RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q4/SVN/1
1 March 1999
(99-0767)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION ON ENFORCEMENT
SLOVENIA1
The present document reproduces the introductory statement made by the delegation of
Slovenia, the questions put to it and the responses given in the review of legislation on enforcementat the Council's meeting of 17-21 November 1997
2.
_______________
I. INTRODUCTORY STATEMENT
Generally speaking, two important features of the Slovenian legal system on enforcement of
intellectual property rights have to be taken into account.  Firstly, the legal system of Slovenia is a
typical European continental system, and thus very  similar to the legal framework of, say, Austria,
Germany, etc.  Secondly, the Constitution has an ex plicit provision that international conventions are
directly applicable and take precedence over national laws in cases of conflict.  This means that the
TRIPS Agreement is directly applicable to the exte nt that its relevant provisions are self-executing.
Both mentioned features can be easily recognized from the information given in Slovenia's
responses to the Checklist of Issues on Enforcement3, as well as from the replies to the questions set
out in this document.
We had some difficulties in offering accurate replies to some questions which referred to the
concrete practice followed by Slovenian judicial and/or administrative authorities.  Slovenia is a
relatively young state, and the accumulation of the cases dealt with so far is by all standards too small
to allow presentation of reliable information on the established practice of relevant authorities.Nevertheless, we have made every effort to collect and provide all available data.
It is our belief that the Slovenian legal system is fully compatible with the relevant part of the
TRIPS Agreement.  In spite of this, however, the Government of Slovenia wishes to improve the
existing situation, by making the relevant legislation even more transparent.  As has been indicated atsome previous meetings of the Council for TRIPS, Slovenia is now working on the new version of the
Law on Industrial Property, which will contain explicit and more detailed provisions on enforcement.
Special attention will be given to border measures.  It is expected that the new Law will be sent to the
Parliament for the first reading in spring 1998, but will also be offered to WTO Members for
discussion.
                                                     
1 As regards laws and regulations relevant to the area under review and notified by Slovenia under
Article 63.2 of the Agreement, reference is made to documents IP/N/1/SVN/1/Rev.1 and IP/N/6/SVN/1.
2 The minutes of this meeting have been circulated as document IP/C/M/16.
3 Document IP/N/6/SVN/1, dated 13 September 1996.IP/Q4/SVN/1
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II. REPLIES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND
THEIR MEMBER STATES
1. What is the typical length of time necessary to enforce the respective intellectual
property rights in Slovenia?  Should delays occur, what are the reasons (Article 41.2 of the
TRIPS Agreement)?
The typical length is around one to two years in the first instance, and up to an additional one
year in case an appeal is lodged.
2. With regard to cases that involve the infringement of intellectual property, could the
Government of Slovenia provide data on the number of:
- law suits that have been filed including their respective outcome and the
average length from the filing of a complaint until the final judgement;
- injunctions that have been issued (as defined in Article 44 of the TRIPS
Agreement) and explain how such injunctions are being enforced;
- provisional measures (as defined in Article 50 of the TRIPS Agreement) that
have been granted and the average length to obtain such measures (from therequest);
- suspensions at the border of counterfeit trademark/pirated copyright goods or
in relation to goods where other intellectual property rights are infringed;
- criminal cases including the sentences that have been applied;  whether they
have been executed;  and please also explain what kind of infringement of anintellectual property right would be regarded as a violation of criminal law;
- seizures and/or destruction of counterfeit trademark and pirated copyright
goods.
It is difficult to give reliable statistical data on the number of various law suits because
Slovenia is a relatively young State.  The data av ailable as of January 1996 onwards show that, taking
into account all cases in the field of intellectual property, there are currently about 50 cases initiated
each year.  The average length of proceedings at the first instance (from filing the suit until the
judgement) is between one and two years.  In proceedings in complicated matters, especially in patent
litigation with experts involved and counterclaims on revocation filed, the duration is sometimeslonger.  One has to add up to one additional year for ruling on an appeal against the first instance
judgement.  Provisional measures are ordered quickly;  an interlocutory injunction in about a week.
(Final) injunctions are sought in almost every infringe ment suit.  They are enforced with fines that the
court is empowered to impose under Article 225 of the Code of Execution.  The other possibility is an
application under Article 294 of the Code of Obligations.  The court can order the party who does notobey the injunction to pay the other party a sum of money, high enough to ensure obedience (similar
to French " l'astreinte ").
