Patent law

1. Nullity proceedings - remittal for completion of proceedings

Nullity proceedings was brought against a patent (pendulum hinge) on the grounds of alleged lack of disclosure and inventive step as well as exceeding the original disclosure. In the proceedings before the Nullity Department of the Austrian Paten Office, the patent proprietor filed five auxiliary requests, each with modified versions of patent claim 1, in case that it would be declared that the original disclosure was exceeded and/or the inventive step was lacking. The Nullity Department affirmed the inventive step and denied the excess of disclosure; it therefore saw no reason to deal with the auxiliary requests in the course of the rejection of the nullification request.

The Court of Appeal (Vienna Upper Provincial Court), however, denied the inventive step but could not deal with the auxiliary requests at the same time as the parties would not have had the opportunity to comment on them, i.e. they would have been taken by surprise; it therefore set aside the final decision of the Nullity Department, which will now have to examine the auxiliary requests.

(OLG of 10.11.2022, Nullity Department 33R18/22t - ÖBl 2023,85; Pbl 2023,12)

2. Inadmissible intermediate generalization

In an infringement dispute the defendant successfully objected to the invalidity of the patent-in-suit in the safeguard proceedings, especially since the latter had arisen from a parent application which - as far as relevant for the decision - originally concerned a combination of features. However, since claim 1 of the patent in suit now only contains one of the features, the Vienna Commercial Court, confirmed by the Vienna Upper Provincial Court, considered this to be an inadmissible intermediate generalization, which is why the request for an interim injunction was rejected.

(OLG Vienna of 20.04.2022, 33R7/22z - ÖBl 2023,21)

Supplementary Protection Certificate (SPC)

On the basis of a patent entitled "Pharmaceutical formulations with dapaglifloxin-propylene glycol hydrate", in which, inter alia, a combination with saxaglipin is protected, and the associated first authorisation under pharmaceutical law in the EU, an SPC was ultimately applied for the product "dapaglifloxin-propylene glycol hydrate/saxaglipin". However, this was rejected by the Austrian Patent Office on the grounds that the term "product" only encompassed the active ingredient or the combination of active ingredients, but not further additives without a medicinal effect (in this case: the form of administration as "propylene glycol hydrate") - the SPC should therefore have been applied for "dapagliflozin/saxaglipin".

On appeal, however, the Vienna Upper Provincial Court granted the SPC with the requested product name. It held that the term "active ingredient" is not defined in the SPC Regulation and that the exclusion of substances that do not have their own medicinal effect from subsumption under the term "active ingredient" is therefore (only) due to ECJ case law. If one were to follow this case law here - as the Patent Office has done - it would result that no SPC could be granted for the pharmaceutical formulation corresponding to the basic patent. However, it would contradict the purpose of the SPC Regulation if an extension of patent protection for use as a medicinal product could only be considered if the basic patent disclosed a pure active ingredient.

(OLG Vienna of 29.12.2022, 33R89/22h - ÖBl 2023,71 ; Pbl 2023,53)

Design law

The owner of a Community design (CD) for a pendant lamp with five truncated cone-shaped lampshades of different sizes and colors suspended from a horizontal rod took legal action against a competitor for design infringement, as the latter had brought pendant lamps onto the market with five lampshades of different sizes and colors suspended from a horizontal rod, some of which were cylindrical and some of which were truncated cone-shaped. It was nevertheless successful in all three instances (HG Vienna, OLG Vienna, OGH), as the scope of protection of a CTM depends on the overall impression, but not on a mosaic-like comparison of the details. As a yardstick for assessing this overall impression, the Supreme Court used an informed user, who differs from the "average informed, attentive and reasonable average consumer" by a certain degree of knowledge and open-mindedness for design issues, but does not require the knowledge and ability of a specialist

(OGH of 20.12.2022, 4 Ob193/22v – ÖBl 2023,134)

