Trade and Service Marks
– Trade and Service Marks Act 1970, as amended up to Federal Law published in the Federal Law Gazette I No. 91/2018.
Membership in International Conventions
– Paris Convention, Stockholm Act.
– Madrid Agreement Concerning the International Registration of Marks, Stockholm Act with invocation of Art. 3bis.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 13, 1968.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, Stockholm Act, since November 30, 1969.
– Convention Establishing the World Intellectual Property Organization (WIPO), since August 11, 1973.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since April 13, 1999.
– European Union Trade Mark Regulation.
Applicant: anybody (firm, company, holding company, corporation or private person). Associations being legal persons may also apply for the registration of marks, which should serve the businesses of their members.
Applicants not living in the country: must appoint a professional representative residing in Austria. However, for persons having their residence or place of business in the EEA or Switzerland, it suffices to appoint an authorized person resident in Austria as address for service.
Priorities: the priority term is six months from the date of filing the first application abroad.
Registrable: (a) all signs which are capable of being represented graphically, i.e. words, persons’ names, pictures, letters, numbers, sounds, shape or packaging of the goods themselves, provided they are distinctive; (b) indistinctive and descriptive signs and signs representing generic names if they have acquired distinctiveness among the consumer circles concerned because of use in Austria prior to the application.
Not registrable: (1) signs exclusively consisting of armorial bearings, flags or other State emblems or of armorial bearings of Austrian provincial corporate bodies and communities; official signs and hallmarks indicating control and warranty introduced in Austria or, according to a notice to be published in the Federal Law Gazette (“Bundesgesetzblatt”), in a foreign country for the same or for similar goods and services for which the mark is intended; emblems of international organizations to which a member State of the Paris Convention for the Protection of Industrial Property belongs, provided that these emblems have been announced in the Federal Law Gazette; (2) signs which cannot be represented graphically; (3) signs devoid of any distinctive character; (4) descriptive statements, in particular indication of quality; (5) generic terms usual according to established practices in the trade; (6) signs which consist exclusively of the shape which results from the nature of the goods themselves or which is necessary to obtain a technical result or which gives substantial value to the goods; (7) signs which are contrary to public policy or to accepted principles of morality; (8) signs which are of such nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services; (9) signs which comprise or consist of a geographical indication by which wines are designated and which are intended for wines which are not of this origin or by which spirits are characterized and which are intended for spirits which are not of this origin.
Classification: International Classification of Goods and Services.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (no legalization required);
2. List of goods and services;
3. If priority is claimed: indication of country, date and file number of basic foreign application;
4. If mark is other than a word in block lettering: 5 prints (max. size: 8 x 8 cm). In the case of sound marks, a sound reproduction of the mark on a data carrier in addition to the representation of the mark in musical notation or sonogram;
5. If applicant is an association: a copy of the statutes of the association.
Electronic filing: available.
For a change of name: an extract from the Commercial Register (or equivalent). The document must show both the former and the new name (no legalization required).
For a change of address: no document is required.
Examination: application is examined as to registrability as well as to similarity to marks previously filed for the same or similar products or services (the latter examination being for information purposes only; prior similar marks are no impediment to registration). In case of objections to the registrability of the mark, the applicant will be notified and given a chance to reply within an extendible term.
Letters of consent: not accepted.
Amendment of application: modification of mark not allowed; amendments of the list of goods possible.
Appeal against rejection may be lodged.
If the examination does not lead to rejection, the mark will be entered in the Register. After registration the mark is published in the official Trade Marks Journal (“Markenanzeiger”).
Delivery of document: the registered proprietor shall receive official confirmation of the entry in the Register; the usual delay after filing is about six months however, an accelerated examination and registration within about one month may be requested without any additional cost. The registration certificate is issued in paper format only.
Opposition: can be filed against a mark within a period of three months from the date of publication of registration of the mark by the owner of a prior registered mark or applied trademark application subject to its registration. Relating to international trademark registrations, the time limit for opposition starts with the first day of the month following the delivery month of the WIPO Gazette in which the publication of the mark takes place. The time limit for filing an opposition is not extendible (no restoration takes place). The substantiated opposition, together with all attachments and payment of the respective opposition fee, must reach the Patent Office on the last day of the opposition period at the latest. The opposition is to be based on identical or similar marks, goods or services. In case the opposition is based on a mark registered since more than five years, the use of the mark must be verified.
Beginning of protection: the right to the mark arises from the date of its entry in the Register.
