Patent protection in the Republic of Slovenia is governed by the following sources of law:

1. Statutory law:

• Industrial Property Act;
• Employee Inventions Act;
• Act on the Ratification of Amendments to the Patent Cooperation Treaty;
• Act on the Ratification of Amendments to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure;
• Act on the Ratification of the Strasbourg Agreement on the International Classification of Patents;
• Act on the Ratification of the Patent Law Treaty; 
• Act Ratifying the Convention on the Grant of European Patents; and
• Act on the Ratification of the Amendments to the Paris Convention for the Protection of Industrial Property.

2. Regulations:

• Regulation on Fees Charged by the Intellectual Property Office of the Republic of Slovenia;
• Regulation on the implementation of Council Regulations (EC) concerning the introduction of supplementary protection certificates for medicinal products and plant protection products;
• Regulation on Registers of Industrial Property Applications and Rights and Certificates of Priority;
• Regulation on the Legal Protection of Biotechnological Inventions;
• Regulation on the Extension of European Patents to the Republic of Slovenia;
• Rules on the Content of a Patent Application and the Procedure for Divisional Patents; and
• Rules on Rewards for Inventions Arising from Employment.

Patentable Types of Inventions

Generally, any invention in any field of technology can be patented as long as it meets the requirements of novelty, inventive step and industrial applicability.

Exclusions: Discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, computer programs, presentations of information, an invention of which the commercial exploitation would be contrary to public order or morality (exploitation shall not be deemed to be contrary merely because it is prohibited by law or other regulation), an invention relating to a method for treatment of the human or animal body by surgery or therapy, or to a diagnostic method practised on the human or animal body (this shall not apply to inventions relating to products, in particular substances or compounds, for use in any of these methods).

Utility Models or Similar Rights

Under Slovenian industrial property law, utility models are not recognised as a form of protection. The closest equivalent is a short-term patent with a maximum term of ten years; however, no substantive examination is carried out; ie, novelty, inventive step and industrial applicability are not assessed prior to grant.

A short-term patent cannot be granted for inventions relating to processes, plant varieties and animal breeds.

Procedure for Obtaining a Patent

The patent application is filed with the Slovenian Intellectual Property Office (SIPO), which is responsible for examining and granting patents. The applicant must file the patent application together with: (i) description of the invention; (ii) patent claims; (iii) abstract; (iv) drawings; (v) proof of payment of the official application fees; and (vi) Power of Attorney, where applicable.

SIPO examines the application for any deficiencies based on the Rules on the Content of a Patent Application and the Procedure for Divisional Patents and examines whether the invention is patentable in line with the provisions of the Industrial Property Act. SIPO does not perform a substantive examination to check whether the invention is novel, has an inventive step and is industrially applicable. If certain deficiencies are found, the examiner issues an invitation to remedy those deficiencies. The applicant then has three months from the receipt of the invitation to remedy the deficiencies; otherwise, the application is deemed to be withdrawn. In case the official fee is not paid at the time of the application filing, this deficiency can be remedied within three months from the receipt of the invitation from SIPO.

After this preliminary examination, SIPO issues a decision on the publication of the patent. The patent is published in the Official Gazette of SIPO 18 months after the patent application date, and SIPO issues a decision to grant the patent.

The Cost of a Patent Application

The application fee before SIPO, which includes maintenance of the patent for the first three years, is EUR110.

Patent Attorney Representation

Patent attorney representation before SIPO is required only for foreign legal and natural persons that do not have residence or a real and effective industrial or commercial establishment in the Republic of Slovenia. Such applicant can only be represented by a patent attorney who is entered in the register of representatives at SIPO and shall appoint the patent attorney by means of a Power of Attorney. Such Power of Attorney is then part of the patent application.

Rights Stemming From a Granted Patent

The owner of the patent has the right to prevent third parties from:

• making, offering, placing on the market or using a product which is the subject matter of the patent, or importing or stocking such product for these purposes;
• using a process which is the subject matter of the patent or, where a third party knows or should have known that the use of the process without the consent of the patent holder is prohibited, offering the process for use; or
• offering, placing on the market or using, or importing or stocking for these purposes, a product obtained directly by a process which is the subject matter of the patent.

Since SIPO does not perform a substantive examination of the patent, the patent is valid but “weaker” since its validity can be challenged more easily in invalidation proceedings.

Standard Term of Patent Protection

Since SIPO does not perform a substantive examination, the patent owner must by the end of the ninth year of the patent’s validity submit a document stating that the invention meets the requirements of novelty, inventive step and industrial applicability. After that, SIPO may issue a declaratory decision that the invention meets all the requirements. In such cases, the patent’s validity is 20 years from the application date.

If no such declaratory decision is requested or issued, the patent’s validity is ten years from the application date.

In cases where the patent owner applied for a short-term patent, then the patent’s validity is ten years from the application date.

Renewal and Maintenance Fees

Patents are maintained on an annual basis through the payment of prescribed renewal fees. If a renewal fee is not paid by its due date, the patent owner may still validly pay the fee within a six-month grace period, subject to a 50% surcharge.

If the fee is also not paid within this grace period, the patent owner may, within one month from the expiry of that period, file a request for further processing and pay the prescribed fee.

Should this deadline likewise not be observed, the patent owner may request restitutio in integrum, provided that the request is filed within three months from the date on which the cause of non-compliance ceased (subjective period) and, in any event, no later than one year from the missed deadline (objective period).

Supplementary Protection Certificates and Term Extensions

Supplementary Protection Certificates (SPCs) and paediatric extensions are available under the law of the Republic of Slovenia. SPCs are granted for medicinal products and plant protection products. Paediatric extensions are available only for medicinal products.

Applicant

The applicant must be the inventor or the inventor’s employer.

Employee Inventions

If the applicant is the employer, rules on employee inventions apply. The inventor and employer shall follow a procedure described in the Employee Inventions Act (notification, taking over of the invention, patent application) and shall conclude an agreement that awards the inventor an appropriate remuneration.

Specific rules regarding remuneration apply for inventions made at public higher education institutions or other public research institutions.

