Legal frameworkDomestic law
What is the primary legislation governing trademarks in your jurisdiction?
- the Austrian Trademark Act 1970, as amended; and
- Regulation (EU) No. 2017/1001 (EU Trademark Regulation).
Which international trademark agreements has your jurisdiction signed?
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
- the Madrid System (including the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol; and
- the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.
Which government bodies regulate trademark law?
- the Austrian Patent Office;
- the Vienna Commercial Court;
- the Vienna Upper Provincial Court; and
- the Austrian Supreme Court.
Registration and useOwnership of marks
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.Scope of trademark
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.Famous foreign trademarks
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.The benefits of registration
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.Filing procedure and documentation
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.Registration time frame and cost
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.Classification system
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.Examination procedure
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.Use of a trademark and registration
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.Markings
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).Appealing a denied 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.Third-party opposition
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.Duration and maintenance of registration
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.Surrender
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.Related IP rights
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.
Licensing and assignmentLicences
May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?
A trademark may be the subject of an exclusive or non-exclusive licence covering the whole or part of Austrian territory and, in respect of the complete list of goods or services, part of it. The licence may be recorded in the trademark register. However, the registration has only declaratory character (ie, only serves to inform the public) and is not decisive for the legal validity or effect of the licence (eg, whether the licensee has a right of action against an infringing third party depends only on the content of the licence agreement and not on the registration of the licence in the trademark register).
The benefit of a recorded licence lies in the fact that trademark infringers cannot successfully argue, if decisive, that they did not know about the licence.
A licence agreement typically includes, besides the usual provisions, duties and rights of the licensor and licensee, especially with regard to any violations of the trademark.Assignment
What can be assigned?
A trademark may be assigned with or without goodwill or the business concerned for all or part of the registered goods and services. Where the assignment would deceive the public, the assignee must consent to any restrictions to remedy the deception.Assignment documentation
What documents are required for assignment and what form must they take? What procedures apply?
Two options exist:
- a deed of assignment or a document referring to the assignment is needed as the original or a copy. The signature of the assignor must be notarised, whereby the notary public must state that the person signing the document is entitled to sign on behalf of the assignor on the date of signing in a legally binding manner. Depending on the countries involved, the notarisation needs to be super-legalised diplomatically or by a Hague apostille. The signature of the assignee requires no legalisation; or
- instead of an assignment document, a unanimous assignment declaration by the parties or their representatives, which does not require any legalisation, may be submitted to the Patent Office. The Patent Office still reserves, however, the right to request any originals, certified copies or further documents. In both cases, representatives just require a non-legal power of attorney. Professional representatives may simply rely on their power of attorney without filing it with the Patent Office.
Must the assignment be recorded for purposes of its validity?
Recording an assignment is not mandatory. However, until such time as the transfer of the mark has been recorded, the right to the mark may not be asserted before the Patent Office and all communications concerning the mark served on the registered owner of the mark shall have effect with regard to the mark’s acquirer.Security interests
Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?
Licences, liens and other security interests may be recorded in the trademark register. However, that register is only declaratory (serving to inform the public). This means that the entry of such interests etc in the trademark register is not identical to the acquisition of the right and is not binding on third parties.
The signature of the licensor or pledgor, etc, must be notarised, whereby the notary public must state that the person signing the document is entitled to sign on behalf of the licensor or pledgor, etc, on the date of signing in a legally binding manner. Depending on the countries involved, the notarisation needs to be super-legalised diplomatically or by a Hague apostille. The signature of the licensee or pledgee, etc, requires no legalisation.
The application for registration may be filed either by the licensor or pledgor, etc, or by the licensee or pledgee, etc, on the basis of an original document or a copy thereof. Any representative needs a respective power of attorney.
It is not necessary to file the complete licence contract or lien document, etc. For registration, a simple licence declaration or lien declaration from which the essential conditions can be gathered is sufficient.
EnforcementTrademark enforcement proceedings
What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?
Infringers (dilutive users are also regarded as infringers) of Austrian trademarks or of international trademarks covering Austria may be sued in the first instance at the Vienna Commercial Court or Vienna Provincial Court for Criminal Matters, or both, on the basis of Austrian Trademark Act, which contains civil and criminal claims against trademark infringements. The second instance is the Vienna Upper Provincial Court. If admissible, for example, if questions of general importance are touched on, then the third instance is the Supreme Court of Austria.
