Today, the acquisition of intellectual property (IP) rights is crucial for both established and emerging companies, and even for individuals such as entrepreneurs, authors and inventors. However, protection is meaningless if IP rights are not enforced effectively and consistently. Effective enforcement is becoming increasingly important because expanding technologies and the global market facilitate the infringement of protected rights to an unprecedented extent

Widely available 3D printing may add a new dimension to IP infringement.

Our experienced lawyers advise and represent clients in all IP matters before the courts, administrative bodies and in alternative dispute resolution proceedings, including those before the Slovenian courts, the Slovenian Intellectual Property Office (SIPO), the Slovenian Administrative Court, the European Union Intellectual Property Office (EUIPO) and the European Court. With our network of trusted associates, we also help clients enforce and defend their IP rights in several Balkan countries, including Croatia, Bosnia and Herzegovina, Serbia, Montenegro, Macedonia, Kosovo and Albania.

39% of total economic activity in the EU (worth some €4.7 trillion annually) is generated by IPR-intensive industries.

European Commission press release on the study: “Intellectual Property Rights intensive industries: Contribution to economic performance and employment in Europe” (September 30, 2013)

Litigation

When an amicable solution is not an option, our team of litigators, assisted by experts with technical background, handles even the most complex IP litigation cases in Slovenia. Our broad understanding of IP and our technical expertise is what sets us apart from other litigators.

Our services include:

  • advising on litigation strategies;
  • trademark, patent and design infringement actions;
  • copyright infringement actions;
  • trademark, patent and design invalidation actions;
  • trademark non-use cancellation actions;
  • requests for interim measures;
  • actions for restitution of damages;
  • unfair competition actions;
  • administrative disputes;
  • enforcement proceedings; and
  • filing criminal complaints in cases involving the criminal offence of unauthorized use of a patent, design, trademark or company name.

Through a network of carefully selected associates, ITEM also handles litigation cases in Croatia, Bosnia and Herzegovina, Serbia, Montenegro, Macedonia, Kosovo and Albania.

We have gained extensive experience in a wide range of IP matters by representing some of the world’s largest corporations and regional market leaders, as well as SMEs, individual entrepreneurs, artists and inventors. We develop litigation strategies specifically tailored to each individual case in accordance with clients’ interests and needs, and then implement those strategies effectively.

It’s every lawyer’s dream to help shape the law, not just react to it.

Alan Dershowitz

We also actively participate in the development of Slovenian IP law by publishing legal articles and commentaries, cooperating with professional IP associations in Slovenia and abroad, by contributing amendments to existing legislation and participating in the development of case law before the highest courts in the country.

Some of our achievements in the development of IP case law in Slovenia include:

Negotiations and Settlement

When it is in our client’s best interest to settle a dispute amicably, we do our best to do so and avoid often costly and time consuming court procedures. We represent clients in negotiations and in every form of alternative dispute resolution proceedings (e.g. mediation and arbitration).

Our services include:

  • advising on out of court settlement strategies;
  • drafting and sending cease and desist letters;
  • negotiating and drafting settlement agreements, undertakings or statements;
  • actively participating in alternative dispute resolution proceedings; and
  • enforcing settlement agreements, undertakings and arbitration decisions.

Many conflicts may be resolved amicably with some effort from each party. A reasonable settlement is in the interests of both parties because they may reach a solution without time consuming and costly litigation. A prerequisite for reaching such a settlement is that the parties fully understand their rights, risks and chances of success before the courts. Our experienced attorneys provide such broad understanding that enables our clients to achieve a favorable outcome in negotiations.

Discourage litigation. Persuade your neighbors to compromise whenever you can. As a peacemaker the lawyer has superior opportunity of being a good man…

Abraham Lincoln

Customs Measures and Anti-Counterfeiting

Counterfeiting has grown rapidly in the past decade, and now represents one of the most profitable businesses of organized criminal networks. The most frequently counterfeited products are clothing, footwear, fashion accessories, cosmetics, fragrances, electronic goods, household products, pesticides, food and beverages, and even medicines. Global online stores, lower prices and fast delivery mislead a growing number of consumers into buying counterfeited products.

