Trade Marks & Copyright 2024 Comparisons

Trade marks are governed in particular by Slovak Act No 506/2009 Coll. on Trade Marks (the “Trade Marks Act”). Copyrights are governed in particular by Slovak Act No 185/2015 Coll. Copyright Act (the “Copyright Act”).

Slovak law does not recognise common law trade mark rights or copyrights.

As regards trade marks, Slovakia is a party to:

• the TRIPS Agreement;
• the Paris Convention for the Protection of Industrial Property (the “Paris Convention”);
• the Convention establishing the World Intellectual Property Organisation;
• the Madrid Agreement and Madrid Protocol concerning the international registration of trade marks;
• the Trade Mark Law Convention;
• the Singapore Trade Mark Law Convention; and
• the Nice Agreement concerning the international classification of goods and services for the purposes of the registration of trade marks.

As regards copyrights, Slovakia is a party to:

• the Berne Convention for the Protection of Literary and Artistic Works;
• the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations;
• the WIPO Copyright Treaty (WCT);
• the WIPO Performances and Phonograms Treaty (WPPT);
• the Beijing Treaty on Audiovisual Performances;
• the TRIPS Agreement; and
• the Treaty on the International Registration of Audiovisual Works.

The legal framework governing the rights of foreign trade mark and copyright holders in Slovakia includes both domestic laws and international agreements. See 1.1 Governing Law and 1.2 Conventions and Treaties.

Slovak law recognises the following types of trade marks:

• word trade marks in regular type or in the accompanying design;
• figurative trade marks;
• spatial trade marks;
• holographic trade marks;
• sound trade marks;
• positional trade marks;
• trade mark of designs;
• trade marks consisting of one colour without outlines or a combination of colours without outlines;
• motion trade marks; and
• multimedia trade marks.

In addition to these types of trade marks, Slovak law also recognises collective trade marks which are owned by an association or a legal entity governed by public law. Certification trade marks are not recognised by Slovak law.

Industrial designs are not entitled to trade mark protection but are entitled to industrial design protection under Slovak Act No 444/2002 Coll. on Industrial Designs (the “Industrial Designs Act”). While the protection regimes are generally separate, there are cases where an industrial design may also function as a trade mark.

Identifiers which can be registered as a trade mark are, in particular, words, including personal names, drawings, letters, numerals, colours, the shape of the product or the shape of the packaging, or sounds.

Apart from the Trade Marks Act, special legal protection is provided for the Olympic emblem and other Olympic designations by Slovak Act No 440/2015 Coll. on Sports.

Trade marks which are not yet registered in Slovakia can be protected if they are well-known foreign marks pursuant to Article 6 bis of the Paris Convention.

Elements required to qualify for trade mark protection are that the mark is capable of distinguishing the goods or services of one person from those of another person and is capable of being reflected in the Trade Mark Register.

A mark can also be registered as a trade mark if the applicant can prove that it has acquired, prior to the date of filing the application, distinctiveness for the goods or services described in the application, on the basis of its use in the territory of Slovakia or in relation to the territory of Slovakia.

Distinctiveness can be proved on the basis of material evidence, that is, proof of long-standing constant use or promotion of a trade mark (eg, an advertising campaign, articles showing sales in previous years, invoices, social media, etc). Consumer surveys can also be used as evidence to establish that the target group of customers actually associates the product with the mark.

The owner of a trade mark has the exclusive right to use the trade mark in connection with goods or services for which it is registered in the Trade Mark Register and is entitled to use the ® mark together with a trade mark by the Trade Marks Act. The owner of a trade mark has the right to demand in court that the infringer refrains from any act that infringes or threatens the owner’s right and that the consequences of the threat or infringement be eliminated. The owner of a trade mark may also claim compensation for damages and the release of unjust enrichment or appropriate compensation, which may also consist of financial compensation. All rights granted to the trade mark owner persist throughout the term of a trade mark.

Slovak law does not recognise an anti-circumvention right in relation to trade marks.

A trade mark must be used in the course of commerce within the territory of Slovakia. This typically involves using the trade mark in a commercial context on goods or services for which the trade mark is registered. The use must be genuine and not merely for the purpose of maintaining the registration, that is, consistent use with normal exploitation of the trade mark in commerce. The use should be sufficiently public to establish recognition by consumers of advertising, packaging, promotional materials, etc. Regular and ongoing use is important. Sporadic or isolated use may not be sufficient to establish the ongoing commercial presence of the trade mark.

Once a trade mark is registered, its owner has the exclusive right to use the trade mark in connection with registered goods and services, and the owner can use the ® symbol in conjunction with the mark. However, it is not required that the trade mark owner uses the ® symbol or any other symbol to denote that a trade mark is registered or existing.

Copyright and trade mark protection can apply at the same time, provided that a protected object satisfies the prerequisites for copyright and trade mark protection at the same time.

The Copyright Act covers a work of literature, art or science which is the unique result of the author’s creative mental activity and which is perceptible to the senses, regardless of its form, content, quality, purpose, form of expression or degree of completion. A “work” is a literary work, verbal work, theatrical work, musical work, audio-visual work, work of visual art, architectural work, work of applied art, cartographic work or other kind of artistic work or scientific work, if it fulfils the conditions. Other creations not expressly mentioned herein may also be considered works of authorship if they meet the conceptual characteristics of a work.

