In principle, a sign can only be registered as a trademark if it possesses the necessary distinctiveness. However, there is one exception: what is known as “acquired distinctiveness through use.”
To qualify, it must be demonstrated that, as a result of the use of a sign in commercial traffic (such as through use in the marketplace or in advertising), the relevant public (customers and intermediaries) has come to believe that this sign refers exclusively to the goods and services of o n e specific company.
If you apply to register a sign that is not eligible for protection for one of the following three reasons, you will receive an official request to provide proof of acquired dinstinctiveness:
- The sign is descriptive with respect to the goods or services for which registration is sought
- The sign lacks distinctiveness
- The sign constitutes a generic term with respect to the goods or services for which registration is sought
Examples for trademarks that were registered based on the proof of acquired distinctiveness:
- VÖSLAUER for mineral water
- KINDER for chocolate products
This standard of proof is not about demonstrating the mere use of the sign. The decisive criterion is whether, as a result of such use, the sign has undergone a change in meaning and is now generally perceived as an indication of the origin of the goods or services designated by it from a specific company.
In short: The goal is to demonstrate that, through its use as a trademark, the sign is understood as a trademark by the relevant public.
Acquired distinctiveness through use - the most important questions
- When must distinctiveness have been acquired through use?
already BEFORE the filing date or the priority date
- Where does distinctiveness through use have to be acquired?
domestically, among a significant portion (over 50%) of the relevant public: potential customers, competitors, and (intermediate) distributors throughout Austria (not just in the regional area!)
- For what has acquired distinctiveness to be proven?
for the goods and services listed in the application
- How has the sign to be interpreted?
as an indicator of the commercial origin of the goods and services from a single company or, where applicable, an affiliated group of companies
Examples for acceptable documents of proof
Examples of documents that can be used to prove acquired distinctiveness through use include:
- information and supporting documents indicating when and in what quantity/number the goods/services marked with the sign have been produced, provided, or placed on the market
- all types of advertising materials, such as copies of advertisements (specifying the publication medium, its circulation, and the place and date of publication)
- confirmations from trade fair or exhibition organizers regarding participation in trade fairs and exhibitions
- confirmations from broadcasters regarding any TV and radio spots (date and frequency of broadcast, reproduction of the spots’ content)
- evidence of poster advertising campaigns and direct mailings relating to the relevant products/services marked with the sign
- printouts of websites active at the time of the sign’s application as trademark, including confirmation from the provider regarding the number of visits prior to the application date and their origin (the mere listing of links is not conclusive evidence)
- non-standardized customer confirmations from all Austrian federal states regarding their awareness (since when) and understanding of the sign
confirmations from guilds, trade associations, etc., or the submission of a market research report (Note: It is important that the questionnaire be neutral - that is, that the questions do not presuppose or imply an understanding of the sign as a trademark or business identifier)
The documents remain on file at the Austrian Patent Office and, following a positive conclusion of the proceedings, are subject to inspection by third parties (exception: documents designated as trade or business secrets upon request - see § 50 Trademark Act).
Common deficiencies in supporting documentation
The documents
- do not indicate any connection to a company or to specific products
- predominantly depict the sign not in the form claimed in the trademark application, but with distinctive additions or graphics
- are undated / refer to a period after the filing date / priority date
- are not relevant to Austria / are not relevant to the entire federal territory
- relate solely to internal, unpublished statistics, lists, etc., and therefore cannot have influenced the perceptions of customers, competitors, etc.
Details on the submission of documents proving acquired distinctiveness
Documents proving acquired distinctiveness can be submitted online via the form „other filings related to national trademarks“ – „additional documents and subsequent filings“ or per mail.
Online submission
Please note that only PDF documents (PDF versions 1.3–1.7) can be uploaded. Be sure to give each document a unique name. You can upload a total of 100 MB, with a maximum of 20 files (no single file may exceed 25 MB). If the documents you need to submit are too large to be uploaded via the form, you can split them up and submit them by using the form multiple times.
Video and audio files (e.g., from advertisements) can be uploaded directly using the form “other filings related to national trademarks“ – “other documents” and submitted this way.
Submission per mail
Please do not send us complete books, magazines, etc., in bound form; instead, please photocopy the title page (including the publication date and, if applicable, place of publication) as well as those pages that show the reproduction of the sign being registered in that publication.
Files submitted on a USB drive should preferably be in the following formats: .pdf, .jpeg, .wav, .mp3, and .mp4. Other formats are also permitted, provided they can be processed by the Austrian Patent Office; otherwise, a request for correction will be issued. The total size of the files contained on a single (1) data storage device may not exceed 1.5 GB, and no individual file may exceed 200 MB. The files must be clearly named and numbered, and should preferably be submitted in a zipped format to facilitate faster processing. In addition, a list of the files contained on the flash drive must be included.