2. Amendment of Trademark Act 1970
By BGBl I No. 91/2018, published on 21 December 2018 and in force since 14 January 2019, EU-Directive No. 2015/2436 for harmonization of the member states’ trademark laws was implemented, in a second step, into the Trademark Act.
The essential changes are:
2.1. Trademark definition
Trademarks may now consist of any signs as long as they are distinctive and may be presented in any way, i.e. not only graphically (§ 1).
2.2. Exceptions from registration
Signs of international organizations, published in Austria may now quite be registered as a trademark as long as they neither insinuate (by way of the list of goods and/or services) a close relation to such an organization nor are deceptive in that respect (§ 4 (1) lit c).
2.3. Absolute grounds for refusal
The list of absolute grounds for refusal in § 4 (1) was supplemented in accordance with EU-Directive No. 2015/2436:
- designations of origin and geographical indications (Z. 9)
- traditional terms for wine (Z. 10)
- traditional specialities (Z. 11)
- terms for plant varieties (Z. 12).
2.4. Trademark right
2.4.1. A trademark owner can now (also) stop the transfer of goods from third countries, where they were brought into the market without his consent, i.e. he can more effectively act against product piracy. This entitlement for prevention lapses, however, if the declarant of the goods can prove, in the course of the product piracy suit, that they can lawfully be brought on the market in the country of final destination (§ 10 (2a)).
2.4.2. A trademark owner can now act in advance against designation means (packaging, labels etc.) comprising the trademark or to which the trademark can be adapted well before these means are brought into contact with the goods and services (§ 10 (2b)).
2.4.3. Based on a registered trademark one could not so far prohibit a third party to use its name or address in the course of trade as long as the use was made in accordance with honest practices. This was applied to individual as well as juristic persons. From now hence it is applied just on natural persons, i.e. trade names and names of juristic persons are no longer privileged (§ 10 (3) Z 1).
2.5. Types of use
The catalogue of the types of trademark use was adapted completely (including the grounds of considerations) to EU-Directive No. 2015/2436.
2.6. Trademark licenses
The terms on trademark licenses were supplemented with respect to the rights of licensees and extended to trademarks in application status: In general licensees of any type are empowered to file suits only with consent of the trademark owner; there exist exceptions for exclusive licensees (§ 14 (3)). Licensees can join a suit brought by the trademark owner as intervener (§ 14 (4)).
2.7. Trademark application
The requirements for a trademark application and registration (§§ 16, 17) were adapted to the trademark types (§ 1) now possible. Detailed provisions were issued by the Patent Office Regulation 2019 – published in the Patent Gazette 2018, No. 12, Attachment – which came into force on 1 or 14 January 2019, respectively.
2.8. Opposition proceedings
2.8.1. An opposition against a registered trademark can now be based, in addition to identical or similar senior trademarks covering identical or similar goods and/or services, on
- a senior trademark well known in Austria and covering dissimilar goods/services
- a senior notorious trademark (which does not need to be registered or effective in Austria)
- a senior designation of origin or geographical indication (§ 29a (1)).
2.8.2. If a trademark owner brings, in the course of an opposition proceedings, the defense of lack of use of the opposing trademark(s) then the opposer has to make belief the use on the priority or application date; so far the date of publication of the opposed trademark was crucial (§ 29b (3)).
2.8.3. In analogy to European Union Trademark Regulation it is now possible to get, upon a joint application of both parties, in an opposition proceedings a Cooling-off-period of 6 months at the most (§ 29b (3a)).
2.8.4. An opposition proceedings is (also) deemed as terminated on the day on which a suspension agreement of both parties is received by the Patent Office or appeal court (Vienna Upper Provincial Court or Supreme Court) (§ 29c (3), second sentence).
2.9. Cancellation proceedings
2.9.1. In a cancellation proceedings based on a senior trademark the defendant can now raise the objection that the senior trademark supporting the action could have been cancelled (in case of domestic trademarks) or invalidated (in case of European Union trademarks) on the priority or application date of the attacked junior trademark. If that holds true the plaintiff will not succeed in the scope of the vulnerability of his/her/its trademark albeit, however, that his/her/its trademark is not declared null and void. The objection can be based on lack of distinctiveness, descriptiveness, generic term, each of which not yet compensated by acquired distinct character on the application date of the junior trademark (§ 30 (5,6)).
2.9.2. The so far existing grounds for cancellation were supplemented by additional three grounds:
- senior designation of origin or geographical indication (§ 32a);
- claim for discontinuance according to Copyright Act (e.g. title of a work as word mark);
- claim for discontinuance according to Design Act (e.g. planar design as (part of) a design mark (§ 32c).
2.9.3. The vulnerability of a trademark due to lack of distinctiveness, descriptiveness or a generic term can now be compensated by evidence of acquired distinctiveness on the filing date of the cancellation request (§ 33 (2)). This was not possible so far because the priority or application date of the attacked trademark was crucial.
2.9.4. The start of the five-years-grace-period for use is from now hence not the registration date but depends on the fate of the trademark as well as of the goods and services (§ 33a (1a, 1b)):
- If no opposition has been filed the grace period of domestic trademarks starts at the end of the opposition period (i.e. at present 3 months after registration), of international trademarks 1 year after the publication date of the designation of Austria in the WIPO-Gazette.
- In case that an opposition has been field or a refusal action against an international trademark has been launched the period starts with the final decision on the opposition or the final termination of the refusal proceedings and refers to the goods/services involved by the respective procedure.
- In case of closure of the opposition proceedings due to withdrawal of the opposition, settlement of the opposition proceedings in the scope of a reduced protection of the opposing trademark or termination of the opposition proceedings by a suspension announcement of the parties the five-years-grace-period starts with the force of law of the respective decision or with the receipt of the suspension announcement, respectively.
- The start of the five-years-grace-period for one and the same trademark can therefore differ for individual goods/services, depending whether or not they were affected by the opposition or refusal proceedings. For Austrian trademarks the respective start of the five-years-period concerning the respective goods/services is now entered into the trademark register (§ 29c (3), first sentence).
2.10. Infringement proceedings
The enforceability of a trademark right in an infringement suit was adapted to the cancellation or invalidation grounds, respectively. A plaintiff can succeed with this trademark against a defendant just in that scope in which he could effect the cancellation or invalidation of the defendant´s trademark (designation) (§ 56b). However, this codification has not resulted in a change because according to established Austrian case law the courts have to assess independently whether and inasmuch a registered trademark grants protection and is enforceable.
The obligation to appoint a representative has been eased. A representative must no longer have a domicile or establishment in Austria. He may reside instead in the European Economic Area or in Switzerland so that it is no longer necessary to appoint an authorized recipient residing in Austria. Applicants from the EEA or Switzerland even may act themselves before the Nullity Department of the Austrian Patent Office.