Amendments of Trademark Act, Patent Act, Utility Model Act, Semiconductor Act, Design Act and Patent Office Fee’s Act

An amendment of IP laws has been published on 1 August 2017, Federal Gazette I No 124/2017. The main reason for the amendment is EU-directive 2015 / 2436 of 16 December 2015 to approximate the laws of the member states relating to trademarks which has to be brought into force in Austria until beginning of 2019.

I. The main changes of Trademark Act are:

  1. The period of protection of a trademark is 10 years from the date of filing (§19). (So far it was 10 years from the date of registration.)
    Whenever the period of already registered trademarks will end the next new period will be set according to the new rule and the renewal fee will be reduced in relation to the reduction of the next following period (§77d). These regulations will come into force on 1 September 2018.

  2. It is no longer (§23 (2) is cancelled) possible to extend the list of goods and services of an already registered trademark (because the new protection period starts on the date of the application). This regulation comes into force on 1 September 2017.

  3. A trademark application or registration may be divided into two or more separate applications or registrations, provided that the list of goods and services are non-overlapping (§23a). This regulation comes into force on 1 September 2017.

  4. A similarity report is no longer provided by the Patent Office in the course of a trademark application.
    It might, however, be provided upon request (§21 (1)). Without such a request the application fee is reduced by the fee for such a report. This regulation comes into force on 1 September 2017.

  5. The recordal of a change of name or ownership is somewhat simplified (§28). In general just a copy of the respective document has to be filed whereas in the past only an original was accepted. A document other than a public document has still to bear the duly certified signature of the physical or juridical person alienating her/his/its right. Instead of such a document just an unanimous declaration of the parties or their representatives may be submitted. The Patent Office reserves, however, still the right to request any originals, certified copies or further documents. This new regulation is in force since 2 August 2017.

  6. A new legal institution of a “guarantee mark” certifying quality, accuracy etc. of goods and services is introduced (§63a) into the Trademark Act with regulations similar to the already existing collective marks. This regulation comes into force on 1 September 2017.
II. The main changes of Patent Act, Utility Model Act and Design Act, which came into force on 2 August 2017, concern, in analogy to Trademark Act, somewhat simplified requirements for recordals in the respective registers:

§43 Patent Act:

(6) A request for an entry shall be accompanied by a copy of the document on which the entry is to be based. If the original of the document is not a public document, it shall bear the duly certified signature of the person alienating his right. In case of an assignment of a patent a corresponding declaration of the parties or their representatives regarding the assignment might be presented instead of an assignment document.

(7) The request for entry, the document and the declarations shall be subject to the examination by the Patent Office on form and contents. Upon reasonable doubts the Patent Office may request originals or certified copies or further documents.

§32 (2) Utility Model Act:

A request for an entry shall be accompanied by a copy of the document on which the entry is to be based. If the original of the document is not a public document, it shall bear the duly certified signature of the person alienating his right. In case of an assignment of a Utility Model a corresponding declaration of the parties or their representatives regarding the assignment might be presented instead of an assignment document.

§22 Design Act:

(2) A request for an entry shall be accompanied by a copy of the document on which the entry is to be based. If the original of the document is not a public document, it shall bear the duly certified signature of the person alienating his right. In case of an assignment of a Design a corresponding declaration of the parties or their representatives regarding the assignment might be presented instead of an assignment document.

(3) The request for entry, the document and the declarations shall be subject to the examination by the Patent Office on form and contents. Upon reasonable doubts the Patent Office may request originals or certified copies or further documents.

III. The Semiconductor Act was just slightly amended in that the former appeal’s instance, the Supreme Patent and Trademark Board, was eliminated because it ceased to exist and its competence was shifted to the Vienna Upper Provincial Court.

IV. The main changes of the Patent Office Fee’s Act are:

  1. The application fees for trademarks were reduced as of 1 September 2017:
    - for one single trademark € 270,- (instead of € 313,-)
    - for a collective or guarantee mark € 450.- (instead of € 1.190,-)
  2. The publication fees for trademarks and designs were deleted as of 1 September 2017.

  3. Renewal fees for trademarks are now (again) fixed, i e irrespective whether a first, second or further renewal is concerned:
    - for a trademark € 700,- (instead of € 678,-, 783,- or 887,-)
    - for a collective or guarantee mark € 1.300,- (instead of € 2.715,-, 3.133,- or 3.581,-)

The new fee regulations will come into force on 1 September 2018.