Provisional measures are often sought and are granted in the majority of copyright cases.  The
success of such applications is also quite high in trademark cases, whereas in patent cases the numberof granted provisional measures is lower.  When an ex parte  provisional measure is sought and
ordered, this is done in about a week from the request.IP/Q4/SVN/1
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No suspension at the border of counterfeit trademark or pirated copyright goods has been
requested so far.
There have been around 15 criminal cases lodged.  The kind of infringement which would be
regarded as a violation of criminal law is specified in Slovenia's response to question 24 of the
Checklist of Issues on Enforcement.4
Furthermore, could the Government of Slovenia explain and give practical examples of:
- how the compensation for damages of the infringement of intellectual property
rights is calculated (Article 45.1 of the TRIPS Agreement);
- what would be regarded as "expenses of the right holder" which have to be
reimbursed pursuant to Article 45.2, first half of the first sentence, of theTRIPS Agreement and how they would be calculated;
- whether attorney's fees can be reimbursed and how such fees would be
calculated;
- whether Article 45.2, second sentence, of the TRIPS Agreement has been
implemented in Slovenia and how such "damages" would be calculated?
The compensation is normally calculated on the basis of licence analogy, and/or lost profit is
added.  In addition, the Copyright and Related Rights Act explicitly provides for punitive damages
which are 200 per cent higher than ordinary damages.
Court attorney fees are normally regarded as expenses of the right holder which have to be
reimbursed.
3. Could the Government of Slovenia clarify whether a right holder has the possibility to
apply for provisional measures with the judicial authorities and, if founded, could suchmeasures be adopted inaudita altera parte ?
The right holder has the possibility to apply for provisional measures (see Slovenia's
responses to questions 10 and 11 of the Checklist of Issues on Enforcement.
4
4. What border measures are in place or planned to comply with Slovenia's obligations
under Articles 51 to 60 of the TRIPS Agreement?
For counterfeit trademark goods the TRIPS Agreement may be directly applicable.  However,
it is planned that the new Law on Industrial Property which may be adopted in 1998 will explicitly
contain provisions which would comply with all re quirements of this Part of the TRIPS Agreement.
In the area of copyright, two types of border measures are available to the right holder
(Article 173 of the Copyright and Related Rights Act):
(1) That the right holder or his agent may inspect such goods;
(2) That such goods could be seized, their release into free circulation be suspended, and
the goods be detained awaiting final decision by the competent authority.
                                                     
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5. Please explain whether and, if so, how enforcement rules differ between copyright and
industrial property?  If so, what are the reasons?  Are there any plans to harmonizeenforcement provisions?
Please see the reply to question 4.
[Follow-up question from the EC]
Does the Government of Slovenia intend to amend its legislation to comply with
Articles 51 to 60 of the TRIPS Agreement in the area of copyright?   If so, what is the foreseentiming?
The information given in Slovenia's responses to the Checklist of Issues on Enforcement,
5 as
well as the answers to the questions posed to Slovenia by the European Communities and their
Member States, the United States and Japan demonstrate the compliance of Slovenian legislation with
provisions of Part III of the TRIPS Agreement.  Moreover, the Copyright and Related Rights Act has
several explicit provisions on enforcement, including border measures.  However, in the course ofupdating the Law on Industrial Property, the Copyright and Related Rights Act will also be
scrutinized and amendments might be proposed, in order to avoid possible discrepancies between the
two Acts.  If this should be the case, the amendments to the Copyright and Related Rights Act will be
submitted to the Parliament within the same timeframe as the new Law on Industrial Property, i.e. in
1998.
III. REPLIES TO QUESTIONS POSED BY JAPAN
1. Please explain whether "proceedings leading to a decision on the merits of the case"
stipulated in Article 55 of the TRIPS Agreement, are judicial or administrative.
The proceedings leading to a decision on the merits of the case, as stipulated in Article 55 of
the TRIPS Agreement, are of judicial nature.
2. Are there any ways other than the application stipulated in Articles 51 and 52 of the
TRIPS Agreement (hereafter referred to as "the Application") which enable a right holder torequest the competent authorities to suspend the release of the goods which infringeintellectual property rights or which are suspected to infringe intellectual property rights?
No.
3. Please explain what term your country regards as "a reasonable period within which
the competent authorities shall inform the applicant whether or not they have accepted theApplication" stipulated in Article 52 of the TRIPS Agreement.
There is no explicit specification of the term; however, the Copyright and Related Rights Act
has the provision that customs authorities must promptly inform all parties involved about the
application.  The same applies in the case that suspension of the release into free circulation is sought
under the judicial procedure at the court.
4. Please explain the term during which the Application is effective.
The terms stipulated in the TRIPS Agreement are directly applicable.