Industrial designs are not entitled to copyright protection but are entitled to industrial design protection under the Industrial Designs Act. While the protection regimes are generally separate, there are cases where an industrial design may also be a protected work of authorship.

Elements required in order to qualify for copyright protection are that a work is in the field of literature, art or science; it is the unique result of the creative mental activity of the author (in the case of a photographic work, this is not a requirement); it is perceptible to the senses, regardless of its form, content, quality, purpose, form of expression or degree of completion; and it does not fall within the negative list of what is not considered to be copyrightable.

The Copyright Act grants authorship to the natural person who created the work. The author is determined by the appearance of their name or pseudonym, and copyright arises when the work is perceptible. Even the creator of work made for hire is an author. Copyright can be claimed anonymously or pseudonymously, with different term durations. Pseudonymous and anonymous works have economic rights lasting 70 years after lawful publication or, if unpublished, 70 years after creation. If the author’s identity is known during this period, rights extend for the author’s lifetime and 70 years after death. Co-authored works follow a similar principle and a co-authored work belongs to all joint authors jointly and severally, unless otherwise agreed in writing.

Copyright owners are granted moral rights and economic rights by the Copyright Act.

An author has the right of authorship of their work to:

• decide whether or not to publish their work;
• be identified as the author and to decide on the manner of such identification, in particular by name or pseudonym, for each use of their work, if such identification is possible and customary for the work and the manner of use; and
• the inviolability of their work, in particular to protect it against any unauthorised alteration or other unauthorised interference, as well as against any defamatory treatment which would diminish the value of the work or cause damage to the author’s honour or reputation.

Synchronisation rights are not distinct from other rights.

See 3.3 Copyright Authorship.

No separate notification of copyright ownership is required. Use of the copyright symbol ©, the word “Copyright” or the sentence “All rights reserved” is not required, but highly recommended. Not mentioning a copyright notice has no legal consequences.

Collective rights management systems in Slovakia are governed by the Copyright Act and include SOZA (musical works and audio-visual works); SLOVGRAM (artistic performances, sound recordings, audio-visual recordings and broadcasts); LITA (literary, dramatic, musical-dramatic, choreographic, audio-visual and photographic works, works of visual art, architectural works and works of applied art); and SAPA (audio-visual records and audio-visual works). Collective management organisations collect royalties for copyright holders and enforce claims for unjust enrichment or damages for the unauthorised use of copyrighted works.

No registration is required for copyright protection.       

No applications for copyright registration are filed in Slovakia.

No applications for copyright registration are filed in Slovakia.

No applications for copyright registration are filed in Slovakia.

Copyright and trade mark protection can apply at the same time, provided that the protected object satisfies the prerequisites for this.

Trade mark rights can be acquired by registering a trade mark. Unregistered marks used commercially are also protected by Slovak law. For the legal benefits of being a trade mark owner, see 2.3 Trade Mark Rights. In addition to the already mentioned legal benefits, the owner of a trade mark may require the publisher of a dictionary, encyclopaedia or similar reference work – in which the trade mark is reproduced in such a way as to give the impression that it is the generic name of goods or services – to publish, in the next edition of the work at the latest, particulars showing that the trade mark is reproduced in the work.

In Slovakia, standards and requirements for registration may vary depending on the type of mark but they generally include standards such as distinctiveness, non-descriptiveness, and the absence of conflicts with existing trade marks.

The Intellectual Property Office (IPO) maintains the Trade Mark Register, which is publicly available. Moreover, data recorded in the Trade Mark Register is available online on the IPO’s website.

The Trade Mark Register is the only source of information on national trade mark applications and registered trade marks. It is common practice to search for prior trade marks before applying to register a trade mark with the IPO. It is also highly recommended to search for prior trade marks in the European Union Intellectual Property Office (EUIPO) and World Intellectual Property Organization (WIPO) registers before applying to register a trade mark. 

Slovak law does not allow the registration of series marks. Each trade mark application must be filed separately.

The registration of a trade mark is valid for ten years from the date on which the trade mark application was filed. A trade mark registration’s term of protection can be renewed for a further period of ten years by a trade mark renewal application filed by the trade mark owner, a pledgee or any other person or entity who establishes a relevant legal interest. A renewal application can only be filed in the last year of a trade mark’s term of protection and must be filed no later than the last day of its term of protection (ie, before the protection expires).

If a renewal application is not filed during the “standard” period described above, such renewal application can be filed within the six-month period beginning on the day after the “standard” period of renewal has expired.

Once a trade mark is registered in the Slovak Trade Mark Register, it cannot be updated or refreshed – that is, no amendments to the registered list of goods and services or mark designation can be made.

A trade mark registration procedure starts with a trade mark application being filed with the IPO.

According to the Trade Marks Act, a trade mark application must meet the following material requirements:

• an indication of the identity of the applicant (and identification of the applicant’s representative if the applicant is represented);
• a designation of the mark that is the subject of the application;
• a list of the goods or services to be associated with the mark; and
• the signature of the applicant or their representative.

