Austria: Trade Mark Offensive 2017 - Amendments To The Austrian Trade Mark Protection Act

Last Updated: 11 October 2017
Article by Georg Kresbach and Bernhard Schmidt
Most Popular Article in Austria, October 2017

New regulations to the EU's Trade Mark Law were established with Regulation EU 2015/2424 of the European Parliament and of the Council and Directive EU 2015/2436 of the European Parliament and of the Council from 16.12.2015, which entered into force as of 1 October 2017. By implementing the Trade Mark Directive, the Austrian legislators have adapted the Austrian Trade Mark Protection Act (MSchG) to the European requirements within the amendment BGBl I Nr. 124/2017 from 1.8.2017 comprehensively. The amendment to the Trade Mark Protection Act has been in effect since 1 September 2017 for the most part and facilitates the application process in a number of ways.

The purpose of the Directive is to bring national regulations within the member states as well as their laws into harmony with the Regulation to the EU Trade Mark Law. The adjustment is intended to modernise and simplify national trade mark protection to guarantee faster registration proceedings and to sustain the national trade mark as a viable alternative to the EU trade mark.

The major amendments in the Trade Mark Protection Act (MSchG) are the modification of the start of the ten-year trade mark protection period, the option to divide a filed or registered trade mark, the implementation of a certification mark, the facilitation of amendments in the trade mark register and an adjustment to the official fees of the patent office.


According to § 19 para 1 MSchG, trade mark protection begins with the day of its registration in the trade mark register. Pursuant to the current legal situation, the protection period expires ten years after the trade mark was registered at the end of the month. With the implementation of the new regulation, the ten-year protection period starts with the day the trade mark was filed. A renewal after 1.9.2018 causes an adaption of the protection period, leading to a one-time reduction of the trade mark protection period. This reduction will be compensated by accelerated registration proceedings ("Fast-track proceedings", meaning that the obligatory similarity search of potential prior rights is omitted). The new calculation method of the protection period applies without exception to all trade marks in Austria, thus to registered and applied trade marks.

Example: A trade mark application was filed on 25.1.2009 and registered on 14.3.2010. The protection period is effective until 31.3.2020. Upon the next renewal, the trade mark will be protected until 25.1.2029 "only" (10 years from the day of application), which causes a one-time reduction of the protection period. The economic disadvantage will be compensated for by a reduction of the renewal fees.


Since 1.9.2017, §§ 23a ff MSchG provide the option to divide the application/registration of a trade mark into two or more applications/registrations. The divisional application/registration has the same priority rights as the basic application/registration. For the division, a fee of EUR 200.00 will be charged, which must be paid within two months, otherwise the application for division will be considered as not filed. Such applications for division might be beneficial during the process of filing for trade mark protection, in which the patent office has concerns about the distinctiveness of parts of the trade mark. With the division of the trade mark application, the registration proceedings can move forward with the indisputable parts of the filed application.

Such a division cannot be filed between the registration of the trade mark in the trade mark register and the end of the objection period. Applications filed for division will be rejected during this phase. This regulation will prevent interferences or complications in case of enforcement of prior trade mark rights.

Regarding international trade marks with trade mark protection in Austria, the division will be available as of 1.2.2019 (§ 70a MSchG). Such applications for division must be filed at the Austrian Patent Office.


As a counterpart to the EU Certification Mark, a national certification mark (quality mark) was implemented in the Austrian trade mark laws (§ 63a und §§ 65, 66a MSchG). The certification mark is appropriate for distinguishing goods or services in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from uncertified products. Explicitly excluded from protection of the certification mark is the indication of the geographical origin. Certification marks can only be filed by persons who do not have an economic interest in the success of the mark. The regulations have also been in effect since 1.9.2017.


Up until now, it was necessary, according to § 28 MSchG, to file a written application form along with the original documents or certified transcripts thereof, which provide evidence of the amendments to the rights on the trade mark, with the Austrian Patent Office in order to amend an entry in the trade mark register (for example the entry of licenses or a right of lien on a trade mark). The amendment of the MSchG brought essential simplifications in this regard. According to § 28 para 2 MSchG, the submission of uncertified copies of the original documents, on which basis the amendments should be made, are sufficient for the application of amendments in the trade mark register. In the case the original document is a domestic or foreign document, which was not issued by a public authority, the current certification standards still apply, i.e. the signature as well as the authority of the authorized person to sign must be certified (and – in the case of foreign documents – also re-certified).

An exception to this regulation is the assignment of trade marks: Instead of the assignment document, a corresponding declaration of the parties (former and new trade mark owner) or their legal representatives suffices. The declaration of assignment can be filed within the assignment application or in a separate document and requires the signatures of both parties. These signatures no longer have to be certified by a notary. As a result, the proceedings of trade mark assignments at the Austrian Patent Office will be significantly easier.

However, according to § 28 para 3 MSchG, in cases of doubt, the patent office still has the option to demand further documents, originals or certified copies as evidence of the assignment of the rights on the trade mark.


A crucial cost factor during the application of a trade mark used to be the obligatory similarity research on possible prior rights regarding prior trade mark rights performed by the Austrian Patent Office during the application proceedings. Beginning on 1.9.2017, this automatically performed research is no longer obligatory for the registration of a trade mark, which affects the official application fees for the application of a trade mark and is reflected in lower costs: EUR 304.00 for a written application and EUR 284.00 for an online application. However, the applicant is still able to request an optional similarity research. Further, the progressive fee structure regarding the renewal fees was removed. The renewal fees remain steady during the whole protection period. A list with the current fees of the Austrian Patent Office can be found under the following link:

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions