1. On obvious prior use
In a patent nullity proceedings it was relevant to the decision whether a machine exhibiting the patent features and which had already been installed in a factory hall of a company prior to the patent application was publicly accessible. While the Nullity Division of the Austrian Patent Office denied public accessibility and thus lack of novelty, this was affirmed by the Vienna Upper Provincial Court, confirmed by the Supreme Court.
It was found that the machine set up in the production hall was directly accessible to school classes and guided tours, in addition to visitors of the management as well as tool technicians and fitters. Since neither a concrete nor an implied obligation of secrecy was or could be proven the patent was to be declared null and void.
(Supreme Court of 05.07.2021, 4 Ob 220 / 20m - PBl. 2022, 86; ÖBl. 2022, 86)
2. On patentability
In patent nullity proceedings, the Vienna Upper Provincial Court held again:
- Whether the subject-matter of a patent is based on an inventive step is in principle a question of law. However, its answer - usually according to the task-solution approach - also depends on the question of fact, which knowledge the average person skilled in the art has in the relevant field. If findings regarding the expertise of the average skilled person in the relevant field or other findings required for the application of the task-solution approach are missing, a secondary deficiency in the findings would exist.
- According to Sec. 1(1) Patent Act, an inventive step exists if the innovation is not obvious to the person skilled in the art in view of the prior art. However, an inventive step is not already lacking if the person skilled in the art could have arrived at the invention on the basis of the prior art, but only if he/she would have actually proposed it on the basis of a sufficient cause in expectation of an improvement or an advantage – could-would-approach.
- The examination of an inventive step can be carried out in particular according to the task-solution approach, which is divided into three phases: a) determination of the "closest prior art", b) determination of the "objective technical task" to be solved and c) examination of the question whether the claimed invention would have been obvious to the person skilled in the art in view of the closest prior art and the objective technical task. In general, the objective technical task consists in modifying or adapting the closest prior art in order to achieve the technical effects or results which distinguish the invention from it.
- The provisions of the Code of Civil Procedure, which apply mutatis mutandis to appeals against final decisions of the Nullity Department, provide for an interdiction of movation: Neither a new claim nor a new defense may be raised in the appeal proceedings:
(Vienna Upper Provincial Court of 01.07.2021, 33R8 / 21w - PBl. 2022, 18)
Technically implied design features
The owner of a Community design for heating socks comprising snap fasteners in the area of the upper edge for connecting a rechargeable battery took action for infringement against a competitor producing confusingly similar heating socks, but failed in all three instances (Vienna Commercial Court, Vienna Upper Provincial Court, Supreme Court). The courts namely held that the snap fasteners are technically conditioned features which are not to be taken into account in comparison with the (alleged) infringing object.
(Supreme Court of 28.09.2021, 4 Ob 72 / 21y – ÖBl. 2022, 124)
1. Lawful trademark use
The manager of a smartphone app for storage of various loyalty cards has listed the selectable enterprises by presentation of their logos and/or trademarks. One of these entrepreneurs regarded that as unlawful trademark use and sued the app manager for discontinuance. In the preliminary injunction proceedings the Vienna Commercial Court, confirmed by the Vienna Upper Provincial Court, released an interim injunction against the app manager on the ground that the use of the trademark in suit is to be regarded as promotion for the app or as reference to the offered mobile-wallet services, respectively. In the course of a revisional recourse filed by the defendant the Supreme Court dismissed, however, the request for temporary injunction in full scope. It referred thereby to the exception element according to which a registered trademark does not grant its proprietor the right to enjoin a third party from using in trade this trademark as a reference to its accessory services, provided this is in compliance with the proper customs in trade and industry. For the use in the app of the trademark in suit refers to the provision of the service of the app manager and, moreover, the presentation of the options to choose from several loyalty card providers does not represent an unfair commercial practice.
(Supreme Court, 22.12.2020, 4 Ob 205/201 – ÖBl 2021, 175)
2. Requirements for a color mark
The application for a color mark consisting of distanced color strips on a black background in consecution of the rainbow colors was rejected by the Austrian Patent Office on the ground that the designation could be used in different ways so that its scope of protection would be undefined. This view was finally confirmed by the Supreme Court in that it held again that “abstract”, “contourless” color marks are only protectable provided that their graphical representation is clear, unequivocal, self-contained, easily accessible, understandable, stable and objective. As in the present case it remained, for example undefined how long the distance between the color strips should be or which relation between the color strips and the dark background should be presented the prerequisites for registrability were denied.