Patent Assignments and Licences

To assign a patent, one of the parties (assignor or assignee) shall: (i) file a request for patent assignment; (ii) submit the agreement on the transfer of the patent with a translation in the Slovenian language when the request is filed by the assignee; (iii) pay the official fee; and (iv) where applicable, submit a Power of Attorney.

The patent assignment is then recorded in the patent register. The assignment is valid upon conclusion of the assignment agreement; however, third parties may still rely on the register and consider the registered holder as the rightful owner. Likewise, the assignee may face limitations in enforcing the patent against third parties.

Licence agreements must be concluded in writing and cannot be concluded for a term exceeding the duration of the statutory protection of the patent rights. There is no requirement for a licence to be recorded in the patent register, nor is there any statutory provision stipulating that recordal is necessary for the licence to be effective against third parties. However, third parties will generally only become aware of existing licences if they are recorded in the register; therefore, recordal is recommended.

Direct and Indirect Patent Infringement

Direct infringement occurs where a third party, without the consent of the patent owner, performs any of the following acts:

• manufacturing, offering, placing on the market, using, importing or stocking a product that is the subject of the patent;
• using a patented process, or offering the process for use where the third party knows or should have known that such use is prohibited; or
• offering, placing on the market, using, importing or stocking a product obtained directly by a patented process.

Indirect infringement occurs where a third party:

• supplies or offers to supply persons not entitled to exploit the invention with means relating to an essential element of the invention;
• knowing, or having reason to know, that such means are suitable and intended for putting the invention into effect.

This does not apply where the means are staple commercial products, unless the supplier induces the recipient to commit acts of direct infringement.

The Scope of Patent Protection

The scope of protection is defined by the patent claims, interpreted in light of the description and drawings.

Available Defences

• Private and non-commercial use: Acts performed privately and for non-commercial purposes do not infringe the patent.
• Experimental use: Research and experimental acts relating to the subject matter of the patent are permitted, irrespective of their purpose.
• Pharmacy exception: Preparation of medicinal products in pharmacies based on a medical prescription is permitted.
• Use in international transport: Use of the patented invention on foreign vessels, aircraft or other means of transport that temporarily or accidentally enter Slovenia is permitted, provided that the use is limited to the needs of such transport.
• Prior use right: A person who, in good faith, used the invention or made serious preparations for such use before the filing or priority date may continue such use.
• Exhaustion of rights: Patent rightsare exhausted once the patented product has been placed on the market by the patent owner or with their consent.
• Compulsory licence: A court may grant a compulsory licence without the patent owner’s consent where required in the public interest or in cases of abuse of patent rights (eg, restriction of competition).

Courts

The District Court of Ljubljana has exclusive jurisdiction over patent infringement and nullity proceedings, except for disputes relating to employee inventions, which fall within the jurisdiction of the labour courts. Decisions of SIPO (in particular, decisions on the grant, refusal or procedural handling of patent applications) are subject to judicial review before the Administrative Court of the Republic of Slovenia.

If an action for a declaration of nullity of a European patent, which is valid in Slovenia on the basis of an international treaty and against which an opposition has been filed before the European Patent Office (EPO), is brought during the pendency of opposition proceedings before the EPO, the court shall stay the proceedings until a final decision is issued by the EPO in the opposition proceedings.

Interim Injunctions

Interim injunction is available for patent infringements. Alongside other statutory requirements that are the same for infringements of any of the industrial property rights, the following two conditions must also be fulfilled: (i) the holder of the right must submit a declaratory decision; and (ii) the holder of the right must apply for the issuing of an interim injunction within three months after they learn of the alleged infringement.

Available Remedies for Infringements

For patent infringement, the patent holder may seek an interim injunction, bring an action for patent invalidation, initiate infringement proceedings and claim damages.

Attorneys’ Fees and Costs

Costs of the proceedings and attorneys’ fees are recoverable depending on the success in the proceedings; however, they are not recoverable in full, but only to the extent recognised by the court and determined in accordance with the Attorneys’ Tariff.

Trade mark protection in the Republic of Slovenia is governed by the following sources of law:

1. Statutory law:

• Industrial Property Act (Official Gazette of the Republic of Slovenia [Uradni list RS], No. 51/06; ZIL-1)

2. Regulations:

• Rules on trade marks (Official Gazette of the Republic of Slovenia [Uradni list RS], No. 93/20 and 9/24)
• Rules on the procedure relating to requests concerning the international registration of a trade mark (Official Gazette of the Republic of Slovenia [Uradni list RS], No. 124/06)
• Regulation on Fees Charged by the Intellectual Property Office of the Republic of Slovenia (Official Gazette of the Republic of Slovenia [Uradni list RS], No. 127/23)

3. Case law

Types of Signs That are Protected

Words, numbers, logos, colours, shapes and sounds.

Unregistered or Common Law Trade Marks

Unregistered trade marks may constitute grounds for opposition to the registration of a trade mark, provided that the unregistered sign was used in the course of trade prior to the filing date of the trade mark application or the claimed priority date, if any.

The Essential Elements of Trade Mark Protection

The essential elements are:

• distinctiveness;
• absence of absolute grounds for refusal;
• absence of conflicting earlier rights;
• registration as the basis of protection; and
• use requirement (five years since the trade mark registration).

Acquired Distinctiveness or Secondary Meaning

A sign shall not be refused registration on grounds of lack of distinctiveness if, before the filing date, it has acquired distinctive character through use. This may be established, eg, by evidence of the duration and intensity of use, advertising efforts, and the market share of the goods or services under the mark.

Famous or Well-Known Marks

Such trade marks are protected if they have a reputation in the Republic of Slovenia or for EU trade marks if they have reputation in the EU.

Trade Mark Registration

Trade mark registration is required to obtain full and enforceable trade mark rights, as exclusive rights arise upon registration of the trade mark. For unregistered signs, protection is limited.

Procedure, Timelines and Costs of Registration

Trade mark application is filed with SIPO, which is responsible for application examination and registration. The applicant must file a trade mark application together with:

• list of goods/services;
• where the mark is not a word mark, a representation of the mark must be filed, whether in visual form or, where appropriate (eg, for sound marks), in another suitable format;
• proof of payment of official application fees;
• Power of Attorney, where applicable.

