01-01-2010 (Newsletter Issue 6/10)
Introduction of Opposition Proceedings and Amendment of Official Fees
With the latest amendment of the trademark law of 2009, trademark opposition proceedings were introduced. Owners of prior trademarks may file an opposition against the registration of confusingly similar trademarks at the Austrian Trademark Office within 3 months from publication. Owners of prior trademark filings have the same right as long as their filing proceeds to registration. Opposition can be filed against trademarks published after July 1st, 2010.
The fees for trademark filing were amended as well: As from January 1st, 2010, the total fees have to be paid at the beginning of the registration proceedings. The fee for each additional class exceeding the 3rd is raised from EUR 25.00 to EUR 40.00. The former trademark duration fee has been integrated with the filing fee. The total filing fee for up to three classes amounts to EUR 329.00, and another EUR 40.00 for each additional class.
Source: Sonn & Partner, Austria
Legal basis is the Trademark Act of 1970 (last amended 2009).
Austria is a member of the Paris Union Agreement, the Madrid Agreement, the Madrid Protocol, the Nice Agreement and the European Union.
Trademark protection is obtained by registration. An unregistered trademark can only be held against a registered trade mark if it has become well-known at the priority date of the registered trademark.
Nice classification, 10th edition
Registrable as a trademark are any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape and colour of goods or of their packaging, provided that such signs are capable of distinguishing a good or services of one undertaking from those of other undertakings. Sound trademarks are registrable if represented graphically. Three-dimensional forms are also registrable, but if they consist of the form or design of goods or their regular kind of packaging, registration is difficult. There do not exist any olfactory marks in Austria. The Austrian law does not differentiate between trade marks and service marks. Special rules apply to collective trademarks.
The application is filed at the Patent Office.
Multiple-class applications are possible.
Non-EU applicants need a local agent.
Power of attorney needs not to be presented but just referred to.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination and an examination on absolute grounds of refusal. Signs not considered distinctive in the examination can be only registered upon proof of acquired distinctiveness. The Patent Office also conducts a search for identical and similar trademarks, but does not cite offically older rights as bar to the registration. The search results, however, may serve for the information of the applicant. Owners of prior trade marks are not informed. If the trade mark applicant insists, the trademark must be registered in spite of similar or even identical prior trademarks.
The application procedure from first filing to registration will take approximately 3 to 4 months if no serious problems are raised by the examiner. The first office action is to be expected after 3 to 4 weeks. Only after registration, the trademark is published in the monthly journal “Österreichischer Markenanzeiger”.
The opposition period is three months from the publication of the registration for trademarks published after July 1st, 2010. Formerly, Austrian law did not provide for an opposition procedure.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
3 months from the first day of the month following the month in which the international trademark was published by WIPO.
Trade mark protection begins with the date of registration, but retroactively as of the priority date. The protection period is 10 years from the registration date and ends on the last day of that month in which the protection period ends. The registration is renewable for periods of 10 years without limitation.
A trade mark registered for at least 5 years may be contested by any third party on the basis of alleged non-use. The burden of proof for serious use is excusively upon the trademark owner. If not contested, the trademark will continue to be valid and even if not used for a period longer than 5 years, it can be revalidated by taking up serious use subsequently, provided that no third party contested the trademark during the period of non use.
The official fee is € 359 in total for up to three classes and € 72 for each additional class, this including € 30 document fee, € 25 printing costs and € 4 for issue of Registration Certificate.
Trademark Licence Agreement
In Austrian Law there is no provision for the form of a licence agreement. A licence agreement may be concluded orally or in writing. It is advisable to conclude licence agreements in writing for the purpose of evidence. Licensing of unregistered marks is permitted, but as trademark protection is obtained by registration, it may be difficult to enforce such a licence unless the unregistered trademark is a well-known mark. Licensing may be restricted to only some of the goods or services covered by the trademark registration. Whether the sale of a registered mark automatically terminates the licence agreement depends on the terms of the agreement. In the event that the purchaser of a trademark had no knowledge of the existence of the licence, the licence is regarded as terminated. There are no statutory provisions prescribing the terms of a licence agreement.
Recordal of a licence with the Trademark Office is voluntary. There is no time frame for a recordal and no prescribed form or content for a licence agreement.
A licence agreement becomes effective and enforceable against third parties upon its conclusion. Publication of a licence agreement is not required.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. Exclusive licensees may institute proceedings against infringers without a request to the proprietor, while non-exclusive licensees may only institute proceedings themselves if this has been agreed upon in the licence agreement, or if they have a special power of attorney from the trademark owner authorising them to do so. Only the exclusive licensee has an independent right to act against infringers. This right is independent of the fact as to whether the licence is recorded or not. If the licence is non-exclusive, the right of a licensee to institute proceedings against an infringer must be expressly provided for in the agreement, or by a special power of attorney.
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