceedings for preservation of evidence in accordance with this Article, the

court shall ensure that confidential information from the parties be protected and that

judicial proceedings not be used in bad faith with the sole purpose to obtain confidential

information from the opposite party.

Article 124a

Preservation of evidence in patent infringements

Where the proposal for order to preserve evidence referred to in Article 124 relates to a

patent infringement, the court shall issue the order if also the following two conditions

are fulfilled:

(a) that the owner of the right submits a declaratory decision under Article 93(1)(a) or

(b); and

(b) that the owner of the right proposes the order of provisional measure within three

months after he has learned of the alleged infringement.

Article 124b

Duty to provide information

(1) In the proceedings concerning the infringement of rights the court may, upon a

justified request of the party, order that information on the origin and distribution

networks of the goods or services which infringe a right under this Act be provided by

the alleged infringer.

(2) The court may order that information referred to in paragraph (1) be provided also

by persons who:

(a) possess the infringing goods on a commercial scale;

(b) use the infringing services on a commercial scale; or

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(c).provide on a commercial scale services used in an infringing activity.

(3) The court may order that information referred to in paragraph (1) be provided also

by the person who was indicated by any person referred to in paragraph (2) as being

involved in the production, manufacture or distribution of the infringing goods or the

provision of the infringing services.

(4) The information referred to in paragraph (1) may comprise:

(a) the names and addresses of the producers, manufacturers, distributors, suppliers and

other previous holders of the goods or services, as well as the intended wholesalers and

retailers; and

(b) information on the quantities produced, manufactured, delivered, received or

ordered, as well as the price obtained for the goods or services in question.

Article 124c

Protection of other industrial property rights

The provisions of this Section shall apply mutatis mutandis to trade names and plant

variety rights.

Chapter X

COMPULSORY LICENCES

Article 125

Compulsory licences

(1) The court may decide that a third party or the Government of the Republic of

Slovenia exploit the invention without the authorisation of the owner of the patent:

(a) where the public interest concerning, in particular, national security, nutrition, health

or the development of other vital sectors of the national economy so requires, or

(b) where the court has determined that the owner of the patent or his licensee abuses

the patent rights, in particular where the manner of exploitation, contrary to the adopted

regulations, restrains competition.

(2) The court shall grant compulsory licences under paragraph (1) with regard to given

circumstances and after hearing the owner of the patent.

(3) Compulsory licences under paragraph (1) shall be granted provided that the person

filing the request proves that he has made efforts to conclude a licence contract with the

owner of the patent on reasonable commercial terms and that such efforts failed to

succeed within a reasonable period of time.

(4) Paragraph (3) shall not apply if a state of war or similar state of emergency has been

declared. Nevertheless, the owner of the patent shall be notified of the decision of the

court as soon as reasonably practicable.

(URSIL/SIPO ZIL_EN_2006) 58

Article 126

Conditions for granting compulsory licences

(1) Compulsory licences under Article 125 shall be granted under the following

conditions:

(a) scope and duration shall be limited with regard to their purpose;

(b) they shall be non-exclusive;

business of the licence owner to which the licence refers;

(d) they shall be granted primarily for the supply of the market of the Republic of

Slovenia.

(2) Where a patent, hereinafter referred to as “the second patent”, cannot be exploited

without infringing another patent, hereinafter referred to as “the first patent”, the

following conditions, in addition to those of Article 125 and paragraph (1) above, for

the grant of compulsory licence in respect of the first patent shall be met:

(a) the invention claimed in the second patent shall involve a technical advance of

considerable economic significance compared to the invention claimed in the first

patent;

(b) the owner of the first patent shall under reasonable conditions be entitled to a crosslicence

to use the invention claimed in the second patent;

the simultaneous transfer of the second patent.

(3) The court shall decide that a compulsory licence expire if the circumstances which

led to it being granted have ceased to exist and are unlikely to recur.

Article 127

Remuneration for compulsory licences

(1) Owners of patents under a compulsory licence shall be entitled to remuneration.

(2) The amount of the remuneration shall be determined with regard to the

circumstances of each case and taking into account the economic value of the

compulsory licence.

(URSIL/SIPO ZIL_EN_2006) 59

Chapter XI

REPRESENTATION

Article 128

Representation before the Office

(1) Only representatives whose names have been entered in the corresponding register

of representatives maintained by the Office shall be authorised to act before the Office.

The representative shall be appointed in a power of attorney which shall be in writing.