Multi-class applications are allowed.

The trade mark application is first examined by the Office and, if it meets the formal requirements, is published. Third parties then have a period of three months to file an opposition against the registration. If no opposition is filed, or if the opposition is unsuccessful or only partially successful, SIPO notifies the applicant that the trade mark will proceed to registration upon payment of the official registration fee. Once the fee is paid, the trade mark is registered.

In the absence of opposition, the trade mark registration process typically takes approximately four months.

The application fee for a trade mark covering up to three classes is EUR100, with an additional EUR20 payable for each additional class. For a collective trade mark, the application fee is EUR250, with an additional EUR50 for each additional class. The registration fee, which includes maintenance of the trade mark for the first ten years, is EUR150, with an additional EUR50 payable for each additional class.

Term of Trade Mark Protection and Renewal Requirements

Trade marks are protected for a period of ten years from the filing date, provided that they are registered. They may thereafter be renewed indefinitely for successive ten-year periods. To renew the trade mark, the owner shall pay a prescribed official fee.

Genuine Use and Consequences of Non-Use

Genuine use means actual use of the trade mark in the course of trade, and not merely symbolic use. Relevant criteria include whether the goods have been sold or the services offered under the mark, as well as advertising and marketing activities connected to genuine commercial activity. Use must not be purely internal or insignificant in commercial terms. If the trade mark is not put to genuine use within five years from registration, it becomes vulnerable to revocation. Furthermore, non-use may be invoked as a defence in infringement proceedings, as well as in opposition and invalidity proceedings.

Exclusive Rights

Upon registration, the trade mark owner has the exclusive right to use the mark in the course of trade and to prevent third parties from:

• using a sign identical to the trade mark in relation to goods or services identical to those covered by the trade mark;
• using a sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services concerned, there exists a likelihood of confusion on the part of the public, including the likelihood of association; and
• using a sign identical to or similar to the trade mark, irrespective of whether the goods or services are identical, similar or dissimilar to those covered by the trade mark, where the trade mark has a reputation in the Republic of Slovenia and where such use, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the trade mark.

Limitations/Defences

The trade mark owner cannot prohibit all third-party uses. Typical limitations and defences include:

• use of signs or indications which are non-distinctive, or which relate to the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or provision of services, or other characteristics of the goods or services;
• use of the trade mark for the purpose of identifying or referring to goods or services as those of the proprietor, in particular where it is necessary to indicate the intended purpose of a product or service (eg, accessories or spare parts);
• use of a sign identical to or similar to the trade mark, where the third party began using that sign in good faith prior to the filing date or priority date;
• the own-name defence (use of one’s own name or address in accordance with honest practices);
• the non-use defence (where the proprietor is required to prove genuine use); and
• the earlier rights defence.

Trade Mark Infringement, Dilution or Passing Off

Trade mark infringement arises where a third party, without the consent of the trade mark proprietor, uses in the course of trade a sign that is (i) identical to the trade mark for identical goods or services, or (ii) identical or similar to the trade mark for identical or similar goods or services, where such use gives rise to a likelihood of confusion on the part of the relevant public, including the likelihood of association.

Trade mark dilution is constituted where a third party uses, in the course of trade, a sign identical or similar to a trade mark that has a reputation, such that the relevant public establishes a link between the signs, and the use, without due cause, takes unfair advantage of or is detrimental to the distinctive character or reputation of the earlier trade mark, irrespective of any likelihood of confusion.

Passing off, as a separate legal doctrine, is not recognised under Slovenian law; however, equivalent protection is afforded under the rules on unfair competition. Such conduct is constituted where a third party, in the course of trade, uses signs that are liable to create confusion as to the commercial origin of goods or services, or otherwise misappropriate another undertaking’s goodwill or reputation.

Courts

In Slovenia, trade mark matters are divided between administrative authorities and courts. SIPO is competent for the opposition, revocation, and invalidity proceedings. Decisions of SIPO may be challenged before the Administrative Court of the Republic of Slovenia. The District Court of Ljubljana has jurisdiction over trade mark infringement and related civil claims (eg, injunctions and damages), while issues of validity are, as a rule, addressed in administrative proceedings before SIPO, subject to judicial review.

Civil and Criminal Remedies

For trade mark infringement, the trade mark holder may seek an interim injunction, bring an action for trade mark invalidation, initiate infringement proceedings and claim damages.

Customs measures are available, allowing the trade mark owners to request customs authorities to detain and destroy counterfeit goods.

Criminal remedies are provided under the Criminal Code, which penalises the unauthorised use of another’s trade mark in the course of trade. Sanctions include imprisonment of up to three years and confiscation of infringing goods and production tools.

Legal Framework of Copyright

Copyright in Slovenia is primarily governed by the Copyright and Related Rights Act (Zakon o avtorski in sorodnih pravicah – ZASP), as well as the Collective Management of Copyright and Related Rights Act (Zakon o kolektivnem upravljanju avtorske in sorodnih pravic– ZKUASP). International treaties include the Berne Convention for the Protection of Literary and Artistic Works, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (Rome Convention), the WIPO Copyright Treaty (WCT) and the Universal Copyright Convention (UCC), as well as numerous EU directives and regulations.

Copyrightable Works

The law requires that the copyrighted work falls within the fields of literature, science or art. Examples include spoken, written (including computer programs) and musical creations, as well as dramatic, choreographic and audiovisual works, photographic, visual and architectural works, cartography, and scientific, educational and technical presentations, as well as industrial designs or applied art. These works then have to meet the other requirements for a copyright as well. Ideas, principles, discoveries, official texts from the legislative, administrative and judicial fields, and folk literary and artistic creations are expressly excluded from protection.

The requirements for a copyrighted work are determined by law and are as follows:

• individuality (this does not mean absolute originality);
• intellectuality (the work reflects the human spirit and is an intangible asset);
• fixation (it must be expressed in a perceptible form);
• it is the result of human creative activity; and
• it falls within the fields of literature, science or art.