A trade mark can be registered by individuals, legal entities or associations of individuals or legal entities. For types of marks that can be registered, see 2.1 Types of Trade Marks. Foreign applicants are required to appoint and be represented by an attorney licensed to practise in Slovakia.

An applicant cannot apply for multiple designations in a single application to register a Slovak national trade mark. Nevertheless, applications for multiple classes are allowed.

The official fee for filing an application for an individual trade mark in three classes of goods and services is EUR166. A 50% discount on the official fee is available for electronic filing of an application. This discount cannot exceed a limit of EUR50 as of 1 April 2024. The official fee for filing an application for a collective trade mark in three classes of goods and services is EUR332. The official fee for filing an application for an individual or collective trade mark, for each class of goods and services over three classes is EUR20.

There is no requirement under Slovak law for an applicant to use the mark in their commercial activities before registering the mark.

If a mark in a “new” trade mark application is identical to an earlier trade mark or an earlier trade mark application, and it applies to the same goods or services, the IPO will notify an earlier trade mark owner or the applicant who filed the earlier trade mark application about the “new” trade mark application.

The IPO does not automatically consider prior rights in any other way except for the purposes of the above-mentioned notification.

A third party can participate in trade mark registration proceedings by filing an opposition if such party has the required legal standing, for example, a third party that holds rights to an earlier trade mark, or an applicant that is a business representative of such third party filing a trade mark application without the third party’s consent.

Anyone may file observations against a trade mark application’s registration; no special legal standing is required for this. However, a person who files observations may not be a party to the registration proceedings. The IPO will inform the applicant about observations and it will allow the applicant to respond. The IPO will also inform the applicant and the person/entity who filed the observations about the result of its consideration of such observations.

After a trade mark application has been filed, it is still possible to amend the applicant’s first name, surname, company name, permanent address or registered address with the Commercial Register, providing such amendment does not change the overall character of the designation. Furthermore, an applicant may also reduce the list of goods and services in the application. The above-mentioned amendments are, however, subject to review and approval by the IPO. 

An applicant can divide a trade mark application consisting of multiple goods or services before the registration is finished. In the case of an application’s division, prior rights and the date of the original trade mark application’s filing are preserved for divisional trade mark applications. An applicant typically divides a trade mark application when a list of goods and services partially conflicts with another prior right. Division of an application is not allowed in the course of opposition proceedings in respect of the goods and services which are opposed.

The IPO decides issues relating to incorrect information in a trade mark application.

See 4.9 Revocation, Change, Amendment or Correction of an Application for information on amending incorrect information in a trade mark application.

The IPO will refuse to register a trade mark application due to the following absolute grounds:

• lack of a distinctive character;
• the sign already serves in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of goods or rendering of services, or other characteristics of goods or services;
• the sign is customary in the Slovak language or in bona fide and established practices of the trade;
• there is a conflict of moral principles;
• there is deception of the public; and
• the application is not filed in good faith.

For example, an IPO’s objection due to a lack of distinctive character can be overcome by either providing strong arguments which will convince the IPO that its conclusions are incorrect because a considered mark is sufficiently distinctive (eg, by referring to a new, relevant and applicable opinion in case law) or by providing evidence of its prior use (ie, before filing a trade mark application), establishing that the public connects the mark with the applicant’s goods and services.

The IPO will send a written notice to an applicant if it finds reasons to dismiss a trade mark application on absolute grounds. The IPO will set a deadline for the applicant to submit the statements and evidence necessary for overcoming the IPO’s objections. If the applicant fails to address any of the IPO’s objections, then the IPO will dismiss the application in its entirety. The applicant may, however, file an appeal against such decision.

If any issues arise before the IPO reaches a decision on a trade mark registration, the applicant will be served with an IPO written notice allowing the applicant to respond thereto.

An applicant can file an appeal with the president of the IPO against the IPO’s decision to dismiss a trade mark application. The deadline for filing a formal appeal is 30 days from the date of delivery of the decision. The reasoned grounds for the appeal must be filed within one month of the filing of the formal appeal. If unsuccessful, the applicant can file an administrative action to the administrative court and the court’s decision can be further challenged in proceedings before the Supreme Administrative Court and, thereafter, the Constitutional Court.

Slovakia participates in the Madrid system and provisions of the Madrid Agreement and Madrid Protocol are directly applicable.

International registrations are subject to an IPO review on absolute grounds, as are Slovak national trade mark applications.

The statutory deadline for filing an opposition to a trade mark application is three months after the application was published in the Trade Mark Register. This deadline cannot be extended.

Once the opposition is filed, the applicant and the opponent can request jointly for a deadline of at least two months to reach an amicable resolution during the opposition proceeding. 

Legal grounds for filing an opposition include the likelihood of confusion between an application and an existing trade mark, and the goods and services applied for and those protected by an earlier right. The earlier right will be, in particular, a registered trade mark, an unregistered generally recognised mark, a trade mark generally renowned in Slovakia, an industrial property right or a copyright.

Moreover, a person or an entity whose rights are affected by a trade mark application can file an opposition if the applicant did not file their trade mark application in good faith. A natural person can also oppose a trade mark application on the grounds that such application may affect its personality rights.