                                                     
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5. Please explain whether a right holder is obliged to pay any fees to lodge the
Application.
If the procedure is initiated at the court, a fee which currently is not more than SIT 15 300
(approximately US$120) has to be paid.  No fee is required in cases involving copyright piracy, if the
procedure is initiated directly with the customs authorities in accordance with Article 173 of the
Copyright and Related Rights Act.
6. Please indicate provisions of laws and ordinances which prescribe the "proceedings
leading to a decision on the merits of the case" stipulated in Article 55 of the TRIPSAgreement. And please summarize their contents.
The answer to this question is given in Slovenia's response to question 12 of the Checklist of
Issues on Enforcement.
6
7. Please explain the specific procedure, if any, to be applied to the goods which are not
evident whether or not they infringe intellectual property rights, in Article 55 of the TRIPSAgreement.
No such specific procedure is foreseen.
8. Please explain the responsibility that the competent authorities and other related
authorities take to the right holders when they fail to suspend the release into free circulationof goods which infringe intellectual property rights with regard to the suspension based on theApplication or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
Public authorities are liable for damages, caused by their officials to third parties in the
administration or in connection with the administration of their duties, under the general rules on
damages (Code of Obligations, Article 172).
9. Please explain the responsibility that the competent authorities and other related
authorities take to the right holders when they examine goods which infringe intellectualproperty rights and nevertheless release them into free circulation with regard to thesuspension based on the Application or the Ex Officio Action stipulated in Article 58 of theTRIPS Agreement.
Please see the reply to question 8 above.
10. Please explain the responsibility that the competent authorities and other related
authorities take to the importers when they suspend the release into free circulation of goodswhich do not infringe intellectual property rights with regard to the suspension based on theApplication or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
Please see the reply to question 8 above.
11. Is the right holder informed of identities of the importers and consignors when the
competent authorities "suspend" the goods which infringe on intellectual property rights orwhich are suspected to infringe intellectual property rights, as well as the case where the right
                                                     
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holder is informed of identities of the importers and consignors stipulated in Article 57 of the
TRIPS Agreement?
Yes.
12. Please explain the measures to protect confidential information in the course of the
inspection stipulated in Article 57 of the TRIPS Agreement.  And please indicate provisions oflaws and ordinances which prescribe such measures.
In order to ensure protection of confidential  information brought forward as evidence, the
court may decide to exclude the public from the court hearings.  The judge is obliged to warn all
parties that they have to respect the confidential nature of any relevant information which they receive
in such hearings (Code of Civil Procedure, Articles 307-310).
13. Please explain the procedures of detentions and seizures to be ordered by the
competent authorities based on Articles 51 and 55 of the TRIPS Agreement.
No specific procedures are prescribed in respect of Articles 51 and 52 of the TRIPS
Agreement, and general rules of the Code of Execution are applied.
14. Please explain the procedures to appeal against any decisions ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.
Please see the reply to question 13 above.
15. Please explain the basis for calculating the security or equivalent assurance stipulated
in Article 53 of the TRIPS Agreement that the competent authorities may require of anapplicant when they suspend the release into free circulation.
The court decides on the amount of security under the rule of reason.
16. Please explain who shall pay the cost of detentions based on Article 51 of the TRIPS
Agreement or destruction stipulated in Article 59 of the TRIPS Agreement.
The court, judging the merits of the case, decides who shall pay the cost of detentions.  The
cost of destruction is borne by the infringer, but may also be borne by the authority executing the
destruction, depending on the case.
17. Please explain what kind of cases are regarded as "the exceptional circumstances" in
which the competent authorities may allow re-exportation of counterfeit trademark goods
stipulated in Article 59 of the TRIPS Agreement.
No judicial practice exists in this regard.
18. Please explain whether the amount of damages which judicial authorities order the
person who infringes intellectual property rights to pay the right holder is adequatecompensation for the injury the right holder has suffered, and what criteria and the way forcalculation to decide the amount for compensation.
7
                                                     
7 Reference is made to Slovenia's response to qu estion 5 of the Checklist of Issues on Enforcement
(document IP/N/6/SVN/1).IP/Q4/SVN/1
Page 7
The amount of damages is adequate compensation.  Criteria of the way for calculation are
followed under general rules set out in Slovenia's response to question 5 of the Checklist of Issues on
Enforcement.8
[Follow-up question from Japan]
With respect to Slovenia's response to question 18 from Japan regarding damages for
the infringement of intellectual property rights, please describe the way for calculation of"recovery of profits" in Slovenia's response to question 5 of the Checklist of Issues onEnforcement.