No registration is required for the protection of a work which meets these requirements. The assessment also does not depend on the quality or artistic value of the work.

Authorship and Co-Authorship

The author is a natural person who created the copyrighted work. This means that authorship always belongs to the (human) creator. A person whose name, pseudonym or sign is indicated on the work in the usual manner or upon its publication is deemed the author, unless proven otherwise. If a copyrighted work created through the collaboration of two or more persons constitutes an indivisible whole, the copyright in such work belongs jointly and indivisibly to all co-authors (ie, joint authorship).

Works Created in Employment and Contractual Relationships

When a work is produced following the employer’s instructions or while fulfilling the employee’s duties, the transfer of copyright to the employer occurs by law, unless otherwise agreed in a contract between the employee and the employer. It is deemed that the economic and other rights of the author are exclusively transferred to the employer for a period of ten years. After the expiry of this period, the employer may request an exclusive licence, but against fair payment. The assessment of whether a particular work was created within the scope of employment requires an analysis of both legal and factual circumstances, such as the time of creation, the employee’s job description, the use of the employer’s resources, etc.

There are no specific statutory provisions for contractors, and these matters are typically regulated by a contract. However, contracts that transfer economic copyright (as explained in 3.4 Scope of Rights and Moral Rights) must be in writing, and if this requirement is not met, any unclear or disputed terms are interpreted in favour of the author.

There are two types of rights which are granted to copyright owners, namely, moral and economic rights:

• Moral rights include the right of first publication, the right to be recognised as the author (right of attribution), the right to the integrity of the work, and the right of withdrawal (right of repentance). An author cannot waive or assign moral rights. However, these rights can be inherited, with the exception of the right of repentance.
• Examples of economic rights include the right of reproduction, the right of distribution, the right of rental, the right of public performance, the right of broadcasting, and the right of making a work available to the public. However, it can include any form of exploitation of the work that has economic value. Economic copyright protects the author’s financial interests by granting them the exclusive right to authorise or prohibit the use of their work and its copies.

Term of Protection

Copyright protection in Slovenia lasts for 70 years after the author’s death. However, the right of repentance only lasts until the author’s death. There are also specific rules concerning, among other things, joint authorship (70 years after the death of the last surviving co-author), anonymous or pseudonymous works, and collective works (70 years from lawful publication).

Termination Rights

The law also recognises some termination and reversion rights. The author may withdraw transferred economic rights for serious moral reasons (right of withdrawal), if they compensate the rights-holder. The author may also revoke transferred rights if the transferee does not exploit the work or exploits it insufficiently, thereby harming the author’s interests. However, the author first has to give an additional deadline, the rights-holder has two years to start using the work, and the author cannot be at fault for the non-use.

Several limitations and exceptions to copyright apply, mainly aligned with EU law. These include quotation, criticism, review, parody, pastiche and caricature, as well as certain uses for non-commercial purposes, teaching and research, and certain uses by libraries, archives, cultural institutions, etc. When assessing these limitations, the courts interpret them on a case-by-case basis, while also considering EU case law, especially since the Slovenian case law is fairly limited.

Copyright Infringement

Copyright infringement occurs when a copyrighted work is used without the author’s consent where such consent (transfer of a right or a licence) is required, eg, reproduction, distribution, rental, public performance, adaptation, etc.

Possible Infringement Remedies

For an infringement, both civil and criminal remedies are available. Copyright infringement may constitute a minor offence or even a criminal offence. The infringer may also be required to pay damages corresponding either to the actual loss suffered or to an amount equal to the agreed or customary royalty or fee for use of that kind. In cases of intentional or gross negligence infringement, it is even possible to claim a royalty or fee increased by up to 200%, even if no damages occurred. The court may also award monetary compensation for mental anguish caused by the infringement of moral rights. The court may further issue interim measures to secure non-monetary claims and an order for the preservation of evidence.

The claims that may be asserted by the rights-holder before the court are:

• that the infringement and future infringements be prohibited;
• that the infringing goods be recalled from commercial channels, with due regard to the interests of bona fide third parties;
• that the situation resulting from the infringement be remedied;
• that the infringing goods be permanently removed from commercial channels;
• that the infringing goods be destroyed;
• that the means of infringement, which are exclusively or predominantly intended for or used in the infringement and are owned by the infringer, be destroyed;
• that the infringing goods be given to the rights-holder against payment of the costs of production; and
• that the judgment be published.

The law does not set a clear rule on how much of a copyrighted work can be copied, but in practice, even copying a small part may be problematic if that part is considered substantial. In assessing such copying, courts may examine whether the use merely serves the purpose of reference, illustration or comparison. In such cases, it may qualify it as quotation (animus citandi) and fall within the quotation exception. However, where substantial parts of the copyrighted work are reproduced, the use will no longer be considered mere quotation. The assessment therefore focuses on whether the original work predominates or whether it is used only as an ancillary element.

Collective Management

A collective management organisation is a legal entity that has obtained authorisation from the competent authority and, on the basis of an authorisation from the rights-holders or the law, is authorised to collectively manage copyright or related rights on behalf and for the account of more than one rights-holder and for their common benefit, where this is its sole and main activity, and it is owned or controlled by its members and/or is non-profit.

ZKUASP specifies in which cases collective management is mandatory, namely:

• communication to the public of non-dramatic musical and literary works;
• resale of original works of art;
• reproduction of works for private or other personal use and photocopying;
• cable or other broadcasting retransmission of works;
• right to additional annual remuneration;
• communication to the public of audiovisual works and videograms;
• right to remuneration for teaching using electronic means; and
• author’s right to an appropriate share of revenue of a publisher of a media publication.

Determining Tariff Rates

The tariffs are determined by a collective agreement between the collective management organisation and a representative association of users, or, if this is not possible, by a decision of the Copyright Board (whose members are appointed by the Minister of the Economy). The tariff must reflect the economic value of the rights covered by the collective agreement, the nature and scope of the use of copyrighted works, and the economic value of the service provided by the collective management organisation.