Dilution is not recognised by Slovak law as grounds for filing an opposition. However, case law recognises that a dilution may have a detrimental effect on a trade mark’s reputation or its distinctive character. By establishing a dilution, it may be possible to establish harm or a threat of harm to a trade mark’s reputation.

An owner or holder of an earlier right can file an opposition. Moreover, where the rights of a natural person or a legal entity are affected by a trade mark application filed in bad faith, or a natural person’s personality rights are affected by a trade mark application, they may oppose the trade mark application. No legal representation is required for opposition proceedings.

The official fee for filing an opposition is EUR50 and this is payable in full upon filing the opposition. A 50% discount is available for electronic filing of the opposition. Should a party fail to pay the official fee, the IPO will send it a written notice with a deadline for making the payment. 

Opposition proceedings are heard by the IPO. These proceedings are resolved through motion practice, usually without any oral hearings.

Opposition proceedings are initiated by an opponent’s filing of an opposition with the IPO. An opponent can submit evidence only within the deadline for filing an opposition.

After receiving an opposition, the IPO will serve it on the applicant and it will allow the applicant to make a response. The deadline for the applicant’s response can be extended. The opponent is not notified of the applicant’s response and the response is not served on the opponent unless the opponent expressly asks the IPO for a copy. The same applies to all further submissions by both parties in the IPO’s first instance proceedings.

See 4.13 Remedies Against the Trade Mark Office.

In general, there is no statute of limitation for filing a revocation action or a cancellation action of a trade mark. There is an exception according to which a revocation action based on a court decision issued on specific grounds (eg, that the use of a trade mark amounts to unfair competition) must be filed within six months from the day when the underlying court decision becomes final.

It must be noted that the grace period for a revocation claim for a trade mark’s non-use amounts to a consecutive period of five years. Therefore, this claim becomes available five years from the day of a trade mark’s registration.

Trade Marks

The following legal grounds cover trade mark revocation or cancellation:

• the trade mark has not been used for a consecutive period of five years since the day when the request was filed;
• the trade mark has become customary for goods or services for which it is registered;
• the trade mark has become deceptive in relation to the goods or services for which it is registered; and
• a final court decision that the use of a trade mark is detrimental in matters stipulated by law, eg, that such use amounts to unfair competition.

A trade mark can be invalidated due to being filed contrary to absolute grounds, or at the request of a person entitled to file an opposition against it.

Copyright

Copyright is not registered so there are no remedies.

A revocation/cancellation request may be filed by any third party.

An invalidation request filed by a person who is entitled to file an opposition may only be filed by a person enjoying specific earlier priority rights, see 5.1 Timeframes for Filing an Opposition.

Revocation and invalidation proceedings are heard by the IPO. Remedies described in 4.13 Remedies Against the Trade Mark Office also apply to these proceedings.

A trade mark can be partially revoked or invalidated if the grounds for such revocation or invalidation are related to some registered goods or services, rather than to all of them or to the trade mark as a whole.

Claims, statements and evidence in revocation and invalidation proceedings can be amended or supplemented during the proceedings.

A challenged trade mark cannot be amended except for restricting the list of goods and services registered for it, which can be carried out on a request made by a trade mark owner.

Revocation/cancellation and invalidation actions are heard before the IPO, while infringement cases are heard before the courts. These different procedures therefore cannot be heard together.

Fraudulent trade marks can be contested by an invalidation action establishing that such trade marks were filed in bad faith in relation to the plaintiff.

Slovak trade marks can be assigned to another party for all or a part of registered goods and services by an assignment agreement in writing. There is no maximum limit of assigning in relation to a trade mark. A previous IPO approval of an assigning a trade mark is not required. Trade mark rights are transmissible upon death of the owner to heirs or beneficiaries according to the rules of inheritance by Slovak law.

A trade mark owner can grant a licence to a third party to use the trade mark for all or a part of the registered goods and services covered by a licence agreement. Previous IPO approval is not required. 

Slovak law allows a trade mark owner to grant either an exclusive or non-exclusive licence to the trade mark. If the exclusive licence is granted to one party, it cannot then be granted to another party during the duration of the agreement. There is no limit on granting multiple non-exclusive licences to a single trade mark. The parties can enter into a licence agreement for limited or unlimited time – in such case, a termination of a licence would not be tied to a specific time period expiration. It is possible to include provisions related to archival rights in a trade mark license agreement if both the licensor (trade mark owner) and the licensee agree. 

Slovak law allows authors to licence their work by exclusive licence in written, non-exclusive licence and sublicense. An unlimited-duration license grants use of rights for the entire copyright duration, ie author's lifetime plus 70 years. Archival rights can be included in licenses.

It is possible to assign a trade mark application or to grant a licence in relation to such application during a trade mark registration proceedings. There are no specific legal restrictions on assigning trademark applications while they are pending in Slovakia.

Copyright is not registered in Slovakia.

Neither an assignment nor a licence needs to be registered or recorded with the IPO. Nevertheless, both the assignment and the licence are effective in relation to third parties since the day of their recordal in the Trade Marks Register. It is thus highly recommended to record the assignment or the licence in the Trade Marks Register as soon as possible so third parties can follow the actual status of the trade mark ownership/authorisation. The only risk that exists during the gap between the assignment or licence taking place and its registration can be providing proof that the assignment or the licence exists.

