What brings the proposed amended Industrial Property Act (ZIL-1) in terms of trade marks?

The draft law amending the Industrial Property Act (the “amended ZIL-1”) was published mid-January 2019, transposing Directive 2015/2436/EU of the European Parliament and of the Council of 16 December 2015 (the “Directive”) into Slovenian law. The deadline for the transposition of the Directive into national legal orders expired on 14 January 2019 with the exception of the provision on the transfer of competence to decide on the revocation or declaration of invalidity of trade mark from courts to intellectual property office, which has to be transposed by 14 January 2023, therefore it is not foreseen yet under the current amended ZIL-1.

The amended ZIL-1 (in line with the Directive) introduces some important innovations in terms of trade marks. In its current form, ZIL-1 already provided for the absolute grounds for refusal of registration, however in the amended ZIL-1 they are somewhat adjusted to the requirements of the Directive – the scope of absolute grounds is slightly extended in the amended ZIL-1, more precisely, some existing grounds have been deleted, because they are no longer admitted under the Directive, while new ones have been added, e.g. contradiction to traditional terms for wine, contradiction to traditional specialties guaranteed, contradiction to plant variety rights, contradiction to other regulations of the Republic of Slovenia or the European Union. These are the grounds due to which the intellectual property office will refuse the registration ex officio and without any objection of the previous holder of any right. The Directive namely stipulates exhaustively (i.e. expressly and by covering all the cases) all the grounds permitted – and the States cannot have any additional grounds, however they may choose not to regulate some of them that are listed as an option. Supplemented and somewhat amended are also the relative grounds for refusal of registration.

The amended ZIL-1 (also in line with the requirements of the Directive) puts great emphasis on the use of trade marks. Another new thing in the ZIL-1 will be the possibility of enforcing non-use as a type of defence in invalidity proceedings and as a type of defence in opposition proceedings. This has been provided for EU trade marks already in Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (the “Regulation”), and with the amended ZIL-1 this will be provided for in the Slovenian legal order as well. This will mean that e.g. in opposition proceedings against trade mark application, the applicant of subsequent trade mark will be able to request that the opponent submit evidence on the fact that in the period of five years prior to the date of filing the application it had put its trade mark to genuine use in connection with the goods and services in respect of which it is registered. If the holder of previous trade mark will not be able to prove such use (several decisions and guidelines on when the use is deemed proven have already been issued and published at the level of the Regulation), its opposition will be rejected, however an action for revocation on grounds of non-use may be filed subsequently against such trade mark (this is foreseen already in the existing law). Prior to filing an opposition, the proprietors of trade marks will thus have to consider whether they are able to prove the genuine use of trade mark and whether the filing of opposition might cause an (unnecessary?) excessive exposure of their trade mark.

The amended ZIL-1 expands also the definiton of signs which are capable of constituting a trade mark. Namely, it will no longer be required that the sign is capable of being represented graphically, but that it is capable of being represented in such manner that the competent authorities and the public can determine clearly and precisely what is the subject of protection. This means that it will be possible to grant protection also for e.g. multimedia signs, some acoustic signs and similar.

New are also the provisions on rights in rem on trade mark, on trade mark licensing and on trade mark being levied in execution. Already before, trade marks have often been pledged, and now these issues will be at least partially and basically regulated in the ZIL-1 itself.

Provisions on collective trade mark are mandatory for the Member States. These have already been a part of our legislation and the amendment only introduces certain changes to the ZIL-1. Nevertheless, the legislator chose not to introduce the guarantee or certification mark, which is provided for by the Directive as an optional choice. In accordance with the Directive “‘guarantee or certification mark’ means a trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from goods and services which are not so certified;”. However, such trade marks are foreseen as EU trade marks in the Regulation.

Based on the Regulation and the procedure for registration of EU trade mark, the amended ZIL-1 provides for the possibility of a period following the filing of opposition against trade mark registration, during which the proprietor and the applicant could conclude a potential settlement (the so-called cooling-off period). This way it will be possible to stay the proceedings for up to 6 months.

Of course, several other amendments are foreseen in the amended ZIL-1, among others, the amendment of the article stipulating the rights of proprietor of the mark (the latter may now prohibit the use of its trade mark in comparative advertising that is contrary to the legal order of RS or EU). The amended ZIL-1 regulates also the prohibition of preparatory acts in relation to packaging and other means, as current Article 47 ZIL-1 enables the holder of right to enforce prohibitions from the moment when the goods or packaging have been equipped with the protected sign, however it does not enable to prohibit the mere existence of such signs (that have not been placed on particular goods or packaging yet). The added clause “stipulates the right of the proprietor of the mark to prohibit the implementation of preparatory acts in breach of the rights from trade mark in relation to packaging and other means. Where there is a risk that the packaging, labels, tags, security or authenticity features or devices, or any other means on which the mark is affixed could be used in connection with the goods or services, and such use would violate the rights of the proprietor of the mark, the proprietor of this mark has the right to prohibit affixing the sign identical or similar to the trade mark to packaging or any other means, and offering or placing on the market or storage for these purposes, import or export of packaging or other means on which the mark is affixed.”

In addition to alignment with the Directive the amended ZIL-1 foresees also a gradual transition to electronic business of the intellectual property office, stipulating also that from now on the deadline (e.g. for submitting a response to opposition) may be extended only once for a single period of three months and no longer e.g. three times for one month. Namely, this manner of extension has caused unnecessary burden for clients and the office, as a resolution had to be issued for each extension.