8  And, please explain whether or not "recovery of profits" includes the
intellectual property right holder's lost profits, infringer's profits from the unlawful utilizationof the intellectual property right or reasonable royalty for utilization of the intellectualproperty right.
For the calculation of the recovery of lost profits all the possibilities mentioned in the
question are applicable.  The calculation can be based therefore either on the right holder's lost profits,
on the infringer's gained profits, or on the reasona ble royalty under licence analogy.  Which way will
be chosen depends upon the plaintiff's claim(s) and his factual allegations, based on the submittedevidence.
IV. REPLIES TO QUESTIONS POSED BY SWITZERLAND
1. Please explain whether international treaties which contain detailed provisions
addressed to the (judicial) authorities and not to the State itself are considered as self-executing
in your system?  If not, when there is a divergence between the intellectual property
legislation/practices and the international agreement in your country, does the latterautomatically prevail?  If not, please explai n the means allowing your country to fulfill the
international obligations?  Please ci te the relevant texts or jurisprudence.
International treaties which were ratified and officially published under Article 8 of the
Constitution of the Republic of Slovenia are applicable directly and thus self-executing.  This meansthat in Slovenia also the TRIPS Agreement is in principle applicable directly, provided that the
relevant provision allows direct applicability, i.e. it has to be clear and complete.  Current practice of
the courts is in favour of direct applicability, as for example in the case of Article 50 of the TRIPS
Agreement.  There are two judgements related to patent cases, of the Court of Appeals in Ljubljana
(Cgp 326/97 from 13 May 1997 and Cgp 552/97 from 12 June 1997), where the ruling was in favourof interlocutory injunctions under the conditions of Article 50.3 of the TRIPS Agreement.  Therefore,
there is in principle no divergence between the intellectual property legislation and practice, but if it
appears, then international agreement prevails, as explicitly specified in the mentioned Article 8 of the
Constitution.
2. Article 55 of the TRIPS Agreement provides that "… in appropriate cases, this time-
limit [of ten days] may be extended by another ten working days."  Is such time extension
foreseen in your laws?  If yes, please cite the relevant provisions.  If not please explain how an
applicant can avail himself of this possibility as provided by the TRIPS Agreement?
The time extension of another ten working days pursuant to Article 55 of the TRIPS
Agreement is not explicitly mentioned in the re levant legislation.  However, since the TRIPS
Agreement is directly applicable (see the answer to question 1 from Switzerland above), an applicant
                                                     
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can make use of the extended term by directly referring to the mentioned provision of the TRIPS
Agreement, which may be considered to be self-executing.
V. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
General obligations
1. Please describe briefly the procedure that must be followed by a foreign party to
initiate an enforcement procedure in the courts identified in response to question 1 of theChecklist of Issues on Enforcement.
9
Any foreign party is entitled to initiate an en forcement procedure in the relevant courts.  Any
party may, even directly if it so wishes, initiate  an enforcement procedure in the relevant courts.
2. Please identify any requirement that a foreign party must meet to initiate a proceeding
in the courts that is not required of a national or resident of Slovenia.
No specific requirements are required for foreign parties who enjoy the same treatment as
national persons and/or legal entities.  Moreover, foreign parties who are unable to communicate inthe Slovenian language are entitled to follow th e procedure with the assistance of an interpreter,
provided that the costs for interpretation are borne by that party (see Articles 102(2)(3) and 105 of the
Code of Civil Procedure, Official Gazette No. 4/1979, 27/1990, 1/1991-I, 55/1992, 19/1994).
3. Article 41.1 of the TRIPS Agreement requires establishment of safeguards against abuse
of judicial and administrative enforcement procedures, including provision of adequate
compensation for injury suffered because of su ch abuse.  Please describe the means available
under the law of Slovenia to prevent abuse of judicial procedures or to remedy damages
suffered as a result of such abuse and ci te the legal authorities for those means.
Abuse of procedural rights of parties is prohibited and can be subject to a fine (Code of Civil
Procedure, Articles 10, 316).  A party which abuses its procedural rights is liable to the other party for
damages, which have to cover all the losses suff ered (Code of Obligations, Article 190).  This is
explicitly regulated for any provisional measure that was sought, ordered and later found incorrect
(Code of Execution, Article 274).  The State and their officials can also be liable for damages caused
by wilfully or negligently illegal acts of authorities (Code of Obligations, Article 172).  These
principles apply for both judicial and administrative procedures.
4. Please explain any provisions in the en forcement system in Slovenia that ensure
expeditious remedies.  In addition, please explain what provisions are available to prevent
deliberate delays by the parties to a proceeding and indicate the circumstances in which such
provisions will be applied.