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Customs enforcement

  • filing customs applications;
  • drafting and filing expert reports, affidavits and written witness statements;
  • drafting and sending cease and desist letters;
  • obtaining reimbursement of storage and destruction costs;
  • drafting and filing criminal complaints;
  • representing clients in court proceedings;
  • organizing transportation, storage, destruction and, wherever possible, recycling of counterfeit products.
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Market monitoring

  • organizing inspections and investigations of markets, shops and events;
  • organizing test purchases;
  • drafting and filing expert reports, affidavits and written witness statements;
  • drafting and sending cease and desist letters;
  • representing clients in court proceedings;
  • organizing transportation, storage, destruction and, wherever possible, recycling of counterfeit products;
  • drafting and filing criminal complaints; and
  • organizing and assisting the police and relevant authorities in market raids.

Internet monitoring

  • monitoring auction sites and online shops for counterfeit products being offered;
  • organizing test purchases;
  • drafting and sending cease and desist letters; and
  • arranging the withdrawal of infringing advertisements and online shops from the internet.

By July 2015, the Slovenian customs seized 1,131,090 counterfeited products, while almost 30% of those counterfeits were seized and destroyed with ITEM’s assistance.

In order to reduce the extent of trade with counterfeits, we assist IP rights holders to detect, seize and destroy counterfeited products, even before they enter the markets, through customs measures in the European Union, Serbia, Bosnia and Herzegovina, Macedonia and Kosovo. We also organize market and internet searches to detect counterfeits already offered to consumers, and take action against infringers in such cases.

The manufacture and distribution of fake clothes, shoes and accessories (such as ties, scarves, belts and gloves) takes over €26 billion every year from legitimate EU businesses. Source: OHIM

The seizure and destruction of counterfeits through customs measures is the most cost effective way to prevent counterfeited or infringing products entering the EU market.

Opposition

In most countries, opposition represents a cost-effective way of preventing a third party from registering a conflicting trademark.

Our services include:

  • advising on opposition procedures;
  • negotiating with the applicants of a conflicting trademark;
  • preparing and filing oppositions; and
  • preparing and filing opposing observations based on absolute grounds.

Our experienced trademark attorneys and lawyers assist clients in opposition procedures before Slovenian Intellectual Property Office (SIPO), the Office for Harmonization in the Internal Market (OHIM) and before national IP offices in Croatia, Bosnia and Herzegovina, Serbia, Montenegro, Macedonia, Kosovo and Albania.

Some IP offices, such as the OHIM, allow cooling-off periods, in which the parties may reach an amicable resolution and settle a dispute without entering the adversarial stage of opposition proceedings.

Opposition must typically be filed within three months from the date of publication of a conflicting trademark. If that deadline is missed, the holder of the previous mark must either tolerate a conflicting trademark or resort to more expensive and lengthier procedures to invalidate it. Particular attention should therefore be paid to trademark watching services, which is a useful tool for the timely detection of potentially conflicting trademarks.

Domain Name Disputes

We may also assist you in resolving domain name disputes through Alternative Dispute Resolution Procedures (ADR), thereby enabling you to either acquire a domain name that interferes with your IP rights (trademark, company name, copyright, geographic designation, personal name or other) or have it deleted from the domain name register.

Our services include:

  • drafting and filing complaints;
  • drafting and filing additional brief(s), if necessary; and
  • handling transfers of acquired domain names.

Disputes regarding .si domains are initiated before the Slovenian registration authority ARNES, while we file complaints before appropriate ADR authorities for other domains. ADR procedures are typically fast, efficient and cost-effective.

We are the leading law firm in Slovenia in terms of the number of successfully resolved domain name disputes.

Give Us a Call

ITEM team consists of experienced and dedicated intellectual property lawyers and experts, who work closely together in order to provide high-quality, client-focused services. We strive to handle the entrusted matters with excellence, diligence and creativity.