What rights does a design grant me?
Designs protect the appearance of manufactured goods, which may be artisanal or industrial products. They grant their holders an exclusive right for a defined term and territory. Only the design holder is entitled to use the design commercially and defend it through legal means.
However, a registered design can also be challenged, for example if the design was not new at the time of filing or on the priority date, or if it lacks individual character compared to the existing body of designs.
Infringement of design rights
If a design right is infringed by an unauthorized individual, a lawsuit may be filed with the Commercial Court of Vienna.
You may sue for: injunctive relief, destruction of the infringing goods, removal, publication of the judgment, reasonable compensation, damages, surrender of profits, rendering of accounts, and information regarding origin and distribution channels.
Challenging registered designs before the Nullity Department
A registered design may be declared invalid upon request by a third party if, for example, it is proven that the design was not new or lacks individual character. However, any disclosure made by the creator, their legal successor, or resulting from an abuse committed against them will be disregarded if it occurred no more than 12 months before the filing date or priority date. This is the grace period in these cases.
Anyone claiming to have a right to the design may, instead of seeking invalidation, request the revocation and transfer of the design right.
Furthermore, a request may be filed with the Nullity Department of the Austrian Patent Office to determine whether a product falls wholly or partially under a design right.
Requests to the Nullity Department must be submitted in writing and must be substantiated. If you are a participant in the Electronic Legal Exchange (elektronischer Rechtsverkehr—ERV), you can file all submissions to the Nullity Department of the Austrian Patent Office, as well as all subsequent filings related to these proceedings, electronically using the direct delivery function to the Patent Office’s ERV code Z983703. Furthermore, for anyone who does not participate in the ERV, the General Online Form (Allgemeines Online Formular – AOF) is available for the online submission of filings to the Nullity Department.
A request to the Nullity Department must be served to the holder of the intellectual property right so that they may file a response within a specified time limit. If no response is filed, a request for complete invalidation of a design shall be granted without further proceedings.
If the parties to invalidity proceedings are engaged in or are about to engage in settlement discussions, they are free to conduct mediation or another form of alternative dispute resolution to increase the chances of reaching an amicable settlement. The use of a mediation process to reach a settlement agreement between the parties may be cited and considered as a valid reason for an extension of the deadline for filing a response, a statement, or a comment. A hearing may also be adjourned to allow for mediation between the parties, with the aim of facilitating a settlement.
Decisions of the Austrian Patent Office in invalidity proceedings may be appealed to the Higher Regional Court of Vienna (OLG Wien) and the Supreme Court of Justice (OGH).
How much does a request to the Nullity Department cost?
The fee for each application to be heard before the Patent Office’s Nullity Department is €661,-.
In infringement proceedings as well as in proceedings before the Nullity Department, the “winner principle” under the Austrian Code of Civil Procedure (§§ 40 et seq.) applies to the bearing of the costs of the proceedings as well as of representation. This means that the losing party must reimburse the prevailing party for the costs of the proceedings and of their legal representation.
Appeals against decisions and rulings of the Patent Office
Decisions of the Nullity Department of the Austrian Patent Office may be challenged by filing an appeal. Such appeals must be filed with the Patent Office in writing, with a statement of reasons, and within the prescribed time limit. Appeals are decided upon by the Higher Regional Court of Vienna (OLG Wien) in the second instance and by the Supreme Court of Justice (OGH) in the third instance. The fees for these appeals can be found in Fee Item 13a(a) Austrian Court Fees Act.