(2) The party making the appointment may appoint one or several representatives for all

or only for certain acts in the proceedings before the Office. If several representatives

are appointed and the party does not name one to whom the Office should address

notifications, they shall be addressed to the representative who is named first.

(3) The party making the appointment may, in a general power of attorney, authorise a

representative for acts in respect of all applications, rights and requests filed with the

Office. If the general power of attorney has been deposited with the Office, its reference

number shall be indicated, and its copy attached, when filing any request with the

Office.

(4) The power of attorney shall be submitted when filing the request or within three

months from the receipt of the invitation. If the power of attorney is not submitted in

due time, the representative is deemed not to have been appointed and his acts not to

have been carried out. The request filed by the alleged representative shall be rejected

by an order of the Office. The order on rejection shall be served on the alleged

representative.

Article 129

Representation of foreign persons

(1) Foreign natural and legal persons having neither residence nor real and effective

industrial or commercial establishment in the Republic of Slovenia, hereinafter referred

to as “foreign persons”, shall assert their rights under this Act in proceedings before the

Office through a representative, unless otherwise provided by an international treaty

which is binding on the Republic of Slovenia.

(2) Notwithstanding paragraph (1) and subject to paragraph (3), a foreign person may

file applications, perform acts relating to the establishment of the filing date, pay fees in

the proceedings before the Office, file copies of first applications when claiming the

right of priority under Article 61, and receive notifications by the Office relating to

those proceedings, without a representative.

(3) If a foreign person, in cases referred to in paragraph (2), does not have a

representative in the proceedings before the Office, he shall communicate to the Office

an address for correspondence which shall be in the territory of the Republic of

Slovenia. Any notification referred to in paragraph (2) which the Office sends to the

address for correspondence shall be deemed to be a sufficient notification.

(4) Notwithstanding paragraph (1), a renewal fee may be paid by any person.

(URSIL/SIPO ZIL_EN_2006) 60

(5) If a foreign person, contrary to this Article, does not appoint a representative in the

proceedings before the Office, or does not communicate an address for correspondence

which is in the territory of the Republic of Slovenia, the Office shall exceptionally

invite him directly by post to appoint, within three months from the receipt of the

invitation, a representative and submit a power of attorney or, in accordance with

paragraph (3), communicate an address for correspondence. If a foreign person does not

appoint a representative and does not submit a power of attorney or, in accordance with

paragraph (3), communicate an address for correspondence in due time, the Office shall

reject any request by order, unless otherwise provided by this Act. The order shall be

announced on the notice board of the Office.

Article 130

Revocation and renunciation of a power of attorney

(1) The party making the appointment may, at any time, revoke the power of attorney,

and the representative may, at any time, renounce his appointment.

(2) The revocation or renunciation shall be communicated to the Office and shall be

effective as from the date of receipt by the Office. If the representative has renounced

his appointment, he shall continue, for three months, to perform acts for the party who

has appointed him, unless the party has another representative.

(3) If due to the revocation or renunciation a foreign person remains without a

representative, Article 129(5) shall apply mutatis mutandis.

Article 131

Representatives

(1) Parties may be represented in proceedings before the Office by patent agents and by

industrial design and mark agents. Patent agents shall represent parties to proceedings

relating to the acquisition and maintenance of any right under this Act and other

requests concerning such rights. Industrial design and mark agents shall only represent

parties to proceedings relating to the acquisition and maintenance of industrial designs,

marks and geographical indications and other requests concerning those rights.

(2) Patent agents may be:

(a) persons who have completed university studies in technology or science and have

passed the qualifying examination for a patent agent at the Office;

(b) lawyers or law firms, employing on a regular or contractual basis a person who

fulfils the conditions laid down in sub-paragraph (a);

sub-paragraph (a).

(3) Industrial design and mark agents may be:

(a) persons who have completed university studies and have passed the qualifying

examination for industrial design and mark agents at the Office;

(URSIL/SIPO ZIL_EN_2006) 61

(b) lawyers or law firms;

sub-paragraph (a).

(4) Parties to proceedings relating to rights under this Act may be represented by patent

agents, industrial design and mark agents or authorised persons employed by such

agents also before courts and other State authorities, provided that they fulfil the

conditions laid down in regulations governing representation before courts and other

State authorities. In such cases, the agent is entitled to be paid for his work in the

amount fixed by the agent’s price list, and to have his costs refunded by the opposing

party. The agent’s price list shall be adopted by agent or association of agents with the

consent of the Minister competent for justice.

Article 132

Entry of agents in the register

(1) The Office shall keep the register of patent agents and the register of industrial

design and mark agents.

