Patent law

1. On the novelty of a patent

In one of the rare nullity proceedings that reached the Supreme Court, the latter was able to set out guiding principles for assessing the disclosure content of a prior art reference, which – extracted from the specific facts of the case – can be summarised as follows:

• • A document discloses not only what is explicitly described therein, but also all features that are implicitly apparent, in particular all features that inevitably arise when a specialist reproduces a specifically described example.
    
  • The entire content of a prior art reference, including the specific and concrete examples mentioned therein, counts as the state of the art disclosed therein.
  • In the case of a functional feature that is defined by its mechanism of action, it is not its properties that matter, but only its functionality.

(Supreme Court ruling of 20 December 2024, 4 Ob 29/23 b - Pbl 2025,35)

2. Legal question – factual question

In the course of patent infringement proceedings, the Supreme Court recently coined the phrase: "Whether an invention is based on an inventive step is fundamentally a legal question, but in order to resolve it, it is also necessary to clarify the factual question of whether the patent is not obvious to a person skilled in the art in view of the prior art". However, this is nothing new, because in order to assess what is "not obvious", i.e. the inventive step, the relevant prior art must first be determined, which is the factual question, and only then can the inventive step be determined, i.e. the legal question resolved.

( Supreme Court of 30 December 2024, 4 Ob 105/23d – ÖBl 2025, 171)

Trademark law

1. On the grounds for opposition

According to Section 29 (3) Austrian Trademark Law, an opposition must be substantiated. However, the extent of this obligation to substantiate has not been regulated to date. It was and is considered self-evident that the opposing trademark(s) and the scope of the trademark attack had to be specified. In addition to ticking or clicking on the legal bases listed in the official opposition form, it has been considered necessary to at least include a brief statement of the grounds for opposition. However, this is not mandatory according to a decision by the Vienna Upper Provincial Court:

„ The opposition is (also) timely and justified if only the form provided by the authorities with the sub-item 'There is a likelihood of confusion between the earlier opposing trademark and the contested trademark and the goods and services of both trademarks' ticked is submitted within the opposition period. No further substantiation is required."

(Vienna Upper Provincial Court, 27 November 2023, 33R120/23v – Pbl 2024,41)

2. On the right preserving use of a trademark

The trademark "Burning Hot", registered for, among others, "hardware and software, in particular for casino and gambling hall games (class 9)", "casino equipment, casino games (class 28)" and "operation of casinos or gaming casinos (class 41)", was – as proven – only used for an online game without stakes or winnings and was – ultimately successfully – contested on the grounds of non-use.

The Nullity Division of the Austrian Patent Office assumed that the proven use could be subsumed under "hardware and software, in particular for games of chance via telecommunication networks and/or the internet without payouts (Class 9)" and "operation of online internet casinos (class 41)", but that the established use was not sufficient to prove serious use as a trademark in Austria.

The appeal lodged by the trademark owner was unsuccessful, although the reasoning of the Vienna Upper Provincial Court differed from that of the Austrian Patent Office in that it found that the trademark was only used for goods and services that could not be subsumed under any of the terms in the list of goods and services. This is because an online game is neither hardware nor software (for a computer) according to class 9, and the use of "Burning Hot" was not in connection with the offering of the product "software for games of chance", but rather in the context of providing the service of making a game available. Since a (virtual) casino is understood to be a place where games are offered in return for payment of a stake, but users did not have to pay a stake to play the online games, the established use of the trademark also did not fall under the service of operating online internet casinos in accordance with class 41.

(Vienna Upper Provincial Court, 12 February 2024, 33R106/23 k - Pbl 2024,48)

3. On the right to a name

The "Südbahnhotel" on the Semmering stood empty for years. During this time, a company acquired several domains containing this building name. After taking over the property with the Südbahnhotel, the new owner demanded that the company cease using the building name in the domains, claiming that it had also acquired through the purchase of the property name protection according to civil law. It was successful in this regard in the lower courts (Vienna Commercial Court, Vienna Upper Provincial Court). However, the Supreme Court dismissed the claim on the grounds that ownership of a building with a well-known name does not in itself grant name protection, meaning that the use of the building name in other domains cannot be prohibited.

( Supreme Court, 22 October 2024, 4 Ob 77/24p – ÖBl 2025,169)

4. On the reversal of the burden of proof

The owner of a large number of trademarks for cosmetic products, which are distributed in the EEA through a selective distribution system, brought an action for injunctive relief against a company not belonging to the distribution system after a test purchase in Austria revealed that it had put trademarked goods into circulation. The defendant invoked the exhaustion of trademark rights, claiming that the goods had been placed on the market in the EEA by the trademark owner or with its consent, but was unable to provide sufficient evidence of this because its suppliers refused to disclose information about their sources. Following the principle that the party making a claim must also provide evidence, but no conclusive evidence could be provided, the court of first instance (Vienna Commercial Court) and the court of second instance (Vienna Upper Provincial Court) upheld the claim. However, in the course of an appeal, the Supreme Court dismissed the action and held that in the event of an exhaustion objection by the defendant, the burden of proof shifts to the plaintiff, who must prove that the goods were placed on the market outside the EEA and that trademark protection has therefore not yet been exhausted.

(Supreme Court of 22 October 2024, 4 Ob 56 / 24z – ÖBl 2025, 158)