1. To the problem-solution-approach
In the course of two nullification proceedings against patents the Vienna upper Provincial Court pointed out again 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 objective technical task is to be determined and finally it is to be evaluated whether the invention could have been 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.
The objective technical problem is thereby to be formulated in a way so that it does not include already the solution (because that would result in a synthesis ex post).
The question whether there exists an inventive step is basically a question of law. What would have been realized from the pre-publications by a person skilled in the art is, however, a question of facts.
(VUPC of 21.01.2020, 133 R 99 /19k – ÖBl 2020, 210;
VUPC of 07.05.2020, 133 R 138 /19w – ÖBl 2021, 31)
2. Temporary injunction for securing evidence
In the course of a request for granting a temporary injunction to secure evidence the VUPC held:
With reference to rights to demand an injunction, elimination, adequate compensation, damages and surrender of the profits under patent law, preliminary injunctions may be issued to safeguard the claim itself as well as to secure evidence.
Safeguarding evidence by preliminary injunction does not require attestation of endangering. The risk of an impending damage or destruction of evidence is no prerequisite for the independent claim for safeguarding of evidence but rather the precondition for granting the preliminary injunction without hearing the defendant.
Moreover, temporary injunctions for safeguarding of evidence do not require an allegation or attestation of one of the above mentioned rights. The release of a temporary injunction to safeguard evidence takes for granted that the holder of the IP right proves the existence of its right and presents all reasonably available evidence which suggests a present or future infringement of that right. The existence of (mere) concrete indications insinuating the possibility of an infringement of a right is sufficient.
A proceedings relating to the grant of a preliminary injunction for safeguarding of evidence does not concern the question of patent infringement but rather the seizure of material that perhaps might infringe the patent. The aspect of a possible infringement is therefore not to be assessed in this proceedings. It only matters whether the plaintiff has a legal interest ( [abstractly] justified by the legal system) for safeguarding the evidence.
(VUPC of 01.04.2020, 133 R 131 /19s – ÖBl 2020, 211)
Utility Model Law
In a landmark resolution the Austrian Supreme Court held that the technicity required for a utility model is given already if features of a claim require the use of technical means. It followed thereby the judicature of the European Patent Office, i.e. the “any hardware” principle. Before that the Austrian Patent Office as well as the Vienna Upper Provincial Court denied the registration of the utility model on the ground that it just concerns the management of data and the automation of an organizational process. The Supreme Court, however, held against it that these processes need technical means so that notorious technicity is given.
(Supreme Court, 31.08.2020, 4 Ob 119/20h – ÖBl 2021, 130)
To the „overall impression“
Die Lizenznehmerin der Inhaberin eines Gemeinschaftsgeschmacksmuster für „Chips für Einkaufswagen“ (caddy keys) ist gegen zwei Konkurrentinnen wegen Mustereingriffs vorgegangen, aber in allen drei Instanzen (HG Wien, OLG Wien, OGH) jeweils unterlegen. In diesem Zusammenhang wurden merkenswerte Feststellungen getroffen:
- The licensee of the owner of a Community design for “chips for shopping trolleys” (“caddy keys”) sued two competitors for design infringement but lost, in both cases, in all three court instances (Vienna Commercial Court, VUPC, Supreme Court). In these connections remarkable statements were made.
- The examination for evaluation of peculiarity and novelty of a design has to be restricted to features of appearance that are not due to technical reasons. In comparison of designs technical features have therefore to be disregarded.
(Supreme Court of 28.01.2020, 4 Ob 239/19d and of 30.03.2020, 4 Ob 174/19w – ÖBl 2020, 276)
1. Unlawful use of a trademark
On the occasion of the end of career of a famous ski racer a bank had paced in electronic and print medias an insert showing next to its own logo the helmet of the ski racer on which the emblem, protected by a trademark, of a rival bank sponsoring the racer could be seen. The latter requested the release of a preliminary injunction prohibiting the bank from advertising for itself using the emblem of the rival bank. Moreover, due to the fact that the logo of the bank was placed in the foreground the wrong impression was evoked in that the bank might be also a sponsor of the ski racer.
The court of first instance (Vienna Commercial Court) rejected the request for the injunction on the ground that the emblem of the rival bank has not been used as designation of origin of services of the sued bank. The court of recourse (Vienna Upper Provincial Court) granted, however, the request for injunction. It held that the sued bank had used the trademark of the rival bank for the purpose of its own promotion so that the rival bank has a claim for discontinuance due to unlawful use of a trademark.
