Remarkable Decisions

1. Patents and Utility Models

1.1. Start of term of prescription

A patent infringer was successfully sued in Germany for discontinuance, elimination, accounting and information regarding distribution channels of the infringing goods. Upon receipt of the latter the plaintiff realized that its European Patent was also infringed in Austria whereupon an infringement suit was also launched in Austria. The patent infringer raised the objection that the plaintiff has already forfeited its right because the interval between the filing of the first suit in Germany and filing of the follow-up suit in Austria was longer than three ears (which is the period of limitation in Austria). The Austrian Supreme Court did, however, not accept this defence and held that according to EU directive on enforcement of intellectual property rights the right of information is not restricted to the territory of one member state. As a consequence the term of prescription in Austria has started not earlier than the receipt of the information requested in Germany so that the Austrian suit was filed in good time.

(Supreme Court of 09 November 2017, 4Ob 159/17m - Austrian IP and Copyright Magazine 2018, 133)

1.2.  Specification of discontinuance request

In the preliminary proceedings of an infringement suit concerning a utility model the request for discontinuance was rejected by the Vienna Commercial Court (court of first instance) on the ground that the request was regarded as completely indefinite because it did not name precisely all the features of claim 1 of the infringed utility model but merely was directed to enjoin the defendant from infringing claim 1 whereby depicting specific features. The Commercial Court followed thus established legal practice since centuries which is also still on force in Germany. Upon a recourse of the plaintiff the Vienna Upper Provincial Court (court of second instance) released, however, a landmark decision in that it accepted the language of the request. It held that for the specification of an injunction order it makes no difference whether the scope of protection is described by a literally quotation of the respective claim or just by referring to the respective claim with a further specification by a demonstrative reference to essential features.

(VUPC of 11 December 2017, 133 R 107/17h – Austrian IP and Copyright Magazine 2018, 233)

1.3. Criterias for equivalence

In the course of an infringement proceedings the crucial question was whether or not the substition of one derivative of an active ingredient of a pharmaceutical by another derivative falls under the scope of protection by the claims. On this occasion the VUPC cited three criterias, known already from juristic literature, which have to be fulfilled cumulatively in order to prove equivalence:

  • The modified embodiment solves the problem on which the invention is based by means which are modified but have, seen objectively, the same effect (equivalent effect).
  • A person skilled in the art can realize on basis of her / his skills that the modified means used in the embodiment for solving the problem on which the invention is based have the same effect (obviousness).
  • The considerations of a person skilled in the art are guided by the meaning of the technical solution protected by the patent claims in that the person skilled in the art regards the different embodiment with its modified means as an equivalent solution of the patented embodiment (equivalence).

(VUPC of 12 April 2018, 133R15/18f).

1.4. Modifications of granted patent claims

According to Austrian Patent Act and European Patent Regulation modifications of granted patent claims are only admissible as long as they do not affect the substance of the invention. An extension of the scope of protection is inadmissible.

In the course of a nullification proceedings against the Austrian part of a European Patent the VUPC stated that any admissable amendments are restricted to a “Minus” of protection. A “Plus” as well as an “Aliud” would not meet that attribute. Furthermore, a restriction of the scope of protection would be inadmissible if the reduced scope (or part of it) would lie outside the original scope of protection. This case would also constitute an “Aliud” (but not a “Minus”)

(VUPC of 01 March 2018, 133 R 131/17p)

1.5. Inventive Step

In the course of two nullification proceedings against the Austrian parts of European patents the VUPC cited the EPC in 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 technical task is to be determined and finally it is to be evaluated whether the invention was 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.

(VUPC of 07 March 2018, 133 R 96/17s; VUPC 11 April 2018, 133 R3/18s)

1.6. Patentability

The Vienna Upper Provincial Court has reminded, in the course of a nullification proceedings, that for patentability according to Art 52 par 1 EPC the claimed object has to have „technical charakter“. The convention wants to express thereby that the object of an invention must be a „teaching for technical acting“ which is to be understood as an instruction directed to an expert to solve a specific „technical problem“ with specific technical means. An invention is not patentable until it provides an expert with a solution for a (technical) problem with technical means. Features of a claim that do not contribute causally to the solution of a technical problem are therefore not inventive and thus, per se, also not patentable.

