Trademark registration and use in Austria

Registration and use

Who may apply for registration?

Any physical or legal person, alone or in combination, may apply for a trademark, irrespective of running a related business. Collective marks and guarantee marks may be applied for by associations having legal personality as well as by corporate bodies.

What may and may not be protected and registered as a trademark?

Trademarks may consist of any signs as long as they are distinctive and may be presented in any way (ie, not only graphically) in particular words, including personal names, designs, letters, numerals and the shape or style of the goods, provided that such signs are capable of distinguishing the goods or services of one enterprise from those of other enterprises.

Three-dimensional marks and sound marks are protectable when fulfilling the above-mentioned criteria.

Haptic or olfactory trademarks are still not registrable.

Signs that exclusively consist of state coats of arms, national flags or other national emblems or of the coats of arms of Austrian provincial or local authorities, official test or guarantee signs and signs of international organisations to which a member country of the Paris Convention belongs are excluded from registration.

Further excluded signs include those:

• lacking distinctiveness;
• that are descriptive;
• that have become customary in the current language;
• that consist exclusively of the shape of the goods resulting from their nature or necessary to obtain a technical result or giving them a substantial value;
• violating public policy or accepted principles of morality;
• that are deceptive;
• containing or consisting of protected geographical indications or designations of origin;
• resembling traditional terms for wine or specialities; and
• that are terms for plant varieties.

Can trademark rights be established without registration?

Non-registered trademarks are termed in Austria as (mere) ‘signs’ and may have protection according to article 9 of the Austrian Law Against Unfair Competition under the following conditions.

Names of establishments or premises, outlets etc, as well as domain names (ie, sub-level domains) are considered as ‘special designations’ provided they do not correspond with the name or firm name itself. They, therefore, enjoy protection if misused by a third party in the course of business. However, direct protection is only accepted in the case of distinctiveness per se. Otherwise, acquired distinctiveness has to be proven. Special designations are considered (eg, names of establishments or premises and outlets) as well as domain names (ie, sub-level domains) as long as they do not correspond with the name or firm name itself. Business symbols and other devices used to distinguish one enterprise from another, particularly the shape of goods, their packaging or wrapping and business papers (eg, letters showing the letterhead, the firm’s logo or name, firm stamps on letters) that are recognised as being representative of the enterprise by the trade involved are also deemed to constitute special designations of an enterprise. However, they enjoy protection only with proof of acquired distinctiveness among the business circles involved, which depends on the specific case and may sometimes encompass the whole population of Austria, or, on the contrary, only a limited circle of specialists.

The injured party may sue the infringing party at the Vienna Commercial Court to refrain from misuse, whereby the usual remedies (see question 37) are available. The claim for injunctive relief and elimination lapses, however, after six months from the end of the infringement. For all other claims there is a limitation period of three years. The claim for injunctive relief lapses after five years of knowledge of the infringement of the sign, provided that the infringer has not acted in bad faith.

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

The owner of a famous foreign trademark can act against an applicant or user of an identical or confusing similar registered or unregistered domestic trademark claiming that the domestic applicant or user acts in bad faith to hinder the foreign owner to enter the domestic market. Any appropriate evidence for the fame of the foreign trademark is accepted.

Based on a senior well-known trademark in the sense of article 6-bis of the Paris Convention, which does not need to be registered or effective in Austria, opposition against a junior domestic trademark can be filed.

What are the benefits of registration?

A registered trademark confers on its owner the exclusive right to prevent third parties that do not have his or her consent from using, in the course of trade:

• a sign that is identical to the trademark in relation to goods or services that are identical to those for which the trademark is registered;
• a sign that is identical or similar to the trademark in relation to goods or services that are identical or similar to those for which the trademark is registered, if a likelihood exists of confusion on the part of the public, including the likelihood of association between the sign and the trademark; or
• a sign that is identical or similar to the trademark in relation to goods or services that are not similar to those for which the trademark is registered, where the latter is well known in Austria and where use of that sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trademark.

