What rights does a trademark grant me?
Trademarks are legally protected business identifiers. Through their registration in the trademark register, they grant their owners a geographically limited right of exclusion: Once a trademark is registered, its owner can assert the exclusive right arising from the trademark and legally defend it.
However, a trademark may also be challenged after registration on certain grounds for cancellation, e.g., if it infringes upon an earlier trademark right or another sign, or if someone claims that the trademark should not have been registered. In addition, trademarks can be deleted if they remain unused for more than 5 years.
For EU trademarks – which are protected within the European Union – the provisions of EU law apply. Earlier (trademark) rights from within the EU (e.g. Austria) may form the basis for challenging an EU trademark, but the reverse is also true: an EU trademark may form the basis for challenging an Austrian trademark.
Infringement of trademark rights
If an earlier trademark is infringed by the use of a later sign, a lawsuit may be filed with the Commercial Court of Vienna.
You may sue for: injunctive relief, removal of infringing material, publication of the judgment, reasonable compensation, damages, surrender of profits, rendering of accounts, and information regarding origin and distribution channels.
Decisions of the Commercial Court of Vienna may be appealed to the Higher Regional Court of Vienna (OLG Wien) and subsequently to the Supreme Court of Justice (OGH).
Opposition against trademarks
An opposition may be filed against later trademarks on the basis of the following prior rights, and the retroactive cancellation of the relevant registration may be sought:
- a registered or applied-for (provided it is registered before the decision) and, where applicable, well-known trademark
- a well-known trademark, or
- a designation of origin or geographical indication
An opposition may be filed pursuant to §§ 29a–29c of the Austrian Trademark Act (MSchG) by the owner of the earlier trademark, designation of origin, or geographical indication, or by the person entitled to prohibit the use of a later trademark on the basis of a conflicting designation of origin or geographical indication.
In the case of earlier opposition trademarks that have been registered for more than five years, actual use in the course of trade must also be substantiated if the owner of the opposed trademark raises the defense of lack of use; otherwise, the opposition will be dismissed.
An opposition may only be filed within a period of three months. For national trademarks, the period begins on the date of their publication in the Austrian Trademark Gazette (which is published on the 20th of each month). For international registrations, the period begins on the first day of the month following publication by the World Intellectual Property Organization (WIPO).
You can find out when a trademark registered in the Austrian Trademark Register was published (publication date) in the register database see.ip. You can find out when an international registration was published in the WIPO Gazette.
The decision is made by a legal expert of the Patent Office’s competent Legal Department.
In addition to or instead of an opposition, or if the opposition period is missed, a request for cancellation may also be filed with the Nullity Department of the Austrian Patent Office (§§ 30, 31, 32a of the Austrian Trademark Act (MSchG)).
The fee for filing an opposition against a later trademark registration is €230,- and this must be paid within the opposition period.
A request for an oral hearing before the Legal Department costs €219,-.
The opposition proceedings include elements that facilitate a swift resolution; however, unlike in invalidity proceedings, the prevailing party is not awarded costs, meaning that the parties must bear their own procedural costs and any representation costs.
Amicable solutions in opposition proceedings
If the parties to opposition 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 procedure to reach a settlement agreement between the parties may be cited and considered as a valid reason for an extension of the deadline for the trademark owner to file a response (§ 29b(1) MSchG) as well as to submit comments on evidence of use (§ 29b(3) MSchG).
Upon joint request of the parties, they shall also be granted a cooling-off period of up to six months. During this time, proceedings before the Patent Office shall be suspended in order to find an amicable solution.
The cooling-off period must be requested from the Austrian Patent Office by the expiration of the deadline granted to the respondent to comment on the opposition or—if the statement contested the sufficient use of the earlier trademark—by the expiration of the deadline for commenting on the submitted evidence of use (§ 29b(3a) MSchG).
During the cooling-off period, the parties are free to engage in mediation or another form of alternative dispute resolution.
