The Slovenian IP Office (SIPO) provisionally refused protection to the international trademark LIGHT RADIO (Word Mark) in Slovenia for “telecommunication apparatus, equipment and software” on the grounds that it was deceptive, devoid of any distinctive character and that it served to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods, or other characteristics of the goods in the course of trade. However, the SIPO did not provide any specific facts and reasons for the provisional refusal. In its response, the applicant set forward substantial arguments in favour of the registration of the mark. Nevertheless, the SIPO refused the mark for “telecommunication apparatus and equipment” and granted protection to the mark merely for “software”, mainly due to the mark’s literal meaning in Slovenian language (“lightweight radio” or “radio receiver with a light”) and the availability of radios with lights on the market.

The applicant filed an administrative action before the Administrative Court arguing that the SIPO should have revealed the concrete reasons for the refusal of the mark before issuing the final decision. According to the applicant, the SIPO had breached its duty to enable it to protect and enforce its rights in the best possible way, thereby acting contrary to the law.

The Administrative Court held that the SIPO had violated the administrative procedure provisions, set aside the SIPO’s decision and remitted the case back to the SIPO for further determination. Upon the applicant’s restriction of the goods for Slovenia to: “telecommunication apparatus, equipment and software, except radio sets”, the SIPO granted protection to the mark.

SIPO held to have committed procedural violation during provisional refusal phase, WTR, 2014 [PDF]