An owner of a registered trademark can stop the transfer of goods from third countries, where they were brought into the market without his consent, ie, he or she can more effectively act against product piracy. The entitlement for prevention lapses, however, if the declarant of the goods can prove, in the course of the product piracy suit, that they can lawfully be brought into the market in the country of final destination. He, she or it can also act in advance against designation means (eg, packaging and labels, etc) comprising the trademark or to which the trademark can be adapted well before these means are brought into contact with the goods and services.

A registered trademark is prima facie evidence of an existing right before any administrative authority or court. However, in a trial, a court may examine the validity of a registered trademark in suit as a preliminary question.

On the basis of a registered trademark, one may apply for border seizures of counterfeit goods.

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

A trademark application must be filed in writing. Electronic filing is available, accompanied, if applicable, by any data carrier presenting the trademark and the goods or services. Trademark searches are available. In the course of an application a search can be requested when paying an additional fee. The official fee for a single hardcopy (paper) trademark application is €300; for online, €280. For collective or certification marks the official fees are €480 and €460 respectively. No additional documentation, referring to the applicant, is needed. An appointed domestic representative requires a power of attorney.

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

If there are no complications, a registration can be obtained within two-to-six months; otherwise it can take several years. Costs for up to three classes (official and attorney’s fees) total between €1,500 and €2,200. Extra costs may arise for further classes (multi-class applications are possible) or in the case of complications (eg, adaptation of lists of goods, professional efforts in the case of objections and complaints about rejection decisions). Registration comes formally into effect on the date of entry into the Trademark Register.

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Goods and services are classified according to the Nice Classification. Class headings as well as items from the published list of goods and services (eleventh edition) may be used. Terms not contained in the list often encounter objections. Multi-class applications are available and might save, depending on the number of classes, up to about 50 per cent of the total costs in comparison with an equivalent number of theoretical single-class applications.

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

Applications are not examined for conflicts with other trademarks. Thus, parties cannot interfere in the application procedure. There is only an examination as to formalities (eg, the correct classification) and absolute bars. Objections raised by the Patent Office may be responded to by the applicant. An official similarity report is released upon request by the applicant.

Senior (trademark) rights are no bar to registration, but may give rise to opposition or cancellation action after registration of the new trademark.

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Pre-use of a trademark is not required for registration. Therefore, no proof of use has to be submitted. Based on a foreign application one can claim within six months priority for a domestic application, irrespective of whether the foreign application leads to registration. Mere use in a foreign country does not give rise to priority.

Starting from the end of the opposition period or the end of an opposition proceedings respectively, a trademark owner has a five-year grace period within which the trademark cannot be contested on the grounds of non-use. After that period anyone may file a cancellation action based on non-use. In such a case, maintenance of the trademark will depend on proof of use or justification of non-use.

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The indication of a trademark is not compulsory and therefore has no legal effect whatsoever. Analogous to foreign regulations, some trademark owners use an ® or the letters ™ in a circle to indicate that the trademark is registered. However, such indication has no benefit.

On the other hand, it might be deceptive if, for example, the symbol ® appears after the word of a registered combined word-design mark, when the word per se does not enjoy protection. It also might be regarded as deceptive when the symbol ® is used in combination with a trademark not yet registered (pending application).

Is there an appeal process if the application is denied?

The rejection of an application can be recoursed at the Vienna Upper Provincial Court. Against a negative resolution, revisional recourse can be lodged at the Supreme Court of Austria, provided that all prerequisites are fulfilled.

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

An opposition may be filed within three months starting from the publication date of a registered Austrian trademark, or within three months starting with the first day of the next month after the publication of a registered international trademark covering Austria, respectively. Opposition may be based on:

• a senior trademark application or registered trademark (ie, Austrian trademark, international trademark valid in Austria and EU trademark);
• a senior trademark well known in Austria and covering dissimilar goods or services;
• a senior notorious trademark (which does not need to be registered or effective in Austria); or
• a senior designation of origin or geographical indication.

