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Changes

Trademarks can be extended or changed later. However, not unrestricted.

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Expansion after applying

Did you forget to include essential goods and/or services in your trademark application? If so, you do not have to make a new application, and instead can simply expand the list of goods and services for your trademark. You can do this either during an ongoing application process or after a trademark has been registered. The trademark’s priority for the additional goods and services will apply from the date on which the expansion application is filed.

The advantage of doing this over making a separate mark application for the additional goods/services is that it is more economical to make the additions in an ongoing application process, i.e. you only have to pay a fraction of the fees that you would be charged otherwise. However, if the goods/services are expanded after the trademark has been registered, all fees have to be paid again, although only one trademark will need to be renewed through payment of the renewal fee when the protection period expires.

To make an expansion application, please use Form MA 650.

The rules for expansion applications are the same as those for trademark applications.

Changes after registering Austrian Trademarks

  • To change the representative, the representative’s address or the trademark owner’s address, you simply need to write a letter, specifying the property right in question. The application is free of charge.
  • To change the company name (without changing the legal entity), you need to write a letter, enclosing an extract from the companies register showing ‘historical data’ that documents the change. The application is subject to a charge.
  • Transferring a trademark to a new trademark owner (changing the legal entity) can be initiated by any party involved by submitting an application (no form required). The application must precisely specify the trademark to be transferred. The purchase agreement or other document (the original or a certified copy) proving the transfer of title must be enclosed with the application. Extracts from the Austrian companies register do not need to be certified. The signature of the original registered owner(s) must be certified by a notary public to confirm its authenticity and, where companies are concerned, to confirm the (exclusive) signatory authority of the signing party. In addition, the deed must bear the (uncertified) signature of the new owner or their representative. The application is subject to a charge (see Information on fees); the fee must be multiplied by the number of trademarks affected by the transfer of ownership.
  • You can apply to fully or partially surrender a trademark free of charge by writing a letter (no form required). The application must be signed by the trademark owner registered in the trademark register (NB: where companies are concerned, the application must be signed by an authorised signatory of the company). Any differences from entries in the trademark register must be substantiated. You cannot reinstate a trademark once it has been surrendered.
  • Any party involved can apply (no form required) to register (and later cancel) a licence granted or a contractually agreed lien on a trademark. In this case, the licence agreement or the letter of lien (the original or a certified copy) must be enclosed. The signature of the licensor(s) and/or lienor(s) must be certified by a notary public to confirm its authenticity and, where companies are concerned, to confirm the (exclusive) signatory authority of the signing party. The application is subject to a charge (the fees are the same as for transfers of ownership); the fee must be multiplied by the number of trademarks affected by the granting of the licence and/or the lien. An executive lien is also registered through a judicial request; this is free of charge.

NB: A sale or the granting of a licence or lien, for example, does not have to be entered/shown in the trademark register per se in order to be legally valid. However, this is recommended for a variety of reasons, primarily to guarantee that these transactions are broadly publicised.

The registration of an international trademark can

  • be limited by:
    • limiting the list of goods and services, as well as
    • registering a total surrender in respect of some, but not all, of the contracting parties, or 
    • fully or partially cancelling the international registration in respect of all contracting parties.
  • be extended by:
    • subsequently designating contracting parties.

    Subsequent designation can be carried out either by making a direct application to WIPO to extend the protection territory (form MM 4) or by applying to the Austrian Patent Office (no form required); in this case, it is essential that all information requested on the form is provided. The protection period for the subsequent designation will expire on the same date as the protection period of the international registration.

    You can use either English or French for the subsequent designation. If an application for subsequent designation is made for an international trademark that is based on a basic application, a declaration from the originating office (= Austrian Patent Office) regarding the basic trademark is required in order to confirm that the basic application has matured to registration.

    In addition, you can apply to make changes to the register entry in the following cases: the trademark is transferred (wholly or partially) due to a change of owner, or the name (company name change) and/or address changes.

    Please refer to the Schedule of Fees in information sheet MA 571 (parts II and III) or the WIPO website for the exact fees payable directly to WIPO for subsequent designation and for other changes to the register entry.

    NB: You cannot expand the list of goods and services (which is possible for Austrian trademarks) after filing an application.

    Further information

    Information sheet MA 571

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