All the intellectual property cases have to be dealt with expeditiously, and thus have priority
over other civil or commercial suits (Industrial Pr operty Law, Article 98).  A procedure in which a
provisional measure is sought has to be treated urgently (Courts Act, Article 83).  Deliberate delays
caused by the parties can be prevented via several procedural safeguards – for instance summaryjudgement (Code of Civil Procedure, Article 332), fi nes for abuse of procedural rights (Code of Civil
Procedure, Article 316), and many others.
                                                     
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5. Article 41.2 addresses, among other things, th e cost of judicial proceedings.  Please
describe any fees charged by judicial official s for filing legal actions involving intellectual
property or for pursuing such actions once initia ted, cite the legal authorities for such fees, and
provide copies of the documents used to inform the public of such fees.
The fee for filing a suit is one per cent of the stated value of the dispute in civil matters and
two per cent in commercial matters, but not more than SIT 540 (currently approximately US$4 000).
The fee of the same amount applies for filing an appeal against the final judgement.  The fee for the
application for provisional measures is up to SIT 15 300 (approximately US$120).  No fee is charged
for criminal complaints (see Law on Judicial Fees, which unfortunately was amended so often that it
is almost impossible to provide a reasonably voluminous copy of it).
6. Article 41.3 of the TRIPS Agreement requires that decisions on the merits of a case
preferably in writing, the better to determine the reasoning on which the decision is based.
Please state whether judges must render their deci sions in writing and cite the legal authorities
requiring such written opinions.
All judgements must be provided in writing, at  the latest within eight days from the day when
the court has decided.  The decision is delivered to the parties and must involve the information on the
right of appeal (see Article 337 of the Code of Civil Procedure).
Each judgement must contain introduction, deci sion and full explanation of the findings (see
Article 338 of Code of Civil Procedure).
7. Article 41.3 also requires that decisions on the merits of a case be based only on evidence
in respect of which parties had an opportunity to be heard.  Please identify the factors that may
be considered by a judge in rendering a decision.
The provision of Article 41.3 of the TRIPS Agreement is fully met by numerous provisions of
the Code of Civil Procedure, as this is generally the case in the continental legal system.
Civil and administrative procedures and remedies
8. Article 42 requires the defendants be notified of judicial and administrative intellectual
property enforcement proceedings brought against them.  Please describe the procedures
followed for notifying defending parties regarding  proceedings that have been initiated against
them, indicate the information provided regarding  the proceedings and cite the legal authorities
establishing these procedures.
The provision of Article 42 of the TRIPS Agreement is fully met by the Code of Civil
Procedure.  Civil or commercial suit has to be submitted to the defending party in advance so that
there is enough time to prepare the defence – at leas t eight days before the first oral hearing (Code of
Civil Procedure, Articles 142, 286).  These provisions are not applicable only when an ex parte
provisional measure is ordered.  In such cases the application and the order are served on the
defendant at the beginning of the enforcement (Code of Execution, Article 39).
9. Article 42 requires, with one narrow exception , that there be a means to identify and
protect confidential information during judici al and administrative intellectual property
enforcement proceedings.  In IP/N/6/SVN/1, the Government of Slovenia explains that courts
may exclude the public from court hearings and warn the parties to respect the confidentialnature of information received at hearings.  Please describe the manner in which a party that
failed to respect the confidential nature  of information received at hearings.IP/Q4/SVN/1
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A party which fails to respect the confidential nature of information received at a hearing
shall be liable for damages under the provisions of Article 154 of the Code of Obligations, (Official
Gazette No. 29/78, 39/85, 2/89, 37/89, 1/1991 – 1).
10. Article 44.2 provides an exception to the requirement in paragraph 1 for government
use or use by third parties authorized by the government, limiting the remedy for infringement
to payment of adequate remuneration as provided  in Article 31(h).  Please describe any such
limitations or remedies in the laws of Slovenia and cite the legal authorities providing for those
limitations.
There is no explicit provision in national legislation which would provide for the exception as
described in Article 44.2 of the TRIPS Agreement.  Therefore, in any such case, most probably a very
rare case, Article 44.2 of the TRIPS Agreement may be directly applicable.
11. Article 47 provides that WTO Members may authorize judges to order infringers to
identify for right holders third parties involved in the production and distribution of infringing
goods or services and their channels of dist ribution.  In IP/N/6/SVN/1, the Government of
Slovenia explains the manner in which a right holder may demand that persons involved incopyright infringement provide information and documents.  Please describe any authority
judges have under the laws of Slovenia to order infringers to identify for right holders those
third parties involved in the production and di stribution of infringing goods or services and
their channels of distribution and describe the circumstances in which this authority would be
exercised.  Please describe any similar authority in connection with other forms of intellectualproperty.