Dispute Resolution

Disputes concerning the organisation and operation of collecting societies are generally decided by ordinary courts under commercial litigation rules, unless jurisdiction lies with administrative or specialised intellectual property courts. Collecting societies must provide effective internal dispute resolution mechanisms for members, rights-holders and partner organisations, particularly regarding mandates, membership conditions, royalty collection and distribution, and operating costs. They are required to respond to complaints in writing and give reasons if a complaint is rejected. Final decisions of a collecting society can be challenged before the competent intellectual property court. In addition, parties may opt for mediation before the competent authority in any copyright-related dispute, including those concerning royalties.

Legal Framework of Industrial Designs

In Slovenia, industrial designs are governed by the Industrial Property Act, as well as international treaties and EU law. Some of the more important treaties and regulations are the Paris Convention for the Protection of Industrial Property, the TRIPS Agreement, the Hague Agreement Concerning the International Deposit of Industrial Designs, the Locarno Agreement Establishing an International Classification for Industrial Designs, Directive 98/71/EC on the legal protection of designs and Council Regulation (EC) No 6/2002 on Community designs.

Protectable Subject Matter

A design may be registered for the appearance of a product, which is defined as the appearance of the whole or a part of a product resulting in particular from the features of lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

Requirements for Protection

The appearance of a product must be new (meaning that no identical design has been made available to the public before) and must have individual character (eg, the overall impression it produces on an informed user differs from the overall impression produced by any other public design). It can be either an industrial or a handicraft item.

Unregistered EU Designs

In Slovenia, only unregistered EU designs provide protection to designs without any prior registration. The design is protected on the disclosure of the design. This protection lasts for three years, is free and is valid throughout the whole EU territory. However, an unregistered EU design protects only against copying.

The application for registration of a design or designs must be accompanied by:

• the request for registration, usually submitted on the designated form;
• a photograph or a graphic representation of each design; and
• proof of payment of the application fee, which amounts to EUR80 for one design and EUR65 for each additional design.

A single application may relate to multiple designs, provided that they are classified in the same class of the Locarno Classification.

A design is protected for an initial period of five years and can be renewed for five-year periods to a maximum total duration of 25 years.

Infringements

Infringement of a design arises when a third party, without the consent of the rights-holder, uses the rights-holder’s design, which includes manufacturing, offering or placing on the market, importing, exporting, use or stocking. The protection extends to any design that does not produce a different overall impression on the informed user.

Possible Remedies

In case of an infringement of an earlier design, filing a petition with the court to declare a design invalid is possible. However, the primary course of action is filing a lawsuit and seeking damages. Other possible claims in such lawsuit include:

• an order prohibiting the infringement and any future infringements;
• an order requiring the recall of infringing goods from the channels of commerce, with due regard to the interests of bona fide third parties;
• an order removing the state of affairs created by the infringement;
• an order for the irrevocable removal of infringing goods from the channels of commerce;
• an order for the destruction of the infringing goods;
• an order for the destruction of the means used for the infringement that are exclusively or predominantly intended for, or used in, the infringement and are owned by the infringer;
• an order transferring the infringing goods to the plaintiff against payment of the production costs; and
• an order for publication of the judgment.

Furthermore, the preservation of evidence is available. Customs enforcement measures are also possible in accordance with Regulation (EU) No 608/2013. Slovenia also provides criminal law protection.

Design Protection Exclusions

Protection is denied when characteristics of a product must be reproduced in a precise form and dimensions to mechanically connect with another product. However, an exception exists for modular systems, where design protection may still be granted.

Features of an appearance of a product that are dictated exclusively by technical function cannot be registered as a design as well. When the courts assess this standard, they question whether a particular feature (eg, the shape of a product) is the only one that ensures the required functionality (ie, it cannot be replaced), and whether the technical characteristics leave any room for alternative design choices. Overall, when the features are dictated solely by technical necessity, design protection cannot be granted.

Protection of Partial Designs

Partial designs are protected as well, as a design may relate to the appearance of the whole product or only a part of it. This even includes components of a complex product (a product composed of multiple replaceable components that can be disassembled and reassembled), provided that the part is visible during normal use and satisfies novelty and individual character requirements.

Legal Framework

In Slovenia, trade secret protection is primarily governed by the Trade Secret Act, which defines trade secrets, sets out the rights of the holder, and provides remedies against unlawful acquisition, use or disclosure.

Additional protection arises under employment and contract law. The Employment Relationships Act requires employees to safeguard confidential information, while the Obligations Code allows parties to regulate confidentiality through contractual provisions, such as non-disclosure clauses. Trade secrets may also be protected under competition and criminal law, particularly in cases of unfair competition or serious misuse.

Protectable Information

Trade secrets include undisclosed know-how, experience and business information that provide a competitive advantage. This may include technical solutions, business strategies, customer data and financial information. To qualify for protection, the information must not be generally known or readily accessible within the relevant industry.

Elements Required for Protection

Information is protected as a trade secret if the following conditions are met:

• Secrecy: It is not generally known or easily accessible.
• Commercial value: It derives value from being secret.
• Reasonable steps: The holder has taken measures to keep it confidential.

A presumption may apply if the holder designates the information as a trade secret in writing and informs relevant persons, but the substantive requirements must still be met.

Limitations

Trade secret protection does not extend to information that is public by law or relates to unlawful conduct or breaches of good business practices.

Reasonable Measures to Maintain Secrecy

Taking reasonable steps to preserve confidentiality is a key condition for trade secret protection. Although the legislation does not prescribe specific measures, it requires an active approach by the holder to safeguard sensitive information.

In practice, this typically includes:

• adopting internal policies that define and regulate trade secrets;
• restricting access to confidential information on a need-to-know basis;
• using non-disclosure agreements (NDAs) with employees and third parties; and
• including confidentiality clauses in employment and commercial contracts.

These measures demonstrate that the holder treats the information as confidential and seeks to maintain its secrecy.

Disclosure to Employees and Third Parties

Disclosure does not automatically result in a loss of protection. Trade secrets may be shared with employees or external partners, provided that such disclosure is limited and subject to confidentiality obligations, eg, through NDAs or contractual clauses.

