Enforcement

Trademark 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.
Remedies

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.
ADR

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.