Infringements of EU trademarks may be sued in the first instance at the Vienna Commercial Court or the Vienna Provincial Court for Criminal Matters.
Seizures of counterfeit goods may be effected upon request by the Austrian Customs Authorities according to EU regulations and the Austrian Product Piracy Act. The withheld goods shall be destroyed if the importer does not oppose the seizure. If it does oppose, however, it is up to the trademark owner to launch, within a given term, a civil or criminal proceeding; otherwise the counterfeit goods are released.Procedural format and timing
What is the format of the infringement proceeding?
In civil matters, a single judge decides in the first instance. In the second or third instance, the decision is released by a board or senate. Any type of suitable evidence is permitted, including live testimony. There is no discovery procedure. Each party may rely on private experts and their opinions. The court may appoint an official expert, for example, when acquired distinctiveness is questionable.
In each instance, a decision in the regular proceedings may be expected after about one year. In preliminary injunction proceedings, the periods may be shorter.
Criminal trademark matters are also heard in the first instance by a single judge.Burden of proof
What is the burden of proof to establish infringement or dilution?
The full burden of proof lies with the plaintiff, that is, the trademark owner or (if empowered) his, her or its licensee. Any type of evidence that is deemed to be appropriate may be brought forward.Standing
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
Remedy may be claimed by anybody whose rights to a trademark are infringed, namely, by the trademark owner or a derivative thereof (the licensee, etc). The original or derived trademark right is to be proved to the court.
Criminal complaints may be raised by the injured physical or legal person within six weeks of the knowledge of the action and the offender.Border enforcement and foreign activities
What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?
Based on trademark rights (Austrian, EU or international trademarks) an owner may file a request with the Austrian customs authorities for seizure of counterfeit goods in import, export and transit. When the goods were brought into the market of a third country without consent of the trademark owner, his, her or its entitlement for prevention of the transfer lapses. However, if the goods’ declarant 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.
In general, foreign activities cannot support a charge of infringement or dilution. However, for example, if a company has a prior foreign (registered or unregistered) trademark and a competitor files in Austria a similar or identical junior trademark to hinder the first company from entering into the Austrian market), then the first company may successfully sue the competitor for having registered its trademark in bad faith so that the junior trademark will be cancelled ex tunc.Discovery
What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
In accordance with Directive 2004/48/EC (enforcement of intellectual property rights), which was introduced into domestic law, the Vienna Commercial Court may order that the infringing party should submit well-defined evidence that it holds. Preliminary injunctions may not only be released for securing of the claim itself but also for preservation of evidence. Such preliminary injunctions may even be released without hearing the defendant if the injured party may probably suffer a non-repairable damage or if there is a risk that evidence will be destroyed. Searching of premises under civil law (as well as under criminal law) may be ordered.Timing
What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
In provisional proceedings claiming a temporary injunction, a decision in the first instance may be expected within a couple of months. For each instance of appeal, the time frame is, at most, one year. In main proceedings, each instance might last about one year.Limitation period
What is the limitation period for filing an infringement action?
The right of a trademark owner to sue an infringer is forfeited after five consecutive years of knowledge and toleration of the infringement, as long as the infringement has not occurred in bad faith.Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
Costs depend on the value of the litigation. In the first instance, the overall costs range from about €7,000 to about €14,000. In the instances of appeal, one should calculate at least €10,000 per instance. A successful plaintiff can recover part of the costs from the infringer. It is generally regulated by law that the losing party must refund the costs of the procedure and representation to the winning party on basis of the value of litigation. However, these costs are usually lower than the overall costs of the proceedings.Appeals
What avenues of appeal are available?
Resolutions and judgments at first instance (Vienna Commercial Court) may be recoursed or appealed at the Vienna Upper Provincial Court. If admitted, another appeal (revision or revisional recourse) to the Supreme Court of Austria may be launched. If not admitted, an extraordinary appeal to the Supreme Court may be filed.Defences
What defences are available to a charge of infringement or dilution, or any related action?
