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With a successful trademark registration, we are just getting off to a good start

In Slovenia, the awareness of the importance of trademark registration is high. Companies are mostly aware of the importance of intellectual property, and one of the first things that comes to mind is the trademark. However, there is a general perception that the only important thing about trademarks is the choice of a memorable name or logo, while less attention is paid to the pre-registration procedures and, in particular, to the importance of active management after successful registration.

A trademark protects the sign that distinguish the goods or services of an undertaking from those offered by other undertakings. For this reason, and also because the proprietors of earlier trade marks may oppose later applications or bring an action for trade mark infringement, it is necessary to ascertain, before applying for a trade mark, and also before putting the trade mark into use in respect of goods or services where the sign used to designate the goods or services is already in use in the course of trade prior to the filing of the application, whether there are any earlier identical or confusingly similar trade marks for the goods or services in the chosen countries which could form the basis of an opposition action against the trade mark.

In this respect, attention should also be paid to another important aspect, namely the selection of the goods and services. An approach whereby a company applies for a very wide range of goods and services ‘just in case’ is not necessarily the best approach, as it increases the likelihood that there is already an earlier trade mark which may form the basis of an opposition to the application. In addition, a trade mark for goods and services for which it is not actually used may be vulnerable five years after registration, as will be explained in more detail later in this paper. The ideal approach is therefore to apply for a trade mark before the company starts to use it in the course of trade, for goods and services which the company intends to start offering under the trade mark no later than three to five years after the application or those which it already offers, taking into account, of course, other trade marks already applied for or registered and those already on the market.

Once the list of goods and services has been drawn up and the search has been carried out, it is time to apply for the trade mark. If the competent office does not identify absolute grounds for refusal and if no opposition is filed within three months of the publication of the application, the trade mark is successfully registered.

It is generally believed that if the registration is successful, the company’s work on the trade mark is finished and that the proprietor’s only task is to ensure that the trade mark is renewed before it expires every ten years. However, such a belief is mistaken. The Intellectual Property Office (both Slovenian and European) does not ex officio take care of any prior rights that might be the basis for refusing a subsequent application, nor is this task included in the services of the agent who handles the application and/or renewals. Therefore, if the proprietor of the earlier trade mark is passive, the later applicant will be able to successfully register his trade mark, which could create confusion on the market. In such a case, the proprietor of the earlier trade mark will only have the option of bringing an action for a declaration of invalidity of the trade mark (Article 114 of the Industrial Property Act – ZIL-1), which, for the time being, will be a lengthy and time-consuming court procedure. The same applies to a company name – according to the Companies Act (ZGD-1) , if a person considers that another company’s company name is not clearly distinguishable from his/her previously registered company name, trade mark or unregistered signs protected under the rules governing trade marks, he/she must bring an action for injunctive relief against the use of the company name, for its cancellation from the register and for damages.3 The lawsuit must be brought by a person who considers that another company’s company name is not clearly distinguishable from his/her own previously registered company name, trade mark or unregistered signs that are protected under trade mark law. Subsequent applications should therefore be monitored (special programmes and agents can help with this) and an opposition filed at least in due time against the registered trade mark (Article 101 of ZIL-1), as the opposition procedure takes place before the Intellectual Property Office and is therefore quicker and cheaper than subsequent court proceedings.

Another important aspect to bear in mind after the registration of a trade mark is that the trade mark must be used in the form in which it is registered, or at least in a form which does not materially alter its distinctive character (Article 52b ZIL-1). If the mark is not used or is used in an altered form, it is vulnerable to claims for revocation for non-use five years after registration or, if it is relied upon as a basis for opposition to subsequent trade mark applications, it may be the subject of a request in opposition proceedings to prove its genuine use. If we fail to prove it, we may lose the trade mark, either in its entirety or only in respect of particular goods and services. If a company changes or updates its logo and the old registered logo is no longer used, it is imperative that it also applies for and registers the new logo. When deciding whether to change the logo, it is also necessary to check whether any trade marks have been registered between the first application and the new application which could be a barrier to registering the new design. This is because any trade marks that are later than the first application and have been successfully registered in the meantime may be a barrier to a subsequent application for a new image or logo.