However, if information is disclosed without appropriate safeguards and becomes generally accessible, it may lose its status as a trade secret. In such cases, legal protection is no longer available.

Misappropriation and Unlawful Acquisition

Misappropriation of trade secrets covers both unlawful acquisition and unlawful use or disclosure.

Unlawful acquisition occurs where a trade secret is obtained through improper means, such as unauthorised access, copying, or appropriation of documents or electronic files, or through conduct contrary to honest commercial practices. It also includes situations where a person acquires a trade secret from a third party while knowing, or having reason to know, that it was obtained unlawfully.

Unlawful use or disclosure arises where a trade secret is used or revealed without authorisation. This includes cases where a person:

• breaches a confidentiality agreement or another duty of secrecy;
• exceeds agreed limitations on the use of the information; or
• uses a trade secret knowing, or having reason to know, that it was unlawfully obtained.

Misuse may also extend to commercial activities, such as producing, offering, placing on the market, importing, exporting or storing goods developed on the basis of unlawfully obtained trade secrets.

Disputes Involving Employees, Partners and Competitors

The treatment of disputes depends on the legal relationship between the parties:

• Employees: Disputes typically involve breaches of statutory and contractual duties of confidentiality. Consequences may include damages, termination of employment, or other employment-related sanctions.
• Joint ventures and business partners: These cases are primarily governed by contractual arrangements, particularly provisions on confidentiality and permitted use of shared information. Breaches may give rise to contractual liability alongside trade secret claims.
• Competitors: Disputes are often assessed in the context of unfair competition. The key issue is whether the competitor acquired or used the trade secret unlawfully, or knew (or should have known) of its unlawful origin.

Duration of Protection

Trade secret protection under Slovenian law is not limited in time. Protection lasts for as long as the information satisfies the legal requirements, namely that it remains secret, retains commercial value and is protected by reasonable confidentiality measures.

In practice, this means protection can potentially last indefinitely, provided that secrecy is preserved.

Loss of Protection and Disclosure

The effect of disclosure depends on the circumstances in which it occurs:

• Authorised disclosure: Sharing a trade secret with employees or third parties does not, in itself, result in loss of protection, provided that the disclosure is limited and subject to confidentiality obligations.
• Accidental disclosure: Unintentional disclosure may jeopardise protection if the information becomes generally known or easily accessible. In such cases, the trade secret may lose its protected status.
• Unprotected disclosure: If information is disclosed without appropriate safeguards and enters the public domain, it will no longer qualify as a trade secret.

Civil Remedies

There is a range of civil remedies to protect trade secrets. The holder may seek injunctions to stop ongoing or threatened infringements, including the prohibition of use or disclosure of the trade secret.

Courts may also order measures targeting infringing goods, such as:

• prohibition of production, marketing or use;
• recall from the market; and/or
• removal of infringing features or destruction of goods.

In addition, the court may order the destruction or surrender of documents and materials containing the trade secret, as well as publication of the judgment.

Damages are available under general principles of contract and tort law. Where the loss cannot be precisely quantified, compensation may be assessed based on a hypothetical licence fee. In cases of intentional infringement or gross negligence, the court may award enhanced damages of up to twice that amount.

Courts may also grant preliminary injunctions, including the seizure of goods or temporary bans on use or disclosure, where there is a risk of irreparable harm or difficulty in enforcing claims.

Criminal Sanctions

Serious violations may also give rise to criminal liability. The unlawful acquisition or disclosure of a trade secret is a criminal offence under Slovenian law, punishable by imprisonment in more severe cases.

Confidentiality in Litigation

Slovenian procedure includes safeguards to preserve confidentiality during litigation. A claimant is not required to fully disclose the trade secret at the outset, provided that its existence and infringement are plausibly demonstrated.

Courts may further restrict access to confidential information and prohibit its use or disclosure by parties, their representatives, and other participants in the proceedings. These obligations may continue even after the proceedings have ended, unless the information loses its trade secret status.

Concept of Know-How

Slovenian law does not provide an explicit statutory definition of “know-how”. In legal theory, it is understood as a body of practical knowledge, experience, technical processes and information that has economic value and provides a competitive advantage. Such knowledge is often confidential and not publicly available.

Know-how overlaps with the concept of trade secrets but is broader. A trade secret is a legally defined category that must meet specific requirements (secrecy, commercial value and reasonable protection measures), whereas know-how may also include information that does not fulfil all these conditions. Confidential information is an even wider concept, covering any information parties wish to keep private and protect.

Legal Protection

Know-how is not recognised as an independent property right. Its protection is therefore indirect and depends on the circumstances:

• as a trade secret, if statutory conditions are met;
• through contractual arrangements, such as non-disclosure agreements or non-compete clauses;
• under rules on unfair competition; or
• by a patent, if it meets patentability criteria.

Types of Protectable Know-How

Know-how covers a broad range of technical, commercial and organisational information that provides a competitive advantage. In practice, this typically includes:

• technical processes and manufacturing methods;
• algorithms, software solutions and research results;
• customer lists and supplier data; and
• pricing strategies and business models.

The common feature is that such information reflects practical knowledge and experience developed within a business.

Requirements for Protection

Know-how is not automatically protected as such under Slovenian law. It receives legal protection primarily when it qualifies as a trade secret.

In this context, novelty is not required. Unlike patent protection, know-how does not need to be new; however, it must remain confidential in order to benefit from legal protection.

Ownership of Employee Know-How

As a rule, intellectual creations initially belong to the employee as creator. However, where they are developed in the course of employment, the employer acquires the right to use and control them for business purposes. This is reflected in specific regimes; eg, under ZASP, material copyright in employee-created works is automatically transferred to the employer for ten years (with no time limit for computer programs), while inventions may be taken over by the employer under statutory conditions. For know-how, there is no explicit statutory regime, but in practice it is considered to fall within the employer’s sphere where it is created in the course of employment.

Contractors, Consultants and Joint Development

For contractors, consultants and joint development partners, there is no automatic rule on ownership. As a general principle, know-how remains with its creator unless agreed otherwise.

In practice, this is addressed through contracts, which commonly include:

• NDAs;
• clauses on assignment of rights; and
• provisions on joint ownership and permitted use.