Trademark law

1. Binding effect of decisions (in trademark law)

In opposition proceedings, a trademark (BASO) was canceled at first instance (Patent Office) in the scope of goods on the basis of a similar earlier EU trademark (BASOR) for services relating to these goods. In the recourse proceedings, the trademark owner then submitted its cancellation request to the EUIPO based on non-use of the opposition mark and requested that the first instance decision be set aside and that the proceedings be interrupted until the EUIPO had issued a final decision. The latter ordered the cancellation of the opposition mark, which was reported by the trademark owner to the court of recourse, Vienna Upper Provincial Court. Although the latter rejected the request for interruption and the submission of documents due to inadmissible innovation, it ordered the opposition to be dismissed, as the decision of the EUIPO had meanwhile become final and binding and its binding effect was to be enforced ex officio, i.e. by the Vienna Upper Provincial Court.

(OLG Wien of 26.01.2023, 33R67/22y – ÖBl 2023, 219; Pbl 2023, 56)

2. Trademark application in bad faith  

A word mark and a word-design mark LIPPIZANER were registered for countless goods and services for a company that had no connection whatsoever with the Spanish Riding School and the Lippizaner horses. Based on these, the company filed criminal charges against the managing director of the Spanish Riding School when "Lippizaner coffee" and "Lippizaner cakes" were sold at a Christmas market. In response, cancellation applications were filed against the two LIPPIZANER trademarks on the grounds of non-use, deception and bad faith. The Nullity Department of the Austrian Patent Office ordered the cancellation of both trademarks, as it considered it proven that they had been applied for in bad faith, i.e. with an immoral intention to obstruct. The appeal lodged by the company with the Vienna Upper Provincial Court was not upheld and the extraordinary revision lodged with the Supreme Court was dismissed.

(OLG Wien of 23.01.2023, 33 R48/22d, OGH v. 27.06.2023, 4 Ob54/23/d – Pbl 2024, 7; ÖBl 2024, 84)

3. Use as a trademark

• • The word-design mark GENUSSREGION ÖSTERREICH (No. 224724) for goods in classes 29, 30, 31, 32 and services in classes 35, 39, 44 was canceled on the basis of an application that could be filed by anyone (Patent Office, Vienna Upper Provincial Court - confirmed by the Supreme Court), as it was not used seriously by the trademark owner or its licensees as a trademark, i.e. as an indication of origin, but served to guarantee a certain product or service quality and was perceived as a seal of quality by the relevant public.
    
    (OLG Wien of19.04.2022, 33 R100/21z; OGH v. 20.12.2022, 4 Ob127/22p – Pbl 2023, 445)
    
    

  • A trademark registered for assistance in business management etc. (cl. 35), construction etc. (cl. 37) and scientific services etc. (cl. 42) was successfully challenged for non-use as it was mainly used only as an element of firm’s name on a foreign language website which did not concern activities related to Austria.

    The Nullity Division of the Austrian Patent Office, the Vienna Upper Provincial Court and the Supreme Court (in rejecting an extraordinary appeal on points of law) held that:

    -   The use of a trademark in a company name does not constitute "trademark-like" use for goods and services.

    -   The mere accessibility of a website in the territory covered by the trademark (here: Austria) does not indicate that the offers displayed on it are directed to this territory.

    -   The exclusive use of a trademark for internal purposes, e.g. for the distribution of goods within a group of companies, has no external effect and therefore does not constitute use for goods or services that preserves rights.

    (OLG of 06.09.20223, 33 R50/22y; OGH v. 31.01.2023, 4 Ob206/22f – Pbl 20223, 48f)

4. Risk of confusion 

• • On the basis of the word mark ZARA HOME for services in Class 35 (including advertising, sales promotion, etc.), an opposition was filed against the word-design mark AZRA HOME for (among other things) retail services in relation to various goods (Class 35), which was upheld by the Legal Department of the Austrian Patent Office on the grounds of likelihood of confusion in visual, phonetic and conceptual terms. However, following a recourse by the trademark owner, the Vienna Upper Provincial Court denied the likelihood of confusion. It held that due to the rearrangement of the two initial letters "Z" and "A" of ZARA and AZRA, the visual similarity was low and the unusual juxtaposition of "Z" and "R" in AZRA did not provide sufficient phonetic similarity for a likelihood of confusion. The fact that both words are female first names was not considered as significant as the visual and phonetic dissimilarity. An  extraordinary revision-recourse by the opponent was rejected by the Supreme Court.