(VUPC of 20.01.2020, 133 R 132/19p – Austrian Gazette for IP and Copyright 2020, 226)
2. Trademark as Keyword
The owner of the word-design mark “TAXICOMPANY, driving your business” for transportation services sued a competing taxi service enterprise for discontinuance because the latter had booked the word “Taxicompany” at Google as keyword and therefore were listed at the results on the first place but did not provide on its website an explanation that there does not exist a commercial relationship between the companies. Moreover, the rival company had used in its advertisements the slogan “we drive your business".
The plaintiff succeeded in all three instances. Finally the Austrian Supreme Court confirmed the interdictions ordered by the lower instances on one hand on the grounds that the use of a trademark or part of it as a keyword interferes with the rights of a trademark owner as long as the probability of deception is not excluded and on the other hand that the promotional slogan is confusing similar to the trademark.
(Austrian Supreme Court of 21.02.2020, 4 Ob 30/20w)
In another case the Austrian Supreme Court stated that “keyword advertising” does not infringe trademark right if an ordinary informed and adequate alert internet user can easily recognize on basis of the search results that the goods or services promoted in the advertisement do not originate from the trademark owner (or from a commercially allied enterprise).
(Supreme Court, 20.10.2020, 4 Ob 152/20m – ÖBl 2021, 125)
3. Non-use-cancellation of a trademark
Against two design trademarks (depicting a sitting flying bull), registered, among others, for casino appliances and services of casinos, restaurants and hotels, cancellation proceedings, based on alleged similarity to senior trademarks, were launched two years after registration, but were interrupted due to unclear validity of the senior trademarks. After the end of the five years grace period of use cancellation actions based on alleged non-use were filed to which the trademark owner responded by justification of the non-use due to the cancellation actions filed before. The Nullity Department of the Austrian Patent Office did accept this argumentation with respect to some of the goods and services whereas the court of appeal (Vienna Upper Provincial Court) rejected it completely. It held that filing a cancellation action against a trademark basically does not hinder the trademark owner to use it because a collision with senior rights of third parties belongs by tendency to the normal risk of an entrepreneur and is therefore no justified reason for non-use of the trademark.
(VUPC, 20.05.2020, 33R20/20h – Patent Bulletin 2020, 66)
4. Collision between firm name and trademark
A foreign enterprise with the name “RAT PACK Filmproduktion” which produces cinema and TV movies filed a cancellation action against the word mark “RAT PAC”, registered for production and financing of movies as well as for providing food and drinks and temporary accommodation, and was completely successful before the Nullity Department of the Austrian Patent Office. Upon appeal by the trademark owner the Vienna Upper Provincial Court amended, however, the final decision of the latter in that the trademark was upheld in the scope of providing food and drinks and temporary accommodation. In this connection the VUPC pointed out, amongst other statements:
The right of an entrepreneur to act against a trademark which could entail in the course of business confusion with his firm name does not depend on a registration in the Austrian Register of Companies but on long-term domestic use of the firm name in commercial business.
The question of risk of confusion is to be determined on basis of the commercial field of the entrepreneur and the registered goods and services of the trademark. A remote commercial field excludes the risk of confusion.
(VUPC, 28.04.2020, 33R5/20b – Patent Bulletin 2020, 6)
5. Name, trademark as metatag
The provider of a web portal with a list of physicians residing in Austria was sued by a doctor on basis of her name and identical trademark for alleged violation of her rights of name and trademark as well as for unfair competition with the argumentation that it uses her name or trademark, respectively, as metatag in order to optimize its search engine results, i.e. to gain a primary ranking of the web portal.
The corresponding claim for temporary injunction was dismissed in all three court instances (Vienna Commercial Court, Vienna Upper Provincial Court, Supreme Court) because use of another designation as a metatag does neither violate fairness law nor trademark law as long as there exists a justified interest in the use of the designation. Moreover, at the current search engines no prioritization of the defendant´s website in relation to that of the plaintiff did occur so that the reproach of parasitic exploitation did fail already on the level of facts.
(Supreme Court of 19.12.2019, 4 Ob 223/19a – ÖBl 2020, 261)
6. Exhaustion of trademark right
An online-shop for perfumery and cosmetic products delivers branded products in cartons on which several trademarks as well as the promotional slogan “BEAUTY FOR LESS” and the designation “easyCOSMETIC” are printed. It was sued for discontinuance by the licensee of a trademark owner because according to its opinion such a use is inconsistent with the image of luxury trademarks and therefore violates justified interests of the trademark owner.
The court of first instance (Vienna Commercial Court) granted the request for release of a temporary discontinuance order whereas the two upper instances (VUPC and Supreme Court) dismissed it. It was held that the trademark right of the trademark owner is exhausted and that there are no justified grounds to prohibit the further distribution. For the advertising of the online-shop is admissible and does not evoke the misleading impression of a commercial connection between that shop and the trademark owner.