Duties of Employees

Employees are subject to implicit and statutory duties of confidentiality. They must protect the employer’s trade secrets and may not use or disclose them for personal benefit or for the benefit of third parties. These obligations apply during employment and may, depending on the circumstances, continue after its termination.

In practice, know-how is primarily protected through contractual mechanisms that impose confidentiality obligations and restrict its use. The most common tools include:

• NDAs, under which the recipient agrees not to disclose or misuse the information;
• confidentiality clauses in employment, co-operation or technology transfer agreements, defining the scope and duration of protection;
• non-use provisions, limiting the use of know-how strictly to agreed purposes;
• non-compete clauses, preventing the use of knowledge for competing activities; and
• licence agreements, specifying how and to what extent know-how may be used.

These mechanisms allow parties to tailor protection to their specific business needs and relationships.

Assignment and Licensing of Know-How

Know-how can be assigned or licensed independently of patents or formally defined trade secrets. In practice, it is often transferred through licence, co-operation or development agreements, but it may also be dealt with separately (eg, as technical knowledge or methods). In order to be effectively transferred, however, know-how must be sufficiently identified and, in practice, at least partially materialised (eg, documented in technical descriptions, manuals or specifications), so that it can be communicated and used by the recipient.

Formalities

Slovenian law does not prescribe specific formal requirements for the assignment or licensing of know-how, such as:

• a mandatory written form;
• registration or notarisation requirements; or
• official recordal,as know-how is not a registered right.

However, written agreements are standard in practice to ensure legal certainty and evidentiary value.

Key Contractual Elements

Know-how agreements typically regulate:

• the definition and scope of the know-how being transferred;
• the type of licence (exclusive or non-exclusive);
• permitted use and purpose;
• confidentiality and protection measures; and
• treatment of improvements and further developments.

As protection relies primarily on contract rather than registration, careful drafting is essential.

Lawfulness of Reverse Engineering

Reverse engineering is generally lawful under Slovenian and EU law, provided that it is carried out on a lawfully acquired product and for legitimate purposes, such as research, interoperability, security or education.

However, it is not permitted where it infringes intellectual property rights or breaches licence terms, eg, through unauthorised copying or distribution of protected content.

Contractual Restrictions

Reverse engineering can be contractually restricted, typically through licence agreements or non-disclosure agreements. Such clauses are generally enforceable.

Practical Considerations

The risk of reverse engineering often influences the choice of protection. If a product can be easily reverse-engineered, patent protection may be more appropriate. Where this risk is low, protection through trade secrets may be sufficient, often combined with contractual and technical safeguards.

Database makers are holders of so-called related rights. They therefore enjoy the exclusive right to reproduce their databases, distribute copies, rent them out, make them available to the public, and communicate them to the public in other ways. Collections of copyrighted works or other materials, including databases, may also qualify as independent copyright works where, by reason of the selection, arrangement or co-ordination of their contents, they constitute the author’s own intellectual creation. Databases can also be protected in any way with a contract or can even be considered a trade secret, if the database meets the conditions from the Trade Secret Act.

As for scraping and data extraction, an authorised user of a published database may freely use insubstantial parts of its content for any purpose. However, the user must not use the database in a way that goes against its normal use or that unfairly harms the interests of the database maker, and must also respect any copyright or related rights in the materials contained in the database.

AI-Generated Works and Authorship

When it comes to AI-generated content, there still has not been any case law in Slovenia. However, it is clear that AI cannot be considered an author since it is not a natural person. Most EU member states are of the opinion that AI-generated works may be protected by copyright if a human was greatly involved in the creation process and the author’s creative choices are reflected in the final work. AI therefore has to remain only an assisting tool.

AI-Generated Works and Inventorship

An inventor can only be a natural person, which is also reflected in Slovenian law requiring the inventor’s name and allowing only natural persons (or their successors) to claim patent rights. However, patents may still be granted where AI is used as a tool, provided that a human makes a significant contribution to the invention and is named as the inventor. Both EPO and USPTO guidance confirm this approach, requiring a qualitative human contribution, while Slovenia has not yet addressed such a case in practice.

Ownership of AI-Generated Works

Since there are no specific AI rules, businesses structure ownership through the general copyright framework and contracts. Since an author under Slovenian law can only be a natural person, businesses generally assume that only the human contribution can attract copyright protection, and they deal with AI-assisted outputs by contracts or employment law, while ensuring that the general terms of the AI model clearly provide that the company owns all rights in the output.

Using Copyrighted Works in Training Datasets: Text and Data Mining

For the purposes of text and data mining, works to which lawful access has been obtained may be reproduced freely. The author may explicitly reserve the right to use the work, in particular with internationally recognised standardised machine-readable tools that contain metadata and general terms of use in the case of online, publicly accessible works. This is an implementation of Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market, which introduced the text and data mining exception. Article 4 of the Directive provides that rightsholders may reserve the use of their works for text and data mining purposes (that is, they have an option to opt out). In the context of AI, the EU AI Act further requires compliance with intellectual property law, with particular emphasis on the opt-out mechanism for text and data mining and on the obligation of providers of generative AI models to ensure transparency regarding the data used for training.

Using Trade Secrets in Training Datasets

For trade secrets, the risk is different: if the training set contains confidential know-how or business information obtained without permission, the issue is not copyright infringement but unlawful acquisition, use or disclosure of a trade secret. Slovenia regulates this through the Trade Secret Act, which expressly protects trade secrets.

Enforcement Landscape

So far, there appears to be no Slovenian case law directly addressing AI training datasets. However, under the existing ZASP framework, a claimant could likely seek to stop further use of the data and claim damages, which could be effective when the opt-out option was not respected.

Slovenian courts have not yet addressed the issue of infringing intellectual property rights using generative AI. However, this problem is partially addressed by the new EU AI Act, which introduces transparency obligations for any output created by AI, while providers must disclose information about the data used for training and ensure compliance with EU copyright law, including respecting opt-outs for text and data mining. There are also the general lawsuit claims provided in ZASP which would be effective against infringements, even when generative AI tools are used. The current law does not appear to provide any basis for possible secondary liability of platforms and tool providers.