Copyright is not registered in Slovakia.

The moral rights, economic rights and  performer's economic rights of author are non-transferable.

Rights to exercise the author's economic rights may be transferred only by licence agreement. See 7.2 Licensing Requirements or Restrictions.

A Slovak trade mark or trade mark application can be given as a pledge. The IPO will record the pledge based on the request of the pledge lender evidencing the establishment of the pledge for the trade mark or trade mark application. The agreement establishing the pledge has to be in writing.

A Slovak trade mark and trade mark application can be also levied in execution. The IPO will record if the trade mark or trade mark application is levied in execution based on the execution order evidenced by a notice of the execution beginning and a list of rights which also includes a specific trade mark or trade mark application. 

The economic rights of authors and the performer's economic rights can be given as a security.

Courts do not automatically consider trade mark claims after an expiration of a relevant statute of limitations; it is up to a defendant to object and establish that a trade mark claim is time-barred.

Unless stipulated otherwise, a general statute of limitations pursuant to either the Civil Code (three years) in B2C cases or the Commercial Code (four years) in B2B cases apply to trade mark claims.

The Trade Marks Act further specifies that claims to damages become time-barred in three years after a plaintiff became aware of a damage and an identity of a liable party or in five years after the damage occurs, whichever expires sooner.

Time limitation to file an action for refraining from infringing copyright is not specified. Time limitation for claiming damages from copyright is 3 years.

Pre-litigation Phase

As regards a pre-litigation phase (eg, cease and desist letters), it has no bearing on proceedings (such as claims to costs of proceedings) besides the fact that it can be used as an evidence.

Preliminary Injunction

An application for a preliminary injunction is available as a temporary relief (or a permanent relief in specific cases). It must be filed within a reasonable time after a plaintiff becomes aware of an infringement – a precise period is not stipulated, nevertheless, filing the application few months after finding about an infringement is usually acceptable. If the application is granted then a court will order the plaintiff to file an action on merits within a court-stipulated deadline, which is usually 30 days.

Action for Trade Mark Infringement

A trademark owner can file an action for infringement against parties using a mark that is identical or similar to their registered trade mark in connection with identical or similar goods or services. The infringement action seeks to prohibit the unauthorized use of the mark and may include claims for damages. A trade mark owner may request the court to order the destruction or removal of infringing goods from the market to prevent further distribution. The court may also order the publication of its decision regarding the infringement.

Action for Copyright Infringement

A copyright owner can file an action for refraining from infringing copyright and can claim damages. The most usual claims for copyright actions are actions to determine authorship, to determine whether the work created is plagiarized, whether the work created is an employee's work, whether the work created is a school work, whether a licensing agreement is invalid, rights in a previously unpublished work, and whether the use of the copyrighted work constitutes an unfair act.

Claims From Unregistered Marks

As regards claims from unregistered marks, it must be noted that claims from trade marks infringement cannot be raised from rights to an unregistered mark. However, there is an option to pursue unfair competition claims.

Dilution

There are no specific claims for dilution. However, the jurisprudence considers it to be detrimental to a trade mark’s reputation or its distinctive character and it can be thus used to establish an infringement on rights from a trade mark.

Cybersquatting

According to Article 3 of the Slovak domain authority SK-NIC’s alternative dispute resolution rules domains which are confusingly similar to third parties’ trade marks can be transferred to proprietors’ of such trade marks if a domain holder has no legitimate interest to holding such domain (eg, a plaintiff owns a trade mark, which is confusingly similar to the holder’s domain) and the domain was not registered, gained or used in good faith, ie, the holder registered the domain for purposes of hindering plaintiff’s business activities, for its sale/offer to a plaintiff, or if the domain was not used for two years.

The major factor in determining an infringement is a likelihood of confusion between an infringing sign and an earlier trade mark. The likelihood of confusion can be established after a comparison of marks. A visual, phonetical and semantical comparison of marks is conducted. A similarity between compared marks in any of these three considerations is sufficient for declaring a likelihood of confusion.

In addition to the above, a comparison of goods or services registered for an earlier trade mark and used in connection with an infringing sign must be conducted as well. A lower degree of similarity between marks can be overcome by a higher degree of similarity between compared goods and services and, via versa, a lower degree of similarity between compared goods and services can be overcome by a higher degree of similarity between compared marks.

An overall comparison of marks and goods and services is influenced by other factors such as a reputation of an earlier trade mark and its distinctiveness.

The major factors in determining an infringement in copyright are:

• Existence of Copyright
• Ownership of Copyright
• Exclusive Rights
• Permissible Uses/ Exceptions and limitations of economic rights
• Duration of Copyright
• License

A trade mark claim can be raised by a trade mark proprietor. A non-exclusive licensee can file an action for trade mark claims only with a written consent of a trade mark proprietor. An exclusive licensee can file such action only in case that the exclusive licensee sent a written notice to a trade mark proprietor about an infringement and the trade mark proprietor failed to file an action in a reasonable period. Either of above-mentioned persons can join proceedings initiated by one of them as an intervenient.