(OLG Wien of 14.07.2022, 33 R42/22x; OGH v. 20.12.2022, 4 Ob183/22y – Pbl 2023,40)

• • The proprietor of the (word) mark S & P GLOBAL (cl. 9, 16; 35, 36, 40, 41, 42) opposed the registration of the word-design mark S & P (cl. 9, 16, 18, 25; 35, 36, 38, 40, 41, 42, 44, 45).The Austrian Patent Office (APO) assumed a high degree of similarity between the signs and ordered the deletion of goods and services considered to be identical or similar. The applicant filed a recourse against this on the grounds of incorrect comparison of similarity and was partially successful. The Vienna Upper Provincial Court stated the following on individual aspects of the submission:

    -   A similarity of services is to be assumed if, taking into account all relevant factors characterizing their relationship to each other - in particular their regular commercial origin, their regular method of provision, their purpose, their economic significance, their nature as competing or complementary services or other reasons essential to the likelihood of confusion - they have such close points of contact that the relevant public might consider that they originate from the same or commercially connected enterprises,  provided that they are identified by identical marks, which is to be assumed, whereby the widest possible scope of protection of the earlier mark is to be taken into account.

    -   Generic designations used are to be interpreted in accordance with common usage and objective public understanding.

    -   Classification is irrelevant for the assessment of similarity. It is not decisive whether the goods and services appear in the same class.

    -   Services provided with the aid of hardware and software do not, in principle, create a sufficient close relationship to the goods "hardware and software" because complex services are provided with the aid of computers in all areas.

    -   Professional journals etc. (printed products) are not similar to paper, cardboard etc., even if they may be printed on these.

    -   "Business project management of construction projects (cl. 35)" and "financial preparation of construction projects (cl. 36)" are not similar to "financial and investment advice (cl. 36)", even if the latter may relate to real estate projects.

    In summary, the Vienna Upper Provincial Court therefore assumed that not every conceivable possible connection can lead to a likelihood of confusion when comparing the similarity of goods and services.

    (OLG Wien of 26.06.2023, 33 R128/22v – Pbl 2024,4; ÖBl 2023, 248)

  •  Recently, two "classic" decisions were handed down in which the complete incorporation of an older sign into a younger trade mark in the case of essentially identical goods and services always gives rise to a likelihood of confusion, which as a legal question is generally not accessible to any evidence proceedings:

    -   The junior trademark in the shape of coat of arms „tempus operatur pro me / Franz Ludwig zu Peigarten / Der Kastellan“ in class 41 is confusing similar to the senior trademark  „Der Kastellan“.
    
        (OLG Wien of 25.07.2023, 33 R70/23s – Pbl 2024, 16)

    -   The junior word-design mark (with logo) BIOGENA MARS is confusable with the senior word mark MARS in class 5.
    
        (OLG Wien of 18.07.2023, 33 R49/23b – Pbl 2024, 17)
    
    

  • The proprietor of the earlier trade mark LC Waikiki for, inter alia, leather and leather goods (cl. 18) and advertising and composition of goods etc. (cl. 35) prevailed - wrongly in my opinion - in opposition proceedings against the later trade mark LC Home for, inter alia, furniture (cl. 20) and trade services (also) for furniture (cl. 35). The letter combination "LC" was attributed a dominant, fanciful character, "Home" was regarded as descriptive and "Waikiki" was neglected or disregarded. Similarity was assumed between leather (leather goods) and furniture because furniture can also have leather, which is why there should be a complementary relationship; the combination of goods and trade services would overlap. This decision is incomprehensible to me.
    