(Supreme Court of 22.08.2019, 4 Ob 127/19h – ÖBl 2020, 265)
7. Geographical indication
The word-design mark “Sophienwald” (AT 285 107) for, among other goods, glass ware was, upon request of a third party, classified as geographical indication by the Vienna Upper Provincial Court, confirmed by the Austrian Supreme Court (in the course of a rejected extraordinary revision), and therefore cancelled ab initio. Before that the Nullity Department of the Austrian Patent Office denied the classification as geographical indication on the ground that nowadays the public would hardly associate the trademark with glass wares. The VUPC assumed, however, especially that even outdated and historical designations (“Sophienwald” was well known for glass wares since the 19th century in former Austria) are excluded from trademark protection if the public involved still understands them as name of a place and establishes a connection between the place and the products. Thereby not only an average informed and average alert consumer is decisive but also the respective business people are to be regarded who have a broader knowledge of all circumstances of the geographical localization of the production of the goods.
(VUPC of 11.07.2019, 133 R 20/19t; VUPC of 26.11.2019, 4 Ob 152/19k)
8. Distinctiveness vs descriptiveness and/or promotional statement
The publisher of a newspaper named “DER STANDARD” which is on the Austrian marked since long filed a respective trademark application which was, however, rejected by the Austrian Patent Office on the ground that DER STANDARD is regarded as a mere promotional description. The Vienna Upper Provincial Court confirmed this decision whereas the Austrian Supreme Court overturned it and held that STANDARD is a common word with different meanings so that the public involved cannot immediately derive an unequivocal relation between the term and the quality of the products in question (printed matter, newspapers etc) because that affords mental activities which might lead to different results even if the designation would be regarded by the public as advertising message.
(Austrian Supreme Court, 22.12.2020, 4 Ob 198/20a)
9. Similarity between bicycles and automobiles
The owner of EUTM No. 311 449 KONA for “bicycles and their parts” (cl. 10) opposed the protection of international trademark No. 1 331 235 KONA for “automobiles” (cl. 12) and succeeded before the Austrian Patent Office and Vienna Upper Provincial Court. The latter held that risk of confusion is given if the trade involved would assume that the offered cars originate from a bicycle producer. It is also given if the wrong impression occurs that the bicycles offered under this designation originate from an automobile producer. Similarity of goods also depends on whether such products are usually produced in one and the same enterprise. Big automobile producers often offer under their brand also bicycles – even perhaps sometimes as mere merchandising articles. Therefore, bicycles and automobiles do not differ so much in that the public would in any way or at least predominantly exclude that they, when branded with an identical trademark, originate from one and the same enterprise so that risk of confusion is given.
(VUPC of 21.05.2019, 133 R 42/19b – Patent Gazette 2020, 4)
10. Lack of similarity of trademarks
In the course of an opposition proceedings the VUPC denied similarity of senior trademark AMINOVA to junior trademark AMINEO (both for more or less similar goods). It argued that the different endings “OVA” and “EO”, or – when pronounced – “NOVA” and “NEO”, may clearly be delimited so that the common beginning of the words, i.e. AMI (N), is rather in the background inasmuch as the endings of words are generally more prominent. As usually mental activities are not started with respect of risk of confusion the VUPC held furthermore that the identical meaning of “NOVA” and “NEO” which is “NEW” is not to be considered or neglectable, respectively. As a matter of fact this decision is not comprehensible.
(VUPC of 28.08.2019, 133 R 68/19a – Patent Gazette 2020, 32)
11. Genuine trademark use
In the course of a cancellation action based on alleged non-use against Austrian trademark CERESOL (for edible oils and fats of class 29) the trademark owner brought evidence of use of its trademark CERES (for the same goods) and argued that “OL” is, on one hand, just a common ending without contribution to the distinctiveness and, on the other hand, insinuates an association with the term “oil".
The Nullity Department of the Austrian Patent Office, confirmed by the Vienna Upper Provincial Court, cancelled, however, the trademark CERESOL. The VUPC held that an overall evaluation of both signs with respect to pronunciation and recognized meaning leads “CERES” phonetically and conceptually away from the registered sign “CERESOL” wherefore the trade involved has no reason to regard both as one and the same sign. The ending “OL” of CERESOL has no descriptive meaning. In connection with the registered goods (oils and fats) the public will especially not understand this ending as usual ending for alcohols and phenols in organic chemistry. Moreover, someone who knows the meaning of the ending “-ol” or who associates “-sol” with the sun will be the less of the opinion that CERES and CERESOL mean the same.
(VUPC of 22.11.2019, 133 R 86/19z – Patent Gazette 2020, 38)