The opposition procedure is generally conducted in written form. At the request of one of the parties an oral hearing must be held. An oral hearing may also be held ex officio. A plea of lack of use of the trademark on which the opposition was based may be brought forward. In that case the opposer need not furnish full proof of use but must only show prima facie evidence of use. In the case of an action (eg, based on non-use) against the trademark on which the opposition is based the opposition proceedings shall be suspended. If there are several oppositions against the same trademark the most promising opposition may be continued, whereas the other oppositions will be suspended. Upon a joint application of both parties it is possible to get a cooling-off period of six months at the most. An opposition proceeding is deemed terminated on the day a suspension agreement of both parties is received by the Patent Office or appeal court (Vienna Upper Provincial Court or Supreme Court). The decision on an opposition is rendered by a single member of the Legal Department of the Austrian Patent Office. If an opposition is partly or fully granted the opposed trademark is quashed (not cancelled) from the beginning of its duration of protection. An opposition decision may be recoursed at the Vienna Upper Provincial Court. In opposition proceedings each party must bear its own costs, which may be about €1,100 if no proof of use or oral hearing is requested.

After registration, a third party may file a cancellation action with the Nullity Department of the Austrian Patent Office.

Any third party may base its action on:

• absolute grounds (lack of distinctiveness, descriptiveness, deceptiveness or generic name, etc) at the time of application;
• bad faith in the course of the application (in the foregoing two cases, the trademark will be deleted retroactively from the date of registration);
• development of the trademark to become deceptive or generic after registration (in these cases the cancellation will be effective from the proven date of the finalised development);
• non-use (in this case the cancellation will have effect from five years before the date of filing the cancellation action, but not earlier than five years after registration);
• bad faith, for example, purported by a foreign brand owner whose brand, either identical or similar, is registered in Austria by someone else with the intention to hinder the foreign brand owner from entering the Austrian market;
• a senior designation of origin or geographical indication;
• a claim for discontinuance according to the Copyright Act (eg, title of a work as word mark); and
• a claim for discontinuance according to the Design Act (eg, planar design as (part of) a design mark.

The holder of a prior right (registered or unregistered trademark or trade name, etc) may base a cancellation action on relative grounds, namely, confusing similarity between the senior sign and junior trademark in respect of the registered goods and services. In the case of a well-known senior right, cancellation may also be demanded for dissimilar goods and services. In these cases, the cancellation has retroactive effect from the date of registration. However, the right to file a cancellation action by a prior rights holder based on relative grounds is forfeited after five years from the date of knowledge of the use of the younger trademark.

In cancellation proceedings an oral hearing is scheduled after prior exchange of the applicant’s writ and trademark owner’s counter-writ. The final decision of the Nullity Department of the Patent Office may be appealed at the Vienna Upper Provincial Court. Costs for a cancellation action in each instance may be about €5,000.

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The trademark right is effective from the date of registration in the trademark register.

The period of protection of trademarks registered from 1 September 2018, lasting 10 years from the day of application, may be extended repeatedly for 10-year periods by paying a renewal fee.

The protection period of trademarks registered before 1 September 2018 ends 10 years after the end of the month in which the trademark was registered. Whenever the period of such trademarks ends, the next period will be calculated from the respective application date and the renewal fee will be reduced in relation to the reduction of the next following period.

Besides the renewal fee, no other requirements, such as proof of use, are necessary. The Austrian Patent Office does not release a renewal certificate, so the payment receipt is the only proof of renewal besides an extract from the trademark register. The payment can be effected during the last year of the 10-year period or, with an excess fee, within six months of expiry thereof.

What is the procedure for surrendering a trademark registration?

A trademark owner can surrender his, her or its trademark either by filing a request with the Austrian Patent Office or by non-payment of the renewal fee.

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Further IP rights accord trademark protection as follows:

• trademarks, especially non-registered ones, can be protected by the Unfair Competition Act;
• names of physical or legal persons, including pseudonyms, are protected by the General Civil Act;
• company names or designations of enterprises are protected by the Company Act;
• trademarks that are regarded as a ‘work’ in the sense of the Copyright Act (Creator’s Act) have protection by that Act; and
• if a trademark resembles a two- or three-dimensional design it may also claim protection by the Design Act.

What regime governs the protection of trademarks online and domain names?

The protection of registered or non-registered trademarks, names, designations, signs - irrespective of on- or offline - is governed by one and the same regime (ie, overwhelmingly by the Trademark Act, the Unfair Competition Act and the General Civil Act). In a conflict between domain names and trademarks on the one hand and priorities and on the other, the respective fields of business or goods and services are crucial for evaluating against a risk of confusion.