(VUPC of 08.June 2018, 133 R 7/18d – Pbl 2019, 25)

1.7. Second (multiple) medical indication

A known substance with a known effect at a specific medical indication can get patent protection for an additional indication if it should be used with respect to a (so far not described) group of patients with the object of a chosen effect.

(VUPC of 11 May 2019, 34 R 113/16m – ÖBl 2019, 47)

1.8. Scope of protection

In the course of a nullifications proceedings of a patent the Vienna Upper Provincial Court has reminded that a patent owner who has claimed a broad scope of protection by using general terms has to accept that prior publications are held against him which differ from the embodiments disclosed in the description but would not have been appropriate in case of a more narrow and precise version of the set of claims. For a special case anticipates a general case so that a prior publication restricted to a special example of use leads to the effect that a patent claim drafted in a general version is no longer grantable.

(VUPC of 04 July 2018, 133 R 13/18m – PBl 2019, 55)

2. Designs

2.1. Criteria for Community design

The CJEU had recently released a judgement with respect of a community design concerning criteria for exclusion of design protection when the appearance of a product is dictated by its technical function. This judgement is a landmark in the EU and also applicable for domestic designs. The key sentences are:

  • In order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.
  • In order to determine whether the relevant features of appearance of a product are solely dictated by its technical function all the objective circumstances relevant to each individual case must be taken into account. In that regard, there is no need to base those findings on the perception of an ‘objective observer’. ((C-395/16 of 8 March 2018) - Austrian IP and Copyright Magazine 2018, 109)
2.2. Scope of protection of a Community design

In the course of an infringement dispute of a Community design the Supreme Court had again the opportunity to emphazise some criteria, namely

  • the matter of design protection is not the product per se, but its appearance (therefore an infringement can occur even if the products are completely different);

  • an infringement is given if an “informed” user gains the same overall impression (an “informed” user has more knowledge than an “average consumer”, without being, however, an “expert of the art”);

  • A comparison between the design supporting the plea and the infringing product has to be performed mentally on one and the same level of perception (e.g. if the design is registered as a line drawing then the product has to be brought into the same level of abstraction before performing the comparison).

(Supreme Court of 20 February 2018, 4 Ob 17/18f – ÖBl 2018, 330)

2.3. Calculation of the profit of an infringer

The profit that has to be handed over by an infringer refers just to the portion of the profit that results specifically from the use of the infringed design. Based on the ascertained net profit deductions are to be made in order to determine the profit that was gained (solely) by the infringment (encroachment on the design right). In the absence of any reference point for the determination the court has to fix the amount on basis of free discretion (Art. 273 Code of Civil Procedure). For flashlights for which the protected design was of no significancy importance the Austrian Supreme Court has limited the profit of the infringer to 10 % of the net profit.

(Supreme Court, 29.1.2019, 4 Ob 213/18d – ÖBl 2019, 149)

3. Trademarks

3.1. Lack of distinctiveness

In several recent decisions the Vienna Upper Provincial Court (VUPC) denied registrations of trademarks for pharmaceuticals (e.g. BRONCHOCOLD, BRONCHAKUT, BRONCHONIGHT; UROPROTECT; ViruProtect) which consists  two parts, one describing the type of protection, the other the field of application, because the involved consumers will merely understand them as descriptive.

(VUPC 133R 137/17w; 133 R 138/17w; 133 R 139/17w; 133 R 140/17m as well as VUPC of 07 March 2018, 133 R 8/18a)

3.2. On similitary of goods

3.2.1    The VUPC recently held that “pharmaceutical preparations” and “medicines” on one hand and “preparations of destroying vermins, fungicides, herbicides” on the other hand are not similar. In former times they were sometimes, in specific cases, regarded as more or less similar.

(VUPC of 02 February 2018, 133 R 133/17g – Austrian IP and Copyright Magazine 2018, 230).

3.2.2    The Vienna Upper Provincial Court departed in a recent decision from the legal practice of the Nullity Department of the Austrian Patent Office as well as the European Union Intellectual Property Office: It declared on one hand “cacao” and on the other hand “coffee and tea” as well as on one hand “sauces, mustard, vinegar and condiments” and on the other hand “preserved and dried vegetables” as not similar.