There is the same court as indicated in Slovenia's responses to the Checklist of Issues on
Enforcement,
10 i.e. the Circuit Court of Ljubljana which has the authority to act in accordance with
the provisions of Article 47 of the TRIPS Agreement.  Until the provisions of this Article become partof the new Law on Industrial Property, Article 47 of the TRIPS Agreement may be directly applied.
12. Article 48.2 permits WTO Members to exempt public authorities and officials from
liability from remedies only where their actions were taken or intended in good faith in carrying
out their responsibilities under the law.  Please explain any exemption provided to publicauthorities and officials from liability for abuse of enforcement procedures, describe the
circumstances in which such limitations would no t apply, and cite the legal authorities granting
such exemptions.
Public authorities and officials are liable, under the general rule for damages, whenever their
actions were taken or intended in bad faith (Article 172 (1),(2) of the Code of Obligations).  This
provision implies the applicability of Article 48.2 of the TRIPS Agreement.
Provisional measures
13. Article 50.2 requires Members to authorize ju dicial authorities to adopt provisional
measures inaudita altera parte .  IP/N/6/SVN/1 states that such action can be taken in industrial
property cases "in urgent cases".  Please describe briefly the circumstances that would be
considered "urgent", providing examples.
Preservation of evidence, whenever a danger of its destruction exists, is deemed to be an
urgent case.  The authorities have followed this practice regularly in all cases concerning copyrightand trademark infringement.
                                                     
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14. Article 50.3 requires that judicial authoritie s be authorized to require an applicant to
provide evidence to establish with a sufficient de gree of certainty that the applicant is the right
holder and that infringement has occurred or is  imminent.  With respect to each intellectual
property right defined in Article 1.2 of the TRIPS Agreement, please describe the evidence
required by right holders to establish ownership.
In the field of patents, trademarks, industrial designs and topographies of integrated circuits,
the ownership is established by submitting the corresponding official document issued by the
Slovenian Intellectual Property Office.  In the fiel d of copyright and related rights and protection of
undisclosed information, the ownership is established by providing a sample of the relevant work
and/or information for which infringement is claimed.
Special requirements related to border measures
15. Article 51 of the TRIPS Agreement requires th at countries adopt procedures that enable
right holders to request suspension of the importation of counterfeit trademarked goods and
pirated copyright works.  IP/N/6/SVN/1 describe s procedures for pirated copyright goods and
says that otherwise the TRIPS Agreement app lies directly.  If this means that border
enforcement in connection with counterfeit trademarked goods is not addressed directly in
national law, please explain how the competent au thorities are designated in Slovenia, since the
TRIPS Agreement does not specify particular auth orities.  Please describe any plans to amend
national legislation to implement border measures in connection with counterfeit trademarkedgoods.
In principle, both judicial and administrative procedure is possible, the latter, however, only
in the area of pirated copyright goods (Article 173 of the Copyright and Related Rights Act).  Explicit
provisions in the field of industrial property will be included in the new Law on Industrial Property,which may be adopted in 1998.
16. Article 60 permits Members to exclude from the provisions for border enforcement
small quantities of goods of a non-commercial nature carried by passengers or sent in small
consignments.  Please describe what constitutes a de minimis  import that is excluded from the
border measures under the law of Slovenia.
There is no quantification in this respect in the relevant national legislation.  A decision what
constitutes a de minimis  import is judged by the rule of reason for each case individually.
Criminal procedures
17. Article 61 of the TRIPS Agreement requires that Members have criminal procedures
and penalties, including imprisonment and/or mone tary fines sufficient to act as a deterrent, at
least for cases of wilful trademark counterfeiti ng and copyright infringement on a commercial
scale.  IP/N/6/SVN/1 describes the provisions and the penalties.  In relation to copyright, the
documents describe an intent element, i.e., that the party have the intent "to obtain … asubstantial unlawful material gain".