A defendant is a third party allegedly infringing on a right from a trade mark.

A copyright claim can be raised by a copyright owner, or a party with an exclusive rights to a copyright work, i.e. original owner, an assignee or any other party with ownership to a copyright. Depending on the circumstances, there may be other parties involved in the infringement, such as distributors, retailers, or intermediaries..

Class actions (as understood, eg, in certain common law jurisdictions) are not available under Slovak law since all plaintiffs have to be individually identified and they all have to file a lawsuit or join a lawsuit filed by a fellow plaintiff.

There are no prerequisites to directly filing a lawsuit without first engaging an alleged infringer. A pre-litigation phase (warning letters, mediations, etc) has no bearing on proceedings on the merits or costs of such proceedings besides the fact that anything from the pre-litigation phase can be used as evidence.

It must also be noted that an abuse of own’s rights does not enjoy a legal protection.

District Court Banska Bystrica is the first instance court with exclusive jurisdiction over trade mark cases for the territory of the whole of Slovakia; this is also the case for copyright disputes. Its appellate court is the Regional Court in Banska Bystrica.

City Court Bratislava III., District Court Banska Bystrica and City Court Kosice are the first instance courts with an exclusive jurisdiction over copyright cases as such for the specific regions of Slovakia. Their appellate courts are Regional court Bratislava, Regional court Banska Bystrica and Regional court Kosice.

An extraordinary appeal against decisions of the appellate court can be filed with the Supreme Court and, furthermore, a constitutional complaint can be filed with the Constitutional Court.

Reimbursement of costs that arise before filing a lawsuit is not granted in court proceedings unless such costs were efficiently spent for purposes of the court proceedings (eg, costs for obtaining an expert opinion on which a court based its conclusions). Costs relating to warning letters are a typical example of costs which are not reimbursed in proceedings.

Parties in trade mark/copyright litigation cases must be represented by an attorney-at-law authorised to provide legal services in Slovakia unless the party is a natural person with a second degree university education in law or a natural person acting on behalf of a legal entity has such education. If a party (a plaintiff or a defendant) fails to obtain the required representation within a deadline stipulated by a court, the court will disregard such parties’ actions.

An action on the merits must comprise raised claims, factual statements and it must refer to evidence establishing such factual statements and necessary evidence must be presented.

A defendant may file an action for revocation or invalidation of a plaintiff’s trade mark at any time. After a court issues a final decision on the merits, a defendant may file a request to reopen proceedings if a plaintiff’s trade mark is revoked with ex tunc effects, ie, as if the trade mark has never been registered.

An alleged infringer can start declaratory judgment proceedings. If a trade mark proprietor files a lawsuit at a later date, a court considering a later infringement case can either wait for a decision in an earlier declaratory case (this would be more common and expected approach) or it can consider such preliminary question on its own without issuing a binding decision on such preliminary question.

A potential defendant can file a protective brief, however, the question of whether a first instance court must consider such brief is still open to interpretation by the Supreme Court and the Constitutional Court. A current practice of Slovak courts is to take protective briefs into consideration.

A potential defendant of copyright infringement can file an action for determination of the right if there is an important legal interest involved.

Slovak law does not distinguish between small and large claims in relation to trade marks and copyrights.

Courts are not bound by the IPO of Slovakia’s decisions. However, when courts consider claims and evidence similar to those considered by the IPO, they tend to reach similar conclusions.

The IPO does not register copyrights and does not make official decisions on infringement actions.

The Customs Office is authorised to seize goods suspected of infringing on rights from a trade mark/copyrights. The Customs Office shall destroy seized goods if parties agree therewith or if a court rules that the goods infringe on rights from a trade mark/copyrights.

General procedural rules apply in trade mark/copyright proceedings.

Trade mark/copyright cases are decided by legal judges. The Slovak legal system recognises neither technical judges nor a jury.

Judges are assigned to cases in accordance with a work schedule of a given court. Parties can object to a judge presiding over a case on impartiality grounds.

A transfer of a trade mark is effective in relation to third parties upon its recording in the Trade Marks Register.

A trade mark owner is entitled to monetary remedies described in 11.2 Monetary Remedies, even if an infringement occurs in the period after a trade mark application has been published and before it is registered. However, the trade mark owner can raise the above monetary remedies claims only after the trade mark is registered.

A trade mark owner is entitled to request information regarding the origin and distribution networks of goods or services or circumstances of launching goods or services onto a market from an infringer.

Moreover, during a civil trial a party can ask a court to order to anybody holding relevant evidence to present such evidence to the court.

An author can request information on the origin of the reproduction or imitation of the work, on the manner and extent of its use and on infringing services, as well as information on the making available to the public of the work in an infringing manner. A Collective management organisation (“CMO”) is entitled to inspect the accounts or other documentation of the trader and the trader is obliged to provide the CMO with the information necessary to ensure payment of the royalties. These rights are governed by the Copyright Act and are applicable in both pre-trial and trial proceedings.

Parties can ask an expert to provide an expert opinion for them. Such “private” expert opinion can be presented to a court. Alternatively, parties can ask the court to appoint an expert who will provide an expert opinion. Both types of expert opinions are treated equally by courts.