        (VUPC of 28 February 2018, 133 R 132/17k – ÖBl 2018, 321)

3.2.3    The Legal Department of the Austrian Patent Office has decided in an opposition proceedings that between “bicycles and their parts” (cl. 12) and “automobiles” (cl. 12) there exists, in view of identical signs (KONA), a risk of confusion despite weak similarity of goods. The VUPC confirmed this decision in the recourse proceedings and held additionally that although there exists a direct competition relationship between bicycles and automobiles the majority of the public would regard such products as originating from one and the same enterprise as they are branded with identical marks.

        (VUPC of 21 May 2019, 133 R 42/19b – Patent Gazette 2020, 4)

3.2.4    In an opposition proceedings the senior trademarks VITAMIN WELL and the junior trademark VITAWELL, both for identical goods of class 32, stood against each other. The Legal Department of the Austrian Patent Office denied the similarity due to the different meaning of „Vitamin“ and „Vita“. The Vienna Upper Provincial Court confirmed, however, the similarity and held: The different meaning of the words („Vita“, „Vitamin“ and „Well“) is regarded as having just little influence on the overall impression. Both trademarks insinuate an overall impression with reference to health and wellbeing due to the dominance of „Vita“ and „Well“. The three letters „min“ do not have an importance because the average consumer realizes the designations as a whole and cares less for the different meaning of the words.
As a result the opposed party has to accept against itself that the attacked trademark consists completely of parts which are also contained in the opposing trademark. It counts especially that the respective endings are also identical and that with respect to the single group of goods, for which the attacked trademark is registered, there exists a complete identity with the goods of the opposing trademark.

(VUPC, 11.7.2018, 133 R 46/18i – Pbl 2019, 30).

3.3. Trademark protection by Competition Law

The famous “Original Salzburger Mozartkugel” (a chocolate ball with nougat, marzipan etc.) was invented 1890 by one confectioner (Paul Fürst) in the town of Salzburg and is since then produced and sold in the city. Later on the wrapping of the ball (a silver paper depicting a blue circle logo showing the head of Mozart looking to the right) was registered as a trademark.

A competitor, residing also in Salzburg, started in 2015 to sell “Salzburger Mozartkugel” also wrapped in a silver paper with a blue circle logo, however, with the head of Mozart looking to the left. It was sued for infringement based on trademark Law and Law Against Unfair Competition. The request for discontinuance of distribution in the whole territory of Austria (based on trademark right) was, however, not granted (obviously because the competitor’s balls were not deemed as confusing similar to the registered wrapping of the trademark). The competitor was only enjoined from distribution of his goods in the town of Salzburg where the “Original Salzburger Mozartkugel” were regarded as having acquired high distinctiveness and enjoys therefore protection on basis of Competition Law .

(Supreme Court of 21 November 2017, 4 Ob 152/17g – Austria IP and Copyright Magazine 2018, 238; GRUR Int. 2018, 829)

3.4. No trademark use

An individual word-design mark STEIRISCHES KÜRBISKERNÖL (styrian pumpkin seed oil) was licensed to a producer association and used also as a protected geographic indication. Against it a cancellation action was brought based on alleged non-use because it was not gen-uinely used in Austria by the proprietor or with his consent by a third party. Neither the pro-prietor nor the association sold styrian pumpkin seed oil. The Nullity Department of Austrian Patent Office dismissed the request. However, the court of appeal (Vienna Upper Provincial Court) overturned the decision and cancelled the trademark, confirmed by the Supreme Court. It was held that the trademark was not used to identify the origin of the goods marked there-with being under control of a single enterprise responsible for their quality. On the contrary, one has to proceed from the assumption that the individual mark was used as a certification (quality) mark and as such understood and realized by the consumers or ultimate purchaser. The consumers/ultimate purchasers will regard the sign as a mere indication of a specific, controlled quality and/or manufacturing method being locally restricted. By such a use no relation or connection to a single enterprise, namely the trademark owner or the licensed asso-ciation, can be established.