Substantive defence arguments may be:
- the trademark in suit is not valid;
- the allegedly infringing sign is not used as a trademark;
- lack of confusion (no similarity between the trademark in suit and the alleged infringing sign, no similarity of goods and services);
- the trademark in suit is not well known;
- fair use of the allegedly infringing sign with due cause;
- prior rights in respect of the trademark in suit on the basis of qualified pre-use;
- exhaustion of the trademark right;
- bad faith of the plaintiff; or
- limitation or forfeiture of the right to sue.
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?
The civil remedies available include:
- ceasing of the infringement (preliminary or permanent injunction);
- claim for elimination of the circumstances constituting the violation of the law (eg, destruction of the infringing goods);
- rendering of account;
- publication of the judgment; and
- monetary relief, namely:
- adequate remuneration (licence analogy);
- twice that remuneration in the event of gross negligence or intention; and
- damages, in the event of wilful infringement, including the profits of which the plaintiff has been deprived, or surrender of the profits realised by the infringer through the trademark infringement.
If the trademark in suit has been registered for more than five years, a preliminary injunction is only granted if it is substantiated that the trademark is not vulnerable to cancellation owing to non-use.
The available criminal remedies are:
- a monetary fine of up to 360 times the per diem rate for calculating fines; and
- imprisonment for up to two years in the case of professional infringement.
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
Alternative dispute resolution techniques are commonly used and an attempt is first made to settle the pending dispute by negotiations. Sometimes mediation is accepted by the parties or they agree to contact a local or international arbitration board. The benefits of such techniques lie in saving time and money. The risks are that all these measures do not exclude eventually going to court.
Update and trendsKey developments of the past year
Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?Amendment of the Patent Office Fees Act
The Patent Office Fees Act was amended by Federal Gazette BGBl I No. 89/2018, published on 21 December 2018. The Patent Office Fees Act was amended as of 1 January 2019 for fees’ reduction.
The most important amendments are:
- The national fee in connection with an international trademark application was raised from €135 to €141. However, in cases using the Madrid e-Filing System, the fee is reduced to 141 Swiss francs, which, according to the present exchange rate, equates to an approximate reduction of €20.
- The fee for any request to the Nullity Department of the Patent Office was reduced from €470 to €320. In connection with the unchanged lump-sum document fee of €230, according to Fee’s Act, the total fee is now reduced from €700 to €550.
- In the course of a request to register a change of name encompassing several IP rights of the same type, one single fee for the request - currently €41 - is to be paid, in addition to the document fee - currently €40 - making the total fee €81, which is separate from the number of IP rights of the same type.
- Patent Office Fee Regulation BGBl II No. 469/2005, as of No. 234/2017, which had regulated several petty fees, was repealed without substitution. However, for extracts from the register and priority documents, document fees according to the Fees Act are still to be paid.
The Trademark Act was amended by BGBl I No. 91/2018, published on 21 December 2018, in force since 14 January 2019. Directive 2015/2436/EU (to approximate the laws of the member states relating to trademarks) was implemented in a second phase into the Trademark Act. The essential changes are as follows.Trademark definition
Trademarks may now consist of any signs as long as they are distinctive and may be presented in any way (ie, not only graphically).Exceptions from registration
Signs of international organisations, published in Austria, may now be registered as a trademark as long as they neither insinuate (by way of the list of goods or services) a close relation to such an organisation nor deceive in that respect.Absolute grounds for refusal
The list of absolute grounds for refusal was supplemented in accordance with Directive 2015/2436/EU:
- designations of origin and geographical indications;
- traditional terms for wine;
- traditional specialities; and
- terms for plant varieties.
A trademark owner can now (also) 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. This 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 onto the market in the country of final destination.
A trademark owner can now act in advance against designation means (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.
