Austria: New Developments In Trade Mark Protection

 The latest amendment of the Trade Marks Act brings numerous modernisations and simplifications. This makes the national trade mark in Austria an attractive alternative to the EU trade mark.

Strengthening Austrian trade mark protection

We are faced with trade marks on a daily basis. While surfing the internet, shopping, watching TV, listening to the radio and on various social media channels. Trade marks influence our purchase decision. They characterise a company's goods and services and define clear features that distinguish them from the competition. A trade mark turns a product into a unique brand article that the public won't want to miss out on.

With the new amendment FEDERAL LAW GAZETTE I no. 124/2017, the Austrian Trade Mark Law (MSchG) was aligned with European guidelines in implementation of the EU Trade Marks Directive (EU) 2015/2436. The key changes to the Austrian Trade Marks Act are the reduction in procedural fees, the introduction of the certification mark, the possibility of dividing a declared or registered mark, the adjustment to the beginning of the ten-year protection period and the suspension of certification when transferring a trade mark.

Problem spotted – fees reduced!

The high fees incurred when registering a trade mark represented a serious problem, in particular for start-ups as well as small and medium-sized enterprises. In the past, therefore, entrepreneurs often neglected to take appropriate measures to protect their trade mark. Since 1 September 2017, registering a national trade mark in Austria for three goods or service classes has cost just EUR 284.00 when registering electronically. The trade mark is registered for ten years. An official availability search can be conducted for an additional fee of EUR 40.00 during the application procedure.

Guaranteed with logo: The new certification mark

More and more consumers attach particular importance to purchasing products of a certain quality. They want to be able to trust that products bearing the mark meet that standard. The certification mark was created to this effect, and it has been possible to

apply for it in Austria since 1 September 2017. It differs from a conventional mark in that it refers not to the origin of the goods or services of a company but to a very specific standard in terms of material, the mode of manufacture, quality, accuracy or other characteristics (Sec. 63a and Secs. 65, 66a MSchG). The mark explicitly excludes any reference to the geographic origin. The possibility of an "organic mark" is also considered. Certification marks can only be applied for by people who do not carry on a business involving the supply of goods or services of the kind certified. It is therefore particularly suitable for public institutes or interest groups looking to establish specific goods and service standards. Within this framework, they therefore have the opportunity to register trade marks intended to function as a "certification or quality stamp and seal of quality" with the Austrian patent office.

The small trade mark ABC: What are trade marks?

Up until now, trade mark applicants were often faced with the problem that grounds for refusal that only related to individual goods and services resulted in the rejection of the trade mark in all classes applied for. Since September 2017, it has been possible to divide a new trade mark registration or registered trade marks into several separate applications or registrations (Secs. 23a et seq. MSchG). By paying a division fee of EUR 200.00, applicants can now prevent grounds for refusal related to individual goods and services from leading to a total refusal of the application. Therefore, a division can be interesting in, for example, application procedures where the Austrian patent office questions the required distinctiveness for a part of the application. A division can lead to a quick conclusion of the registration procedure for the undisputed part of the trade mark registration. Dividing a trade mark registration makes it possible to only transfer the trade mark for individual goods and services.

Attention – new calculation method for the protection period!

The protection period for all trade marks registered in Austria after 1 September 2018 will in future start on the day of application (instead of on the day of registration a few months later). Although this leads to a one-time reduction in the protection period, it is compensated for in the case of news applications thanks to a quicker issuing procedure, the so-called "fast-track procedure", by omitting the availability search. For already registered trade marks, this one-time reduction in the protection period only occurs at the time of the next renewal.

Certificates no longer required when transferring a trade mark

Changes in the trade mark register have previously required a written application to be presented to the Austrian patent office together with the original documents or certified copies that establish the change in rights. The procedure is now much simpler, as it is sufficient to present an uncertified copy of the original document on the basis of which the changes in rights are to be registered. However, the original document must still be a public document or bear the certified signature of the proprietor. Trade mark transfers have also become easier, as the joint declaration of the former and the new trade mark proprietor is now sufficient instead of the deed of transfer.

European Union trade marks: Unconventional trade marks are on the way

Since September 2017, EU trade marks have no longer needed a graphical representation. This will likely lead to the registration of unconventional trade marks at EU level, such as trade marks based on taste, smell, sound or movement.

Conclusion

In light of the new legal situation and the possibilities it offers, entrepreneurs would be well advised to rethink their own arrangements with regard to trade mark protection. The amendments to the Austrian Trade Mark Law are part of last year's trade mark reform package which allows for new and modern possibilities for protecting trade marks against competition. A trade mark offers its proprietor a clear competitive advantage over the competition. Developing and maintaining a trade mark portfolio is an investment in the future. Finally, the fact that a successful company also pursues a corresponding branding is in tune with the spirit of the times. A company's success is therefore not rarely coupled with the reputation and value of its trade mark(s), which must be protected.

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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