In ongoing proceedings, responses to official correspondence may be submitted – either along with additional documents or simply on one’s own initiative, e.g., the withdrawal of an application or an opposition. The pleadings and documents must be uploaded as PDF files in uncertified form. Summaries or explanatory notes may also be provided in a comment field.
ATTENTION: The deadline for filing a statement or for commenting on the evidence of use expires simultaneously with the end of the cooling-off period. However, this period may generally be extended if there are valid grounds, such as mediation proceedings. This is important because, unless a substantive response to the opposition is submitted within the deadline, the opposition must be granted as requested, and the registration of the contested trademark must be revoked to the extent requested (§ 29b(1) MSchG).
Whether an agreement is reached during the cooling-off period is – unlike at the European Union Intellectual Property Office (EUIPO) – irrelevant to the costs, as in Austrian opposition proceedings each party bears its own costs.
Challenging trademarks before the Nullity Department
A registered trademark may be declared invalid or revoked – and thereby canceled – on one or more grounds set forth in the Austrian Trademark Act (§§ 30–34, 66, and 66a MSchG).
Some grounds for cancellation may be asserted by any person, e.g., if a trademark should not have been registered (§ 33 MSchG) or has remained unused for more than five years (§ 33a MSchG). Others require the applicant to meet specific qualifications, e.g., that they hold an earlier, confusingly similar right to a distinctive sign, such as an earlier trademark, an earlier trade name, or another business identifier (§§ 30 et seq. MSchG).
In the case of an application under § 30a of the Austrian Trademark Act (MSchG) against a trademark registered by an agent, a request for the transfer of the trademark may be made instead of cancellation.
Applications to the Nullity Department must be submitted in writing and must be substantiated. The specific grounds for cancellation must be stated.
Submissions may be made electronically by participants in the Electronic Legal Exchange (elektronischer Rechtsverkehr – ERV) for all applications to the Nullity Department of the Austrian Patent Office, as well as for all subsequent filings in these proceedings, 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.
The request for cancellation must be served to the trademark owner so that they may file a response within a specified time limit. If the trademark owner does not file a response, the request shall be granted without further proceedings.
During the period for filing a response, a defense of non-use may also be raised. In this case, the applicant must provide prima facie evidence of the actual use of the trademark. Furthermore, in cancellation proceedings, a defense may also be raised that the use of the contested trademarks has been tolerated for a period of five years. In addition, it may be argued that the trademark applied for lacks registrability within the meaning of §§ 4(1)(3), (4), or (5) of the Trademark Act (MSchG). However, if the applicant can prove that the trademark has acquired distinctiveness over time (after registration but before the filing of the application), this defense may be rebutted.
If a response is filed and, if applicable, a defense is raised, an oral hearing before a panel of the Nullity Department takes place following the completion of written preliminary proceedings.
If the request is granted, the contested trademark is retroactively canceled depending on the ground for cancellation: either from the beginning of the term of protection, if, for example, the trademark was not eligible for protection and therefore should not have been registered pursuant to § 33 MSchG, or if it was in conflict with an earlier (trademark) right within the meaning of §§ 30 et seq. of the Trademark Act (MSchG), or at least with effect from the date of the application, e.g., in the case of the ground for cancellation of non-use pursuant to § 33a of the Trademark Act (MSchG). In the event of a partial granting of the application, only the corresponding part of the goods and services is canceled.
If the parties to proceedings before the Nullity Department 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 procedure 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.
How much does a request to the Nullity Department cost?
The fee for a request to the Nullity Department is €661,-.
In proceedings before the Nullity Department, as in court proceedings involving trademark infringement, the “winner principle” under the Austrian Code of Civil Procedure (§§ 40 ff ZPO) applies to the bearing of the costs of the proceedings and 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 Legal Department, such as in opposition proceedings, may be challenged by filing an appeal (Rekurs). Decisions of the Nullity Department may be challenged by filing an appeal (here Berufung or Rekurs, the later for example against cost decisions). 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.