(2) A fee prescribed by the Act regulating administrative fees shall be paid for entry in

the register. Following the payment of the fee, the Office shall issue the decision on the

entry.

(3) A patent agent may request that he be removed from the register of patent agents and

entered in the register of industrial design and mark agents. An industrial design and

mark agent may request that he be removed from the register of industrial design and

mark agents and entered in the register of patent agents only if he fulfils the

requirements of Article 131(2).

(4) Agents shall be removed from the register if:

(a) they file a request for removal;

(b) they are barred by a final judgement from acting as representatives.

(5) The following data in particular shall be entered in the register: registration number

of the representative, data on the representative (surname, forename and address, or firm

and seat), date of entry in the register and data on persons who fulfil the conditions

under Article 131(2)(a) or (3)(a) and are employed by the agent on a regular or

contractual basis (surname, forename, address and education).

(6) An executive regulation issued by the Minister competent for the field of industrial

property shall define, in greater detail, the contents of the requests for entry in the

and proceedings relating to entries of alterations.

(URSIL/SIPO ZIL_EN_2006) 62

Article 133

Qualifying examinations

(1) The Office shall conduct qualifying examinations under Article 131(2) and (3). A

fee prescribed by the Act regulating administrative fees shall be paid before the

examination.

(2) The Office shall keep a list of persons who have passed the qualifying examination.

(3) An executive regulation issued by the Minister competent for the field of industrial

property shall define, in greater detail, the manner of conducting qualifying

examinations under Article 131(2) and (3).

Chapter XII

PENAL PROVISIONS

Article 134

Offences

(1) By a fine of SIT 100,000 to 10,000,000 shall be punishable for an offence any legal

person who:

(a) uses, in the course of trade, the signs referred to in Article 43(3) without the consent

of the Government of the Republic of Slovenia;

(b) submits to the Office a false or untrue evidence referred to in Article 92, or request

an interruption of the proceeding referred to in Article 92(3) by a false or untrue

communication;

in the register referred to in Article 132.

(2) By a fine of SIT 10,000 to 500,000 shall be punishable the person responsible within

the legal person for any offence referred to in paragraph (1).

(3) By a fine of not more than SIT 150,000 shall be punishable natural persons for any

offence referred to in paragraph (1).

Chapter XIII

TRANSITIONAL AND FINAL PROVISIONS

Article 135

The use of substances as medicine

(1) The use of substances as medicine for humans and animals shall not be deemed to

constitute infringement of a patent for invention of such substances if the corresponding

patent application was filed on or before December 31, 1992, or if a right of priority was

claimed for the application on or before December 31, 1992.

(URSIL/SIPO ZIL_EN_2006) 63

(2) By the use of substance as a medicine within the meaning of paragraph (1) is meant

its production and processing into the medicine under a process which is not the

subject-matter of a relevant patent protection, and marketing of this substance or

medicine.

(3) Following the accession of the Republic of Slovenia to the European Union, Article

21(2) shall apply to substance or medicine referred to in paragraph (1) only if the

consent of the owner of the patent under which such substance or medicine is protected

has been obtained.

Article 136

Treatment of applications and validity of rights

(1) Procedures concerning the registration and grant of industrial property rights with

respect to applications filed before the date of entry into force of this Act shall be

carried out in accordance with the provisions of this Act, unless otherwise provided by

this Act.

(2) The industrial property rights which are valid on the date of entry into force of this

Act shall continue to be valid according to the provisions of this Act, unless otherwise

provided by this Act.

Article 137

Patent applications and patents

(1) The provisions of Articles 10, 77, 78 and 112 of the Law on Industrial Property

(Official Gazette RS No 13/92, 27/93, 34/97 – Decision by Constitutional Court, 75/97)

shall continue to apply to patents applied for or granted prior to entry into force of this

Act.

(2) The provisions of Article 22(2) and (3) of this Act shall apply to patents applied for

after 1 January 1993.

(3) From the date of accession of the Republic of Slovenia to the European Union,

Article 22(3) of this Act shall apply in accordance with the regulations of the European

Union.

(4) Within six months following the accession of the Republic of Slovenia to the

European Union, a supplementary protection certificate may be requested for patents

applied for after 1 January 1993, and for which the time limit referred to in Article 7 of

the EU Regulation No 1768/92 of 18 June 1992, or Article 7 of the EU Regulation No

1610/96 of 23 June 1996, expired.

(5) The provisions of Articles 24 to 31 of this Act shall begin to apply on entry into

force of the EPC for the Republic of Slovenia.