The questions relating to considering trade mark infringement such as a likelihood of confusion, reputation of a trade mark, its distinctive character, etc, are considered exclusively by a court.

The questions relating to considering copyright infringement are considered exclusively by a court.

An expert is usually used for calculating the damage caused by the infringement of a trade mark/copyright rights.

Costs of litigation depends on specific circumstances of a given case, eg, whether damages are claimed, whether an expert opinion must be presented, etc. Assuming that only a trade mark infringement is claimed then a court fee would amount to EUR 331.50 (EUR 470 as of 1.4.2024) and the statutory attorney’s fee (the amount which can be reimbursed in the proceedings if a party prevails) would amount to EUR 61.41 for each non-superfluous legal action. The bare minimum legal actions would be drafting and submitting an action on the merits and attending an oral hearing.

The court fee if the subject-matter of the proceedings cannot be valued in money is EUR 99.50 (EUR 140 as of 1.4.2024) or 6%, at least EUR 16.50, maximum EUR 16 596.50 (6%, at least EUR 25, maximum EUR 25 000 as of 1.4.2024, of the price of the subject-matter of the proceedings or of the value of the subject-matter of the dispute.

It must be noted that attorneys may charge hourly rates, which are usually well above the statutory attorney fee. Moreover, proceedings tend to be more complex with parties exchanging multiple briefs in a first instance proceedings, attending several oral hearing, appealing a first instance decision and exchanging several briefs in appellate proceedings, etc.

A trade mark infringement can constitute a criminal offense pursuant to the Section 281 of the Slovak Criminal Code.

A copyright infringement can constitute a criminal offense pursuant to the Section 283 of the Slovak Criminal Code.

A priority of an earlier right (both a registered right and an unregistered right) can be invoked in defence against a trade mark infringement claim.

A trade mark proprietor cannot prohibit a natural person to use the defendant’s own first name, surname and address.

Furthermore, a defendant cannot be prohibited to use marks without a distinctive character (descriptive), marks relating to a type, quality, amount, purpose, value, geographical origin, time of goods production or service provision or other property of goods or services.

Moreover, a defendant cannot be prohibited to use a trade mark for purposes of identifying or launching goods or services onto a market as goods or services of the trade mark proprietor, especially if the use of the trade mark is necessary for identifying a purpose of goods or services, in particular when concerned goods or services amount to accessories or spare parts. It must be also noted that establishing an earlier local use of an unregistered mark, which is still used to the same local extent, is also a viable defence.

If an infringement action was filed at least five years after a trade mark’s registration then a defendant is entitled to request that the trade mark owner presents evidence establishing an actual use of the trade mark in the period of five years preceding the action’s filing for goods and services which are covered by the trade mark and on which the action is based or, alternatively, evidence establishing authorised reasons for its non-use. In this context, the trade mark proprietor is entitled to request a prohibition of a mark’s use only to the extent in which the trade mark owner’s are not subject to a revocation of a trade mark due to its non-use.

General defences pursuant to the Civil Procedural Code may also apply.

The work may be used without the author's consent in the following cases:

• caricature, parody, pastiche;
• recording of a broadcast;
• making a reproduction of a work for private use;
• reprography;
• use of the work for informational purposes, placed in a public place,  teaching purposes and research, in school performances, the needs of disabled persons, the needs of persons with reading disabilities, in religious and official ceremonies and holidays, by means of terminal equipment, archiving purposes, by public display, an orphan work, a commercially unavailable work, in the extraction of data for research purposes, data mining, an architectural work, official purposes, in the repair and demonstration of equipment;
• the temporary making of a reproduction of a work,
• incidental use of the work,
• promotion of an exhibition and auction of an artwork.

Each fair use exception has its own legal terms of use by Copyright Act.

Copyright is not infringed by a natural person who, without the author's consent, uses the work by making a reproduction for his private use for a purpose which is not directly or indirectly commercial.

Exception to trade mark infringement for activities carried out by intermediaries may include online platforms, service providers, or other entities that facilitate or host third-party activities.

Copyright is not infringed by a person who, without the author's consent, makes a temporary reproduction of a published work as an integral and essential part of a technological process, which is incidental or transitory, for the purpose of facilitating the legitimate use of the work or the transmission of the work in an electronic communications network between third parties and an intermediary.

Making of a reproduction may not have independent economic significance.

The exhaustion of trademark rights, also known as the first sale doctrine means that once a trademarked product is placed on the market with the trademark owner's consent, the trademark rights are considered exhausted.

Slovak law follows the copyright exhaustion doctrine, also known as the first sale doctrine which applies in the field of physical goods and software.

Slovak law grants qualified libraries and archives special rights to reproduce and distribute copyrighted works.

A trade mark owner/copyright owner can file an application for a preliminary injunction wherein it can be ordered to a defendant to refrain from activities which infringe on a trade mark/copyright or threaten such infringement. Alternatively, the defendant can be ordered to pay a security covering damages to a court instead of being ordered to refrain from above-mentioned activities.

In order to be granted a preliminary injunction, a plaintiff must establish an actual infringement of a trade mark/copyright or a threat thereof by a defendant and the prerequisite of urgency (filing an application for a preliminary injunction within few months of becoming aware of the infringement) must be satisfied.

