Austria: Two Years Of Trademark Opposition

More than two years after the introduction of trademark opposition procedures in Austria, uncertainties remain about various aspects to be considered by trade mark owners. Finding the right strategy on how to challenge younger trade marks is important.

Since 1 July 2010, trademark owners (national Austrian trade marks, Community Trademarks or International Registrations designating Austria or the EU) have the possibility to oppose new Austrian trade mark registrations within three months from their publication.

Limitations

But limitations apply. For example, oppositions must be based on earlier registered trademarks or earlier trademark applications. Therefore, an opposition may not be based on earlier unregistered trademarks, company names, copyright or well-known trademarks under Article 6bis Paris Convention. Nor may oppositions be based on "bad faith filing", filing of an "agent's mark" or on absolute grounds (such as lack of distinctiveness).

In addition, oppositions are limited to: (i) identical trademarks registered for identical goods or services or (ii) similar trademarks registered for similar goods or services based on likelihood of confusion. It is not possible to invoke the specific protection of famous trademarks against taking unfair advantage of, or being detrimental to, its distinctive character or repute (Sec 10(2) Austrian Trademarks Act, Art 5(2) EU Trademark Directive).

According to the Austrian Patent and Trademark Office, currently 3.5% of all trademark registrations have been subject to oppositions. Eleven per cent of first instance decisions have been appealed. Despite opposition proceedings have been in place for more than two years, only three cases had been finally processed by the board of appeal (the second instance body) until October 2012. No decisions of the Austrian Supreme Patent and Trademark Senate (the third and highest instance in opposition proceedings) have been rendered until October 2012. This means that there is no guidance from the higher instances on many procedural aspects.

Considerations before filing an opposition

The following points should thus be considered before filing an opposition.

Especially if the opponent's trademark has a reputation on the market, the opponent should consider whether a challenge of the younger trademark might be more likely to succeed if based also on the specific protection of famous trademarks (ie, not only on likelihood of confusion). A cancellation action may thus be more promising than an opposition.

If the earlier trademark has acquired enhanced distinctiveness through use, which may broaden the trademark's scope of protection, this could also be invoked in opposition proceedings. However, due to the expedited character of opposition proceedings, the opponent should be prepared to at least specify (even better: already submit) within the opposition period any relevant documentation that the trademark has acquired enhanced distinctiveness through extensive use. This requires timely preparation of the opposition.

Because opposition proceedings are expedited, it is advisable to support the opposition with a reasoned statement within the opposition period (the law only states that the "reasoned" opposition must be submitted within the opposition deadline with out specifying what "reasoned" means). So it is not clear (i) whether just submitting the filled-in opposition form would meet the requirement of a "reasoned opposition" and (ii) whether further arguments submitted after expiration of the opposition period would be accepted by the Patent and Trademark Office.

In the opposition proceedings, the defendant can request proof of genuine use of the invoked trademarks, if they are already subject to use requirement. But even if the opponent submits documentation supporting genuine use, the Austrian Patent and Trademark Office will notify the defendant that he can file a non-use revocation claim against the opponent's trademarks (leading to suspension of the opposition proceedings). Opponents should thus carefully consider on which trade mark registrations an opposition should be based to avoid a material counter-attack based on non-use.

The losing party pays no cost reimbursement. So in a straight-forward case, opposition proceedings may help to quickly remove registrations from the register already at a very early stage. The opponent will have to bear his own costs (including the opposition fee of EUR 200) even if the opposition succeeds. On the other hand, there is no risk that the opponent will have to reimburse the defendant's costs if the opposition fails.

Opponents intending to file an opposition to an Austrian trademark registration should there fore seek timely advice and elaborate the strategies on how to best defend their trade mark rights. They can then decide whether straight-forward opposition proceedings, full-fledge cancellation proceedings or an out-of-court settlement is best.

"Especially owners of trademarks having a reputation on the market should carefully consider their different procedural options on how to challenge possibly infringing earlier trademark registrations."

This article was originally published in the schoenherr roadmap`13 - if you would like to receive a complimentary copy of this publication, please visit: pr.schoenherr.eu/roadmap.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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