1. Patents and Utility Models
1.1. Start of term of prescription
A patent infringer was successfully sued in Germany for discontinuance, elimination, accounting and information regarding distribution channels of the infringing goods. Upon receipt of the latter the plaintiff realized that its European Patent was also infringed in Austria whereupon an infringement suit was also launched in Austria. The patent infringer raised the objection that the plaintiff has already forfeited its right because the interval between the filing of the first suit in Germany and filing of the follow-up suit in Austria was longer than three ears (which is the period of limitation in Austria). The Austrian Supreme Court did, however, not accept this defence and held that according to EU directive on enforcement of intellectual property rights the right of information is not restricted to the territory of one member state. As a consequence the term of prescription in Austria has started not earlier than the receipt of the information requested in Germany so that the Austrian suit was filed in good time.
(Supreme Court of 9 November 2017, 4Ob 159/17m - Austrian IP and Copyright Magazine 2018, 133).
In the preliminary proceedings of an infringement suit concerning a utility model the request for discontinuance was rejected by the Vienna Commercial Court (court of first instance) on the ground that the request was regarded as completely indefinite because it did not name precisely all the features of claim 1 of the infringed utility model but merely was directed to enjoin the defendant from infringing claim 1 whereby depicting specific features. The Commercial Court followed thus established legal practice since centuries which is also still on force in Germany. Upon a recourse of the plaintiff the Vienna Upper Provincial Court (court of second instance) released, however, a landmark decision in that it accepted the language of the request. It held that for the specification of an injunction order it makes no difference whether the scope of protection is described by a literally quotation of the respective claim or just by referring to the respective claim with a further specification by a demonstrative reference to essential features.
(VUPC of 11 December 2017, 133 R 107/17h – Austrian IP and Copyright Magazine 2018, 233)
1.3. Criterias for equivalence
In the course of an infringement proceedings the crucial question was whether or not the substition of one derivative of an active ingredient of a pharmaceutical by another derivative falls under the scope of protection by the claims. On this occasion the VUPC cited three criterias, known already from juristic literature, which have to be fulfilled cumulatively in order to prove equivalence:
- The modified embodiment solves the problem on which the invention is based by means which are modified but have, seen objectively, the same effect (equivalent effect).
- A person skilled in the art can realize on basis of her / his skills that the modified means used in the embodiment for solving the problem on which the invention is based have the same effect (obviousness).
- The considerations of a person skilled in the art are guided by the meaning of the technical solution protected by the patent claims in that the person skilled in the art regards the different embodiment with its modified means as an equivalent solution of the patented embodiment (equivalence).
(VUPC of 12 April 2018, 133R15/18f).
1.4. Modifications of granted patent claims
According to Austrian Patent Act and European Patent Regulation modifications of granted patent claims are only admissible as long as they do not affect the substance of the invention. An extension of the scope of protection is inadmissible.
In the course of a nullification proceedings against the Austrian part of a European Patent the VUPC stated that any admissable amendments are restricted to a “Minus” of protection. A “Plus” as well as an “Aliud” would not meet that attribute. Furthermore, a restriction of the scope of protection would be inadmissible if the reduced scope (or part of it) would lie outside the original scope of protection. This case would also constitute an “Aliud” (but not a “Minus”)
(VUPC of 1 March 2018, 133 R 131/17p)
1.5. Inventive Step
In the course of two nullification proceedings against the Austrian parts of European patents the VUPC cited the EPC in that an invention shall be considered as involving an inventive step if, having regard to the state of art, it is not obvious to a person skilled in the art. According to the “problem-solution-approach” the closest state of art is at first to be ascertained, whereupon the technical task is to be determined and finally it is to be evaluated whether the invention was obvious to a person skilled in the art in view of the relevant state of art and the technical problem. According to the “could-would-approach” a new development does not lack automatically an inventive step if a person skilled in the art could have reached it in view of the state of art. An inventive step would only be missing if a person skilled in the art would have actually suggested the development on basis of a sufficient cause expecting an improvement or advantage.
(VUPC of 07 March 2018, 133 R 96/17s; VUPC 11 April 2018, 133 R3/18s)
The CJEU had recently released a judgement with respect of a community design concerning criteria for exclusion of design protection when the appearance of a product is dictated by its technical function. This judgement is a landmark in the EU and also applicable for domestic designs. The key sentences are:
- In order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.
- In order to determine whether the relevant features of appearance of a product are solely dictated by its technical function all the objective circumstances relevant to each individual case must be taken into account. In that regard, there is no need to base those findings on the perception of an ‘objective observer’. ((C-395/16 of 8 March 2018) - Austrian IP and Copyright Magazine 2018, 109)
4.1. Lack of distinctiveness
In several recent decisions the Vienna Upper Provincial Court (VUPC) denied registrations of trademarks for pharmaceuticals (e.g. BRONCHOCOLD, BRONCHAKUT, BRONCHONIGHT; UROPROTECT; ViruProtect) which consists of two parts, one describing the type of protection, the other the field of application, because the involved consumers will merely understand them as descriptive.
(VUPC 133R 137/17w; 133 R 138/17w; 133 R 139/17w; 133 R 140/17m as well as VUPC of 7 March 2018, 133 R 8/18a)
4.2. Dissimilarity of goods
The VUPC recently held that “pharmaceutical preparations” and “medicines” on one hand and “preparations of destroying vermins, fungicides, herbicides” on the other hand are not similar. In former times they were sometimes, in specific cases, regarded as more or less similar.
(VUPC of 02 February 2018, 133 R 133/17g – Austrian IP and Copyright Magazine 2018, 230).
4.3. Trademark protection by Competition Law
The famous “Original Salzburger Mozartkugel” (a chocolate ball with nougat, marzipan etc.) was invented 1890 by one confectioner (Paul Fürst) in the town of Salzburg and is since then produced and sold in the city. Later on the wrapping of the ball (a silver paper depicting a blue circle logo showing the head of Mozart looking to the right) was registered as a trademark.
A competitor, residing also in Salzburg, started in 2015 to sell “Salzburger Mozartkugel” also wrapped in a silver paper with a blue circle logo, however, with the head of Mozart looking to the left. It was sued for infringement based on trademark Law and Law Against Unfair Competition. The request for discontinuance of distribution in the whole territory of Austria (based on trademark right) was, however, not granted (obviously because the competitor’s balls were not deemed as confusing similar to the registered wrapping of the trademark). The competitor was only enjoined from distribution of his goods in the town of Salzburg where the “Original Salzburger Mozartkugel” were regarded as having acquired high distinctiveness and enjoys therefore protection on basis of Competition Law
(Supreme Court of 21 November 2017, 4 Ob 152/17g – Austria IP and Copyright Magazine 2018, 238; GRUR Int. 2018, 829)
(Supreme Court of 20 December 2016, 4 Ob 45/16w – GRUR Int 2017, 281).