The intent element is a legal threshold, which draws a distinction between a copyright
infringement as a criminal act (intent existing, Article 159 of the Criminal Code) and a copyright
infringement as a misdemeanour (intent not existing, Article 184(1) of the Copyright Act).  The term"substantial material gain" is defined as five average monthly net salaries (Article 126(13)2 of the
Criminal Code), i.e. an income amounting to a total of approximately US$2 720.IP/Q4/SVN/1
Page 12
18. Article 61 also requires that remedies in a ppropriate cases include the seizure, forfeiture
and destruction of infringing goods and any materials and implements the predominant use of
which has been the commission of the offence.  IP/N/6/SVN/1 does not indicate that seizure,
forfeiture, and the destruction of infringing goods and materials and implements for
commission of the offence are available in connection with trademark counterfeiting and
confiscation is referred to in connection with various copyright violations.  Please describe thecircumstances in which a judge would order seizure, forfeiture and destruction of infringing
goods and any materials and implements.
Slovenia's response to question 24 of the Checklist of Issues on Enforcement
11 indicates that
the goods infringing the trademark shall be confiscated on an obligatory basis.
19. Article 61 requires that criminal penalties be sufficient to provide a deterrent at least for
wilful trademark counterfeiting and copyright piracy.  Please explain how the penalties
provided under the laws of Slovenia comply with that obligation.
The answer to this question is given in Slovenia's response to question 24 of the Checklist of
Issues on Enforcement.11
[Follow-up questions from the US]
1. Please provide statistical information related  to civil copyright, trademark, geographical
indication, industrial design, patent, inte grated circuit layout-design and trade secret
enforcement for each of the years 1996 and 1997, including the number of cases filed;
injunctions issued; infringing products seized; infringing equipment seized; cases resolved
(including settlement); and the amount of damages awarded.
The analysis covers civil cases, commercial disputes and criminal cases where the legal
action, motion and/or indictment were filed in the period from 1 January 1996 until31 December 1997.  Thus the data on judgments do not cover the cases filed before 1996, although
the respective judgments were pronounced in 1996 and/or 1997.  Regarding the cases filed in 1996
and 1997, the analysis, however, excludes the judgments passed after 31 December 1997.
Accordingly, the analysis in question cannot provide a definite answer to the question about the final
result of all proceedings dealt with in the courts.  This will only be possible upon completion of all
these proceedings.  Hence, the analysis in questi on could only yield an "interim result" with reference
to the situation as of 31 December 1997.
Number of civil cases and commercial disputes
In the years 1996 and 1997 District Courts in the Republic of Slovenia received altogether
143 legal actions in the field of intellectual property, whereof 140 suits referring to violation ofintellectual property right, one suit to patent nullity and two suits to trademark cancellation.
Further details on legal actions arising out of violation of intellectual property rights are as
follows:
- Violation of copyright and related rights  97
- Patent violation   9
- Trademark violation  14
                                                     
11 Document IP/N/6/SVN/1, page 8.IP/Q4/SVN/1
Page 13
- Industrial design violation   1
- Violation of geographical indications  –
- Trade name protection   8
- Unfair competition  11
- Violation of business secrecy  –
- Total 140
Number of requests for temporary orders (and other security measures)
Among the cases referred to in Chapter 2 there were 24 cases subject to the request of a
temporary order.  Further details on requests for security measures are as follows:
- Request for prohibition of further violation 16
- Request for requisition of objects of violation  3
- Other types of security measures (security of evidence etc.)  5
In the period in question there were 21 independent requests for security measures (excluding
simultaneously filed legal actions) submitted to County Courts.  Further details on requests for
security measures are as follows:
- Request for prohibition of further violation  18
- Request for inventory of objects of violation   4
- Request for custody of objects of violation   3
- Request for requisition of objects of violation   5
- Other types of security measures (security of evidence etc.)   3
Accordingly, in the years 1996 and 1997 there were altogether 45 requests for temporary
orders submitted to the courts in the Republic of Slovenia.  Further details on requests for security
measures are as follows:
- Request for prohibition of further violation 34
- Request for inventory of objects of violation  4
- Request for custody of objects of violation  3
- Request for requisition of objects of violation  8
- Other types of security measures (security of evidence etc.)  8
In certain cases there were simultaneous requests for several security measures.  Therefore the
sum of individual types of requests exceeds the total number of cases.IP/Q4/SVN/1
Page 14
The total number of cases relating to the violation of intellectual property rights is 164 (140
suits before District Courts and 24 independent requests for security measures before County Courts).
However, the actual number of violations brought before Courts ranges between 140 and 164.  As a
matter of fact, in some cases the same violation is first a matter of independent request for security
measures and subsequently a matter of legal action.