Based on a registered trademark one could not, to date, prohibit a third party to use its name or address in the course of trade as long as the use was made in accordance with honest practices. This was applied to individual as well as legal persons. From now hence it is applied just to natural persons (ie, trade names and names of legal persons are no longer privileged).Types of use
The catalogue of trademark use types was completely amended (including the grounds of considerations) to Directive 2015/2436/EU.Trademark licences
The terms of trademark licences were supplemented with respect to the rights of licensees and extended to trademarks in application status. In general, licensees of any type are empowered to file suits only with the consent of the trademark owner; however, exceptions exist for exclusive licensees. Licensees can join a suit brought by the trademark owner as intervener.Trademark application
The requirements for a trademark application and registration were adapted to the trademark types now currently possible. Detailed provisions were issued by the Patent Office Regulation 2019 - published in the Patent Gazette 2018, No. 12, Attachment - which came into force on 1 and 14 January 2019, respectively.Opposition proceedings
An opposition against a registered trademark can now be based, in addition to identical or similar senior trademarks covering identical or similar goods or services, on:
- 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); and
- a senior designation of origin or geographical indication.
If a trademark owner brings, in the course of an opposition proceedings, the defence of lack of use of the opposing trademark, until recently, an opposer had prove the use of their opposing trademark on the publication date of the opposed trademark. Now, evidence is to be brought forward for an earlier date, namely the priority (application) date of the opposing trademark.
Analogous with the EU Trademark Regulation, it is now possible to get, upon a joint application of both parties, an opposition proceeding cooling-off-period of up to six months.
An opposition proceeding is deemed terminated on the day on which a suspension agreement of both parties is received by the Patent Office or appeal court (Vienna Upper Provincial Court or Supreme Court).Cancellation proceedings
In a cancellation proceeding based on a senior trademark, the defendant can now raise the objection that the senior trademark supporting the action could have been cancelled (in the case of domestic trademarks) or invalidated (in the case of EU trademarks) on the priority or application date of the violated junior trademark. If it holds true, the plaintiff will not succeed in the scope of the vulnerability of his, her or its trademark albeit, however, that his, her or its trademark is not declared null and void. The objection can be based on lack of distinctiveness, descriptiveness or a generic term, each of which is not yet compensated by an acquired distinct character on the application date of the junior trademark.
The present existing grounds for cancellation were supplemented by the following additional grounds:
- senior designation of origin or geographical indication;
- claim for discontinuance according to the Copyright Act (eg, title of a work as word mark); and
- claim for discontinuance according to the Design Act (eg, planar design as (part of) a design mark).
The vulnerability of a trademark owing to lack of distinctiveness, descriptiveness or a generic term can now be compensated by evidencing the acquired distinctiveness on the filing date of the cancellation request. This was not possible until now because the priority or application date of the violated trademark was crucial.
The start of the five-year grace period has changed from the registration date to being dependent on the fate of the trademark and goods and services, as follows:
- If no opposition has been filed, the grace period of domestic trademarks starts at the end of the opposition period (ie, presently three months after registration) of international trademarks one year after the publication date of the Austria designation in the WIPO Gazette.
- In cases where an opposition has been filed or a refusal action against an international trademark has been launched, the period starts with the final decision on the opposition or the final termination of the refusal proceedings and refers to the goods or services involved by the respective procedure.
- In cases where opposition proceedings have ceased owing to opposition withdrawal, settlement of the opposition proceedings in the scope of a reduced protection of the opposing trademark or termination of the opposition proceedings by a suspension announcement of the parties, the five-year grace period starts with the force of law of the respective decision or with the receipt of the suspension announcement, respectively.
- The start of the five-year grace period for one and the same trademark can therefore differ for individual goods or services, depending on whether or not they were affected by the opposition or refusal proceedings. For Austrian trademarks, the respective start of the five-year period concerning the respective goods or services is now entered into the trademark register.
The enforceability of a trademark right in an infringement suit was adapted to the cancellation or invalidation grounds, respectively. A plaintiff can succeed with this trademark against a defendant just in that scope in which he or she could effect the cancellation or invalidation of the defendant’s trademark (designation). However, this codification has not resulted in a change because, according to established Austrian case law, the courts have to independently assess whether and if a registered trademark grants protection and is enforceable.Representation
The obligation to appoint a representative has been eased. A representative must no longer have a domicile or establishment in Austria. Instead, he or she may reside in the European Economic Area or in Switzerland rendering it unnecessary to appoint an authorised recipient residing in Austria. Applicants from the European Economic Area or Switzerland may represent themselves before the Nullity Department of the Austrian Patent Office.