The trademark owner has the exclusive right to use the trademark and other exclusive rights in accordance with the Industrial Property Act (ZIL-1). The trademark owner may therefore prevent third parties who do not have the owner’s consent from using, in commercial transactions, a sign that is identical or similar to the trademark, if it is used for identical or similar goods or services.
Infringements mainly include affixing the registered sign to goods or their packaging; offering goods bearing that sign, placing them on the market or stocking them for those purposes; offering or providing services under that sign; importing or exporting goods under that sign; using the sign on business documentation and in advertising, and similar acts.
But what if an individual uses a sign without registering it? This article summarises the options that Slovenian legislation offers to the “holders” of unregistered signs.
Unregistered sign
Companies may use a sign in commercial transactions without registering it. An unregistered sign is not a trademark, because a trademark as an industrial property right is acquired on the basis of an application and entry in the register. A certain unregistered sign may be more or less established; a company may have invested certain resources in the recognition of such a sign, and its use may have contributed to better business performance.
However, an unregistered sign cannot be the subject of ownership rights, nor does an unregistered sign in itself have the nature of a property right. Even if a sign has a certain market value, that value is much harder to prove and lower than in the case of registration.
Opposition to trademark registration
Pursuant to the first paragraph of Article 101 of ZIL-1, within three months from the date of publication of a trademark application, the owner of an earlier trademark may file a written opposition to the registration of the trademark with the Office. The trademark owner may therefore oppose the registration of a sign that, in their opinion, infringes their trademark rights.
The third paragraph of this article extends the right of opposition to the holder of an earlier acquired unregistered sign used in commercial transactions. However, in accordance with the second paragraph of Article 44 of ZIL-1, rights from an unregistered sign arise only for an unregistered sign that is undoubtedly a “well-known mark” in the Republic of Slovenia. In other words, there must be no doubt about this.
The opponent must demonstrate that, despite the absence of registration, consumers are aware of the connection between the sign and a particular company. That is, consumers must know that the product bearing a certain sign was made by a specific company and therefore expect a certain quality. Under ZIL-1, protection of unregistered signs is extremely limited.
Claims in the case of acts of unfair competition
Compared with ZIL-1, the protection of signs under the Prevention of Restriction of Competition Act (ZPOmK-1) is considerably broader.
Provided that there is unauthorised use of the name, company name, trademark or other designation of another undertaking that creates or may create confusion on the market, the holder of an unregistered sign has the right to claim damages for the loss suffered, the right to demand a prohibition of further acts of unfair competition, and the right to request publication of the judgment in the media if the act was committed through the media.
However, the “holder” of the unregistered sign will succeed with these claims only if they manage to prove that the act was unfair, i.e. that it was contrary to good business practices and that it causes or may cause damage to another undertaking.
Problem
The rights of the “holder” of an unregistered sign are extremely limited. Despite investing in a particular sign, a company may ultimately remain without any legal protection because of the high evidentiary standards.
Solution
To avoid potentially lengthy and potentially unsuccessful disputes, the best solution is to register the sign.