Result of civil proceedings and commercial disputes
Out of 140 proceedings started in 1996 and 1997 as a result of legal actions referring to
violation of intellectual property rights there were 34 legal actions completed at the first instance court
by 31 December 1997.  Further details are as follows:
- Request for legal action partly or full approved 16
- Judicial settlement  4
- Judgment based on recognition  2
- Withdrawal of legal action  8
- Rejection of legal action  2
- Refusal of request for legal action  2
In 22 cases where the defendant was imposed an obligation (under judgment, under judgment
based on recognition or under judicial settlement) the sanctions were as follows:
- Final prohibition of further violation  2
- Indemnity 18
- Other  ?
The reason for the low number of prohibitions and a high number of indemnities probably lies
in the fact that most of the civil proceedings only concerned indemnities (almost only copyright
disputes) because it was preceded by a previously  issued and considered temporary prohibition of
violation.
In the cases at the first instance completed with a judgment, which imposed on the defendant
the payment of indemnity, the sum of all such imposed amounts totals SIT 7 494 070.00 (principal
without interest).
The statistics cover only the cases which were completed at the first instance by
31 December 1997.  Accordingly, it involves only the disputes that were completed relatively quickly
(in less than two years or even within a few months upon filing of the legal action).  On these grounds
it could be presumed that such statistical data may predominantly cover rather simple cases and those
with a lower value in dispute.  Due to the short time interval between filing of legal actions and the
last considered date of the judgment some more real analysis of results of civil proceedings and
commercial disputes will only be possible upon completion of the remaining 75.71% of proceedings(which are not necessarily comparable by value of dispute and sanctions with those which could
already be included in the analysis).IP/Q4/SVN/1
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Out of the 140 civil cases and commercial disputes filed in 1996 and 1997 there are two cases
completed with a final judgment of the Court of Appeal.  The number of finally completed cases shall
also include at least those which have been completed through judicial settlement.
The result of the proceedings at the second instance is not real for the same reasons as
applicable to the cases completed at the first instan ce (short interval between filing of the legal action
and the judgment of the Court of Appeal).
Results of interlocutory proceedings
Out of 45 requests for issue of a temporary order and/or any other interlocutory measure filed
in 1996 and 1997, Slovene Courts passed their judgments by 31 December 1997 in 41 cases.  By
31 December 1997, there were in total 24 final decisions on requests for interlocutory measures (i.e.completed proceeding against debtor's objection at the first instance as well as the proceeding at the
second instance relating to the appeal of one of the parties).
First instance judgments on requests for interlocutory measures (out of 41 cases):
- Issue of temporary order regarding the prohibition
of violation and/or requisition of the objects of violation 33
-  Issue of decision on security of evidence  1
-  Refusal of request  7
Subsequent treatment of temporary orders:
-  Temporary order remaining in force as final 22
- Abrogation of the order relating to the debtor's objection 
or appeal  9
-  Absence of judgment by 31 December 1997  2
Out of 41 requests for issue of a temporary order issued in 1996 and 1997 and already final as
of 31 December 1997, the figures were as follows:
- Temporary orders issued at the first instance 33 (80.5%)
- Temporary orders issued as final 22 (53.7%)
Differently from the results of civil proceedings and commercial disputes, the data on security
measures may be much more real.  Since the decision-making about temporary orders is much faster,
the analysis of a large majority of requests for judgments (in particular at the first instance) may
already be known.
Criminal proceedings
As the analysis is supposed to cover only the period when the TRIPS Agreement was already
in force in Slovenia (i.e. after 1 January 1996) and because it is supposed to cover only judicial
proceedings and the corresponding results by 31 December 1997, the data on criminal proceedings
will be applicable only with much restriction.  As a matter of fact, a regular criminal proceeding isIP/Q4/SVN/1
Page 16
first preceded by denunciation, follows request for investigation (public prosecutor), investigations
and only then the indictment.  The date concerning the number of persons in the Republic of Slovenia
which are treated as suspects or accused persons in these pre-criminal phases are not available to
criminal courts.  The same applies to possible requisitions of objects of the reproached criminal act
imposed before the requests for legal actions have been filed.
On these grounds it is only possible to ascertain that in the relevant period there were eight
indictments filed with reference to the criminal acts reproached pursuant to Articles 158, 159, 238/1
and 309/3 of the Penal Code.  No judgment has been passed in any of the criminal cases.  The data on
results of criminal proceedings related to the acts committed before 1 January 1996, however, do not
fit into this analysis.
2. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringement fo r each of the years 1996 and 1997, including the
number of raids, prosecutions, convictions and the amount of fines and/or jail terms (including
whether the fines were paid and whether the jail term was actu ally served or was suspended)
and any other information establishing that your criminal system operates effectively to deter
copyright piracy and trademark counterfeiting.
Please see the answer to follow-up question 1 from the United States above.
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