Choice of Protection

The choice between different forms of IP protection depends on the nature of the subject matter and the holder’s business objectives. Patent protection is typically preferred for technical solutions that can be easily reverse-engineered or cannot be kept confidential. By contrast, trade secret protection is more suitable for information that can be maintained in secrecy over time, such as processes, formulas or algorithms not evident from the final product.

Key Factors

The decision between patents and trade secrets is usually influenced by:

• the ability to maintain secrecy;
• the risk of reverse engineering or independent development;
• the duration of protection (limited for patents, potentially indefinite for trade secrets);
• costs and formalities (required for patents, not for trade secrets); and
• the impact of disclosure (patents require publication).

In essence, patents offer strong but time-limited exclusivity in exchange for disclosure, while trade secrets provide potentially longer protection, but only as long as confidentiality is preserved.

Cumulative Protection

Slovenian law generally allows cumulative protection of the same subject matter under multiple IP regimes, provided that the requirements for each regime are independently fulfilled.

Limits on Overlapping Protection

There are important limitations. Shapes that are purely functional or necessary to achieve a technical result cannot be protected as trade marks or designs. In addition, copyright protection requires originality, meaning not every design will qualify for cumulative protection.

Resolving Conflicts

Courts do not automatically exclude one form of protection in favour of another. Instead, they assess each claim separately, taking into account the purpose of the relevant right (eg, distinctiveness for trade marks or creativity for copyright).

In cases of conflict, courts balance factors such as the scope of rights, timing, good faith, and the risk of market confusion, while also preventing misuse, such as attempts to extend protection beyond its intended limits.

Protection Before, During and After Patent Filing

Confidential know-how and technical information may be protected as trade secrets before a patent application is filed, as long as they remain undisclosed. During the patent process, trade secret protection can continue in parallel, but only for information that is not revealed in the application.

In practice, this often includes manufacturing methods, optimisations or implementation know-how that are not part of the patented disclosure.

Effect of Patent Publication

Patent publication makes the technical content of the invention publicly available. As a result, any information disclosed in the application or granted patent can no longer qualify as a trade secret, since it no longer meets the requirement of secrecy.

However, the loss of protection is limited to the disclosed elements. Related, undisclosed information may still retain trade secret status.

After Expiry or Invalidation

Trade secret protection may continue even after a patent expires or is invalidated, but only for information that was never made public through the patent.

Once information has been disclosed in patent documentation, it cannot be re-protected as a trade secret.

Trade Marks

A trade mark protects any sign capable of distinguishing the goods or services of one undertaking from those of others. This also includes three-dimensional signs (eg, the shape of a product or its packaging), provided that they possess distinctive character and are not exclusively functional.

Trade Dress

Trade dress (the overall appearance of a product or its packaging) is, under European law, generally protected through trade mark law, provided that the overall presentation functions as an indication of origin.

Industrial Designs

An industrial design protects the external appearance of a product, including its lines, contours, colours, shape and texture, irrespective of whether it indicates commercial origin. The key requirements are novelty and individual character, rather than distinctiveness in the trade mark sense.

Cumulative Protection

The shape of a product or its packaging may be protected simultaneously as a trade mark and as an industrial design, subject to different legal requirements. An industrial design protects a new design for a limited period, whereas a trade mark, once it acquires distinctiveness, may enjoy protection for an unlimited duration.

Parallel Protection of Copyright and Trade Marks

Copyright and trade mark law are independent but complementary systems that may apply to the same subject matter. Logos, artistic elements or branding can benefit from both forms of protection where the relevant conditions are met.

A logo or visual identity may qualify as a copyright work if it is original and reflects the author’s own intellectual creation. At the same time, it may be protected as a trade mark if it is capable of distinguishing the goods or services of one undertaking from those of others.

Interaction and Limitations

Although both regimes can coexist, the holder must ensure that rights are properly secured under each system. Copyright may limit the use of a trade mark where the user does not hold the necessary rights from the author (eg, the designer of the logo).

On the other hand, trade mark registration provides protection in the course of trade but does not grant ownership of the underlying copyright. For this reason, rights should be cleared and regulated cumulatively to avoid conflicts.

Multiple Claims in One Proceeding

Although a situation may involve several IP rights, claims are not necessarily formulated separately for each of them. In practice, the claimant typically focuses on the infringing conduct itself (eg, requesting that the defendant cease using a product, withdraw it from the market, or compensate the damage). The same set of facts may simultaneously fall under different IP regimes, but this is primarily relevant at the level of legal assessment by the court, rather than in the structure of the claim.

Assessment of Remedies

If the court finds that the same conduct infringes multiple IP rights, it does not grant separate remedies for each right. Instead, it determines the appropriate remedy in light of the overall infringement. The existence of several legal bases may reinforce the claim, but remedies (such as injunctions or damages) are awarded in a unified manner.

No Double Recovery

Even where multiple IP rights are implicated, the claimant cannot recover more than the actual harm suffered. Different legal bases do not justify multiple compensation for the same injury, but only support a single, comprehensive award.

Principle of Territoriality

The fundamental starting point is the principle of territoriality, according to which IP rights (eg, patents and trade marks) are limited to the territory of a specific state. Consequently, courts generally apply the law of the country within which protection is sought (lex loci protectionis).

International Framework

At the international level, the TRIPS Agreement, adopted within the framework of the World Trade Organization, plays a key role by establishing minimum standards for the protection of IP rights. While TRIPS reduces disparities between national systems, it does not eliminate them, as states retain a degree of autonomy in implementation.

EU Private International Law Rules

Within the European context, rules of private international law are of central importance. The Brussels I Regulation (1215/2012/EU) determines jurisdiction and governs the recognition and enforcement of judgments among EU member states, whereas the Rome II Regulation (864/2007/EC) establishes the law applicable to non-contractual obligations.

In practice, conflicts are often managed through:

• contractual clauses (particularly choice of law and jurisdiction); and/or
• alternative dispute resolution mechanisms (such as arbitration and mediation).