Duration – extension: the period of protection will expire ten years after the filing date. The period may be extended by further periods provided that renewal of registration is effected in time; further periods of protection will, irrespective of the day of renewal, date from the end of the preceding period.
Renewal of registration will be effected by paying the renewal fee. The renewal fee may be paid not earlier than a year before the end of the period of protection and not later than six months after the end of the period. A surcharge of 20% is payable on any overdue payment.
Obligation to use: any trade or service mark not used for five consecutive years may be annulled on application by a third party.
Marking: not compulsory, but usual.
Changes in the list of goods and services: limitations are possible at any time. A subsequent extension of the list of goods and services of a trademark application or registration is possible. The provisions concerning trademark applications apply to such extensions.
Licenses: the proprietor of a mark can permit third parties to use his mark; licenses can be recorded in the Register of marks. Exclusive or non-exclusive licenses may be registered for all or a part of the registered goods or services of a mark for the entire territory of the Republic of Austria or a part thereof.
Assignment: an assignment of a mark for all or a part of the goods or services is possible provided that it is not likely to deceive the public as to the nature, quality or geographical origin of the goods or services. The new owner of a mark may not assert his right to the mark before such a transfer has been recorded on the Register.
Modification of Protection after Registration
Rights of prior user: not provided for.
Nullification: application for the cancellation of a mark may be made: (1) by the registered owner of a mark for identical or similar goods or services filed earlier and still in force, where the two marks are identical or similar -identical or similar earlier trademarks known at the time a later mark was filed enjoy protection going beyond the similarity of the goods or services; (2) by anyone having acquired rights to a mark abroad, by registration or use, if the owner of a mark filed later for identical or similar goods or services is or was under a duty to protect the business interests of the applicant and had had the mark registered without the latter’s consent and without proper justification, but in that case the applicant may request assignment of the trademark to him instead of cancellation; (3) by any person, if he proves that a sign not registered but used by him for identical or similar goods or services was recognized in the trade concerned as distinctive of his enterprise’s goods or services at the time when the contested mark was filed; (4) by an entrepreneur, if his name, his trade name or the special designation of his enterprise or a designation similar to these names has been registered without his consent as a mark or a feature of a mark, and if the application of this mark is liable to cause confusion in the course of trade with one of the said designations of the business of the petitioner; (5) by anyone for ex officio reasons, i.e., the mark ought not to have been registered; (6) by anyone, if a mark having been registered for at least five years has not been used for the goods or services for which it has been registered within Austria to an adequate extent, within the last five years preceding filing of the nullification action; (7) by anyone, if after its registration in as far as the mark became a denomination common to trade; (8) by anyone, if after its registration in as far as the mark became deceptive by use of its owner or with owner’s consent; (9) by anyone, if the applicant acted in bad faith when filing the trademark application. There is no prescribed period for the application of cancellation of a mark except in the events (1), (3) and (4): the application shall be rejected if the applicant has tolerated the use of the registered mark for a period of five consecutive years knowing of such use. This applies only to the goods and services for which the registered mark was used and only if the registered mark was not filed in bad faith. Actions for nullification: see as for “patents“.
Reinstatement of invalidated marks: possible. The same rules apply as to “patents“.
Infringements: may be prosecuted according to the Law against Unfair Competition or according to the Trade and Service Marks Act within five years from knowledge. Actions must be lodged with the Commercial Court, Vienna. The injured party may request the removal (destruction) of the objects of infringement as well as the means used to produce them, consideration and, in case of culpable infringement, compensation for damages including the lost profits and restitution of the profit the infringer has gained, rendering of accounts. Preliminary injunctions may be granted. In case of punishable infringement, the District Criminal Court, Vienna, is competent.
European Union Trademark (EUTM) Conversion
Filing requirements for the conversion of an EUTM application into a national application in Austria: same requirements as for filing a national application, with the addition of the indication of file or registration number of the EUTM:
1. Indication of file or registration number of the EUTM;
2. Power of attorney (no legalization required);
3. If the mark is other than a word in block lettering: 20 prints (max. size: 8 x 8 cm). In the case of sound marks, a sound reproduction of the mark on a data carrier in addition to the representation of the mark in musical notation or sonogram.
Time limit: two months, extendible.
Geographical Indications and Designations of Origin
Requests for registration of a designation as geographical indication or designation of origin according to the Regulation EC No. 510/2006, for amendment of the specification or for cancellation of a registered designation are to be filed with the Patent Office, which has to consider the application.