The Slovenian ITEM law firm has successfully represented Alcatel Lucent in a challenge to the decision of the Slovenian Intellectual Property Office (SIPO) to refuse to protect Alcatel Lucent's “LIGHT RADIO” mark in Slovenia.
In July 2011 Alcatel Lucent had applied to register the international word mark LIGHT RADIO for goods in Class 9 of the Nice Classification, namely "telecommunication apparatus, equipment and software". The mark designated several countries, including Slovenia. In November 2011 SIPO issued a provisional refusal of the mark on the grounds that it was devoid of any distinctive character, it deceived the public, in particular as to the nature, quality or geographical origin of the goods, and it served, in the course of trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods, or other characteristics of the goods.
SIPO did not provide any specific reasons for the provisional refusal, and did not clarify which part of the sign was allegedly devoid of any distinctive character and why (nor did it state that the sign as a whole was devoid of any distinctive character); it did not explain which characteristics of the goods were allegedly designated by the mark and why; and it did not provide reasons for the alleged deceptive nature of the mark. SIPO invited Alcatel Lucent to respond to its provisional refusal, but in May 2012, after considering Alcatel Lucent’s response, SIPO refused the mark for "telecommunication apparatus and equipment” (but did grant protection to the mark for “software”).
In July, 2012, Alcatel Lucent filed an administrative action before the Slovenian Administrative Court arguing that SIPO had failed to provide the specific facts and reasons underlying its provisional refusal, and should have done so before issuing its final decision. In doing so, according to ITEM, “SIPO ... 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 agreed, holding that SIPO had violated applicable administrative procedure provisions. The Court set aside SIPO’s decision and remitted the case back to SIPO for further determination. Upon Alcatel Lucent's restriction of the goods for Slovenia to: "telecommunication apparatus, equipment and software, except radio sets", SIPO granted protection to the mark.
According to ITEM lawyer Katja Kovacic, “the case revealed a deficiency in the Slovenian trademark examination procedure, as SIPO failed to provide specific facts and reasons for its provisional refusal. However, since this administrative dispute was initiated, SIPO has improved its practice and has begun to provide concrete reasons for provisional refusals.