(Supreme Court, 27.5.2021, 4 Ob 97/21 z – ÖBl 2021, 270)
3. Non-Well-known trademark
The producer of ABSOLUT Wodka sued successfully the management of a ski and snowboard school named ABSOLUT PARK or ABSOLUT SCHOOL, respectively. The order to discontinue the use of the well-known trademark ABSOLUT was decreed with different expressions by all three instances (Vienna Commercial Court, Vienna Upper Provincial Court, Austrian Supreme Court) as a well-known trademark is protected against the use of a junior designation even without similarity of goods and services if its distinctive character or its reputation is exploited or impaired without due cause. Among the four facts, namely exploitation of reputation (utilization of appreciation), damage of reputation (impairment of appreciation), exploitation of attention (utilization of distinctiveness) and dilution (impairment of distinctiveness) the Supreme Court held that an unfair utilization of distinctiveness has occurred because the infringer brought no special circumstance to justify its way of acting. Therefore it was undoubtful that the defendant had utilized the high publicity of the ABSOLUT trademark to direct the interest of the public to its own products or services.
The additional request of the plaintiff to cancel the domain www.absolutpark.com and www.absolutschool.com as well as corresponding facebook sites was, however, rejected on the ground that these could also be used without infringing trademark right because the order for discontinuance was explicitly directed to the graphical design of the trademark which cannot at all be effective with domains or facebook sites.
(Supreme Court, 20.4.2021, 4 Ob 19/21 d – ÖBl 2021, 274)
4. Misleading trademark use
A family dynasty named Pauscha had operated a barrel bindery since 1875. In the course of various corporate restructurings, the last name bearer left the last existing company in 2011 and founded a new barrel binding company, whereas the remaining company subsequently registered a word-design trademark "Pauscha Austria - since 1875" (EUTM 123 15 719), which was transferred to another company in the course of insolvency proceedings. The latter filed an action for an injunction against the new Pauscha barrel binding company based on its trademark, requesting that the latter be prohibited from using the EUTM or a confusingly similar sign. The Pauscha company, on the other hand, filed a counterclaim for a declaration of invalidity or revocation of the EUTM. This was successful in all three instances (Vienna Commercial Court, Vienna Upper Provincial Court, Supreme Court) with regard to the declaration of revocation, since it was established that the trademark owner produces barrels of its own craft, i.e. does not revert to the know-how of the Pauscha family, wherefore the false impression of an uninterrupted continuation of the business and craft tradition of the Pauscha family would be created among winegrowers.
(Supreme Court of 15.03.2021, 4 Ob 221/20h - ÖBl. 2022, 82)
5. Right preserving use
- A senior design mark consisting of three distanced columns arcuated cut on one end was integrated into a registered junior word-design mark for almost similar services. It was, however, not used as registered but in combination with letters in a version being also a registered senior trademark. In the course of an opposition proceedings it was therefore to decide whether the use of the senior word-design mark was right preserving for the not used pure design mark.
The Austrian Patent Office rejected the opposition because the use of the senior word-design mark was not regarded as equal to the use of the senior design mark and the senior word-design mark was not regarded as confusing similar to the junior word-design mark in dispute.
The Vienna Upper Provincial Court held, however, that the use of the senior word-design mark was right preserving for the senior design mark because the latter was integrated completely and unchanged into the former, was not shifted into the background and not used in an uncommon manner. One would gather the same result if the senior word-design mark would not at all exist but the senior design mark would just have been used in combination with additional letters, i.e. in a somewhat different version without changing the distinctiveness. The VUPC therefore allowed the opposition in combination with the similar services.
(VUPC of 17.11.2020, 33 R 68/20t – PBl 2021, 56, ÖBl 2022, 79)
- In a cancellation proceedings based on alleged non-use the owner of the contested trademark could only refer to various undated permanent advertising materials (e.g. caps, umbrellas, key rings, etc.). However, these were considered unsuitable for the proof of a right-preserving use by the Nullity Department of the Austrian Patent Office, confirmed by the Vienna Upper Provincial Court since it could not be proved that they were actually still used to promote the goods and services of the trademark owner during the five-year period in question. The Court of Appeal held that the mere still remaining existence of the advertising products is not sufficient as evidence of genuine use of the trademark.
(Vienna Upper Provincial Court of 01.12.2021, 33 R 79 / 21m - ÖBl. 2022, 120)
The junior mark KNABBER STRIZZI and the senior mark KNABBER NOSSI, both for goods of class 29, were found by the Austrian Patent Office not to be confusable, but by the Vienna Upper Provincial Court, and ultimately confirmed by the Supreme Court, to be confusable. While the Austrian Patent Office did not grant the word KNABBER any distinctiveness (and denied the likelihood of confusion due to the different words STRIZZI and NOSSI), the Vienna Upper Provincial Court focused on the overall impression of the marks. It held that KNABBER, despite its descriptive character, does not recede into the background to such an extent that it would eliminate the likelihood of confusion. Since NOSSI and STRIZZI in combination with KNABBER are ultimately fantasy terms the public is led to believe, due to the similarity / identity of the goods, that the goods marked with KNABBER STRIZZI economically belong to KNABBER NOSSI, i.e. come from economically related companies.
(Vienna Upper Provincial Court of 03.03.2021, 33 R 118 / 20W; Supreme Court of 22.09.2021, 4 Ob 98 / 21x - PBl. 2022, 31)