A defendant can oppose a preliminary injunction on grounds that evidence presented by a plaintiff does not establish an infringement or a threat of infringement. Moreover, a defendant can file for the preliminary injunction to be dismissed due to new factual circumstances which were not present at the time of a preliminary injunction decision.

If damage is caused to a trade mark owner/copyright owner by an infringement on the owner’s rights from a trade mark/copyright then owner is entitled to claim damages including lost profits. If immaterial harm was caused, then the proprietor is also entitled to an appropriate satisfaction which may amount to a cash payment. The proprietor is further entitled to claim recovery of an unjust enrichment.

There are no enhanced damages for the use of counterfeit marks, however, such use may be considered to be a criminal offense punishable by imprisonment or fines paid to the state.

A losing party is usually ordered to reimburse a prevailing party’s costs of proceedings, which are enumerated by a court pursuant to evidence provided by a prevailing party. The ratio of costs reimbursement is commonly calculated as a difference between the successful claims of parties. For example, if the prevailing party is successful in 80% of its claims and the losing party is successful in 20% of its claims then a court can be expected to order the losing party to pay 60% (80 – 20 = 60) of prevailing party’s costs of proceedings.

Costs of proceedings usually comprise court fees, attorney fees and expert fees. Attorney fees are calculated as a percentage of a total value of a dispute and they are awarded for each non-superfluous legal action undertaken in the proceedings. Therefore, attorney fees reimbursed in the proceedings may not reflect attorney fees paid by a party, which are subject to a deal between a party and its attorney.

In general, Slovak legal procedures require that a defendant is given an opportunity to participate in proceedings.

However, there is an exemption. If an application for a preliminary injunction is dismissed by a first instance court, the court will serve neither the application nor its decision on a defendant.

A trade mark/copyright owner can file an application with the Customs Office to take action against infringing goods. If the Customs Office grants such application, the trade mark owner will be referred to as the “decision holder” and the Customs Office will start seizing goods suspected infringing goods. The Customs Office is also authorised to seize suspected infringing goods on its own, ie, without the above-mentioned application being filed therewith and granted by the Customs Office.

After seizing goods, the Customs Office will issue a decision and will send a written or, if practical, electronic notice to the decision holder of the seizure of goods. The decision holder will be given ten business days, or three in the case of highly perishable goods, to oppose the destruction of goods or to state whether seized goods infringe on the trade mark and whether they should be destroyed. A failure to respond is understood as a consent to the destruction of goods.

In the meantime, the Customs Office will announce its decision on seizing goods to the “holder of goods”, ie, a person offering, selling, owning, manufacturing, storing, transporting or keeping the goods in question. The holder of goods has a three-day deadline to appeal the decision.

If prerequisites for the destruction of goods are not met (eg, a holder of goods will oppose the destruction in a timely manner) then the decision holder – the trade mark/copyright owner – is ordered to file an infringement action with a court. Failure to do so will result in termination of the goods’ impoundment.

Slovak courts are under a statutory obligation to lead parties to settle their dispute. While a court cannot force parties to settle a dispute, there are statutory incentives for parties to reach a settlement such as a partial reimbursement of court fees.

An out of court settlement can be reached at any time and a court settlement can be reached at any time during proceedings. An out of court settlement can be presented to the court for its approval in order for it to become an enforceable court decision. In such case, the court will not approve a settlement if it is contrary to law.

Alternative dispute resolution (ADR) proceedings are not compulsory. However, they are becoming a common way to resolve domain disputes between domain holders and third parties who, as plaintiffs, initiate these proceedings in order to protect their intellectual property rights and typically trade mark rights. The ADR Centre decides on such domain disputes. The action can be based on trade marks and unfair competition or good reputation could be included. The ADR proceeding is one instance proceeding and the ADR decision can be contested before a civil Court only for very limited reasons. However, it has to be taken into account that the court’s proceedings would start as of beginning.

An infringement case can be stayed pending resolution of other proceedings which deal with an issue that amounts to a prejudicial question of an infringement case. However, this is at a discretion of the court as it is not obliged to stay proceedings.

See 4.13 Remedies Against the Trade Mark Office and 8.7 Lawsuit Procedure.

A party can file its appeal against a first instance decision within 30 days after being served with the first instance decision.

It is not uncommon for an appellate court to issue its decision within one to three years.

There are no specific provisions for trade mark/copyright litigations; standard provisions for appellate proceedings apply.

Both legal and factual reviews can be conducted in appellate proceedings, however, they are subject to certain statutory restrictions depending on specific circumstances of a case and of first instance proceedings.

See 3.4 Copyright Rights.

The general legal regulation of unfair competition applies to trade marks and copyrights. It must be noted that claims from unfair competition can coexist with and in some cases supplement trade mark and copyright claims.

Some lower Slovak courts might seem to be rather protective of local businesses when considering damages caused to foreign entities by an infringement on rights of foreign proprietors of trade marks/copyrights.

The District Court Banska Bystrica has confirmed its conclusions that using Google AdWords amounts to an infringement on rights from a trade mark in its recent cases.

There are no special rules in Slovak law requiring a trade mark/copyright registration for a company to be comfortable manufacturing products.