    (OLG Wien of 28.09.2023, 33 R71/23p – Pbl 2024, 26)
    
    
  • On the basis of two almost identical, earlier figurative marks, in particular for services in Class 36 (financial services, real estate investments, etc.), consisting of three black columns next to each other, the height of which increases from left to right in an arc, one mark was revoked in opposition proceedings to the extent of class 36 (and partly 37, insofar as services in the construction industry were concerned), which had three black columns with a height increasing abruptly from left to right and also contained the number-letter combination 3SI next to it and the word IMMOGROUP in block letters below it. The APO and the Vienna Upper Provincial Court justified this by stating that the figurative element of the earlier marks was in fact incorporated in its entirety into the later mark and was equivalent to its word element, i.e. it did not take a back seat to it.
    
    (OLG Wien of 25.07.2023, 33 R6/23d  Pbl 2024, 26)

5. Trademark Infringement

A company used Google's "dynamic search ads" technology, in which an algorithm searches the company's website in order to design advertising measures. In the process, the trademark (AIRBUTLER) of a competitor popped up which opposed the use of the trademark with an action for interference. However, the court of first instance (Vienna Commercial Court) dismissed the action on the grounds that the defendant had not actively used the trademark for advertising purposes and also had no possibility of preventing the use of the trademark because it was carried out by an algorithm that was unknown to it and could not be influenced. However, the Court of Appeal (Vienna Upper Provincial Court), confirmed by the Supreme Court, granted the injunction and payment request. It held that advertising with "dynamic search ads" has the inherent potential to cause legal infringements "automatically", which could be avoided by, among other things, creating a so-called exclusion list. The trademark infringement caused by Google is therefore attributable to the defendant who commissioned the service.

(OGH of 22.11.2022, 4 Ob134/22t [OLG Wien 1 R 1/22g] – ÖBl 2023, 129)

6. Protection of well-known trademarks

• • The owner of the trademark "PUMA", which is recognized as well-known in the EU and registered for goods in classes 18, 25 and 28, filed an opposition against the later Austrian trademark "PUMA Multipower" for goods in classes 7 and 12. While the APO dismissed the opposition despite the reputation of the earlier mark "PUMA" due to a significant difference in goods and services, which would not suggest an "exploitation of reputation", the Vienna Upper Provincial Court upheld the opposition in the recourse proceedings on the grounds that there was "exploitation of attention" for unfair motives; whether there was also "exploitation of reputation", "damage to reputation" or "dilution" was therefore no longer examined.
    
    (OLG Wien of 22.02.2023 33 R80/22k – Pbl 2023, 68; ÖBl 2024, 33)
    
    
  • The image of a stag's head with antlers (and possibly a cross in between) in a single position or in combination with the word JÄGERMEISTER (usually in Gothic letters) are well-known trademarks for herbal liqueurs in the EU. A competitor has launched its herbal liqueur on the Austrian market with a similar design, with the stag wearing glasses, a shirt and a bow tie. In the trademark infringement proceedings, the Vienna Commercial Court issued an interim injunction for the total cessation of this use, which was confirmed by the Vienna Upper Provincial Court. An extraordinary revision-recourse lodged by the competitor against this was rejected by the Supreme Court, as there were no apparent justifying reasons for the strikingly similar design and labeling to the well-known brands which leads to a mental link and exploitation of reputation.
    
    (OGH of 30.05.2023, 4 Ob55/23a – ÖBl 2024, 135)

7. "Other" trademark

The color combination blue - green - white with an image of a petrol station was applied as an "other mark" (alternatively as a position mark, color mark, shape mark) with the description "to identify petrol stations" for various goods and services and - as was to be expected - was considered by all three instances (APO, Vienna Upper Provincial Court, Supreme Court ) to be registrable only with a reputation: Direct registrability would only exist if the combination of all trademark elements differed at least from that which is "commonly" used, which was not the case in this instance.

(OGH of 12.09.2023, 4 Ob16/23s –ÖBl 2024, 130)