(6) The provision of Article 32(6) of this Act shall not apply to applications under the

PCT which have been filed prior to entry into force of this Act.

(URSIL/SIPO ZIL_EN_2006) 64

Article 138

Industrial design applications and industrial designs

(1) Article 58 of the Law on Industrial Property shall continue to apply to industrial

designs published prior to entry into force of this Act, and for which opposition against

the issuance of the decision on the registration has been filed.

(2) Where an industrial design application has been published prior to entry into force

of this Act, and opposition against the issuance of the decision on the registration under

Article 58 of the Law on Industrial Property has not been filed, the Office shall issue the

decision on the registration of the industrial design, enter it in the register and publish

the mention of the registration.

(3) Industrial designs valid on the date of entry into force of this Act shall be dealt with

in accordance with the provisions of this Act.

Article 139

Opposition on the basis of a mark applied for or registered with the Office for

Harmonisation in the Internal Market (trade marks and designs)

(1) Prior to the accession of the Republic of Slovenia to the European Union, a mark

which was applied for or registered with the Office for Harmonisation in the Internal

Market (trade marks and designs) before the date of application for or registration of the

later mark in the Republic of Slovenia shall also be deemed to be an earlier mark under

Article 44(1).

(2) The owner of the earlier mark referred to in paragraph (1) may file an opposition

under Article 101, provided that he files, within the time limit provided for the

opposition, a correct application for his mark in the Republic of Slovenia.

(3) If the owner of the earlier mark referred to in paragraph (1), when filing an

opposition under Article 101, does not file in due time also a correct application for his

mark in the Republic of Slovenia, the opposition shall be deemed not to have been filed.

Article 140

Appellations of origin

Appellations of origin valid on the date of entry into force of this Act shall be dealt with

as geographical indications under this Act, unless otherwise provided for by another act.

Article 141

Qualifying examinations and agents

(1) Qualifying examinations passed or recognised up to the date of entry into force of

this Act shall be treated as qualifying examinations for patent agents and qualifying

examinations for industrial design and mark agents.

(2) The Office shall ex officio enter in the register of patent agents all representatives

who have been entered in the register of representatives by the date of entry into force

of this Act.

(URSIL/SIPO ZIL_EN_2006) 65

Article 142

Executive regulations

(1) Executive regulations under this Act and order on the tariff referred to in Article

7(3) shall be issued within six months following the entry into force of this Act, with the

exception of the regulation referred to in Article 80(2) which shall be issued after the

Office will have had the necessary technical facilities.

(2) Prior to the issuance of new regulations, the following regulations issued under the

Law on Industrial Property shall apply mutatis mutandis:

(a) Regulations governing grant of patents (Official Gazette RS No 49/93);

(b) Regulations governing registration of industrial designs (Official Gazette RS No

49/93, 37/95 – Decision by Constitutional Court);

(d) Regulations governing international registration of marks (Official Gazette RS No

15/93);

(e) Regulations governing qualifying examinations and entry in the register of

representatives (Official Gazette RS No 20/92);

(f) Regulation governing fees for acquisition and protection of industrial property rights

prescribed by the Slovene Intellectual Property Office (Official Gazette RS No 14/95);

(g) Regulation governing fees for information and other services provided by the

Slovene Intellectual Property Office (Official Gazette RS No 57/96).

Article 143

Termination of validity

(1) On the date of entry into force of this Act,

(a) Law on Industrial Property, and

(b) Regulations governing transfer of industrial property rights applied for at the Federal

Patent Office in Belgrade to the Slovene Intellectual Property Office (Official Gazette

RS No 49/93)

shall cease to apply.

(2) Notwithstanding paragraph (1)(a) and subject to Articles 137(1) and 138(1) of this

Act, the provisions of Articles 10, 58, 77, 78 and 112 of the Law on Industrial Property

shall continue to apply.

(URSIL/SIPO ZIL_EN_2006) 66

Article 144

Entry into force

This Act shall enter into force after the expiry of six-month period following its

publication in the Official Gazette of the Republic of Slovenia.

TRANSITIONAL AND FINAL PROVISIONS

of the Act of 6 February 2006 Amending the Industrial Property Act

Article 23

Pending proceedings

Proceedings which are pending pursuant to Chapter IX at the time when this Act

becomes effective shall be terminated according to the provisions of this Act applicable

hitherto.

Article 24

This Act shall enter into force on the fifteenth day following its publication in the

Official Gazette of the Republic of Slovenia.

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