(Supreme Court of 29 May 2018, 4 Ob 237/17g – Austria IP and Copyright Magazine 2018, 280).

3.5. Reversal of burden of proof and exhaustion of trademark right

A foreign group distributing its branded goods in the European Economic Area by way of a selective distribution system has detected that an Austrian company, which is not a member of this system, offers and sells branded goods which, however, were not intended for the Austri-an market. Therefore the group sued the Austrian company for discontinuance and at the same time requested a temporary injunction because, according to its view, the trademark right was not yet exhausted.

The Austrian company objected in that it had obtained the branded goods from a trader in the EEA but cannot prove it without revealing its source of supply which then would dry up. This was accepted by the court of first instance (Vienna Commercial Court) which assumed a re-versal of the burden of proof to the plaintiff. As the plaintiff did not prove that its trademark-right was not yet exhausted the request for temporary injunction was rejected.

The recourse court (Vienna Upper Provincial Court) released, however, the temporary injunc-tion which was also approved by the Supreme Court. It held that a selective distribution sys-tem must not necessarily lead to a market segregation which could result in different selling prices in different countries. The burden of proof that such a segregation took place did lie, however, at the defendant because the prerequisites for a reversal of burden of proof to the plaintiff were not given. As the defendant did not prove the exhaustion of the trademark right of the plaintiff the latter had to succeed

(Supreme Court of 19 April 2018, 4 Ob 154/17a – ÖBl 2018, 327; GRUR Int 2018, 1192).

3.6. Scope of protection of a known trademark

The owner of Austrian and European Union trademarks TRODAT (in different graphical representations and colors) for stamps, which are accepted as being well-known, has launched an infringement suit against the use of SIRDAS for stamps because the graphical representation, the design, the shape of packaging and even the product numbers were imitated or copied, respectively, by the competitor. The Vienna Commercial Court rejected the request for discontinuance, however, the Vienna Upper Provincial Court prohibited the use of the designation SIRDAS on the grounds that in connection with a known trademark even the adoption of special design elements containing typical characters of writing or logos with an identical color and figurative appearance can be unfair, despite different word elements. Therefore an unfair utilization of the distinctiveness is given in the way of exploitation of repute and attention as well as of dilution.

(VUPC, 27. June 2018, 120 R 52/181 – ÖBl 2019, 88)

3.7. Limits of right preserving use

In a cancellation proceedings of a trademark based on alleged non-use it was, among other questions, to be decided how to proceed when an actually occurred use is covered conceptually by two abstract terms. Specifically the services “education; correspondence courses” (cl. 41) were concerned whereby the evidence of actual use was (just) brought for “correspondence courses” which, however, are also covered by the broader term “education”. The VUPC decided that “education” has to be cancelled because “correspondence courses” is the narrower of the two abstract terms and comes closer to the happened use of the trademark in dispute.

(VUPC of 12 December 2018, 133 R 122/18w – Patent Gazette 2019, 66)

3.8. 3D – Trademark

A three-dimensional trademark for beverages, having the shape of a stand-up drink pouch, was registered due to acquired distinctiveness. Upon request it was, however, cancelled by the Austrian Patent Office with confirmation by the Vienna Upper Provincial Court because it turned out that the configuration of the good (as such also the packaging is regarded as long as the good has no shape itself like a liquid) is solely determined technically. Moreover it was held that decorative or fanciful elements without technical functions were missing which otherwise could have been decisive to qualify a trademark.

(VUPC of 20 February 2019, 133 R 12/19s – PBl 2019, 45)

3.9. Trademark application in bad faith

After termination of a license contract the licensee of a trademark owner had filed a similar trademark for broadly similar goods and services. Thereupon the former licensor brought a cancellation request against the junior trademark which was based, besides of risk of confusion, on bad faith in the course of trademark application. The Nullity Department of the Austrian Patent Office attested the bad faith which was confirmed by the Vienna Upper Provincial Court. It was held that the (terminated) partnership-license-contract had contained post-contractual loyalty duties which were violated by the trademark application. Moreover, the presence of violation of public policy was stated due to intent of obstruction.

(VUPC of 20 February 2019, 133 R 7/19f – Patent Gazette 2019, 73)