An overview of Austria's IP landscape

Patent and utility models

However, the amendment will not come into force until Austria signs the London Agreement, which omits translations of European patents into the respective language of a country during the course of validation.

The Austrian parliament has also asked the minister of transport, innovation and technology to study and assess the advantages and disadvantages of ratifying the London Agreement. Although this study has not yet officially been presented, it seems that in the long run Austria should join sign up to the agreement.

However, a number of hurdles need to be overcome before the agreement can be ratified. Small and medium-sized companies need to be supported so that their access to the national patent system can be improved.

Also, a contrary legal opinion has been published that states that signing up to the agreement would result in conflicts with the Austrian constitution as well as international law. Therefore, it seems that ratification of the London Agreement has been put on the shelf for the next couple of years.

As Austria is both the only German-speaking country that still requests translations of European patents during the course of validation, and a small country, foreign patent owners might eventually omit Austria from the scope of protection in order to avoid translation costs.

However, this is not advisable because, although Austria’s population is small, the country is home to many manufacturing companies that export goods. If foreign patent owners omit Austria from the scope of protection, these companies could either not benefit from patent protection or could not be sued on the basis of a valid patent.

In the course of a nullification action against an Austrian utility model, the Supreme Patent and Trademark Board held that, due to recent legal developments and European decisions, there is no longer a difference between the merit of invention in a patent and in a utility model. The necessary inventive step for qualifying a utility model, as well as inventive activity as a prerequisite for granting a patent, requires the finding of a non-obvious solution to a problem.

With this landmark decision, the former holding that a utility model affords less quality of invention than a patent is thrown out (Supreme Patent and Trademark Board, December 22, 2010).

Designs

National or Community design decisions are very rare in Austria. However, a recently published case is of importance. An exclusive licensee of several Community designs for double-wall tumblers, a type of drinking cup, sued an Austrian producer of such tumblers for design infringement.

This presented the Supreme Court of Austria with the opportunity, for the first time, to release statements on important areas of design law. They can be summarised as follows:

• Design protection covers the appearance of a product but neither the original per se nor a product as such manufactured according to the design.

• A design is to be regarded as having individual character if no known designs show all of its impressive features or if a known design shows different impressive features.

• In assessing an infringement, the recognition of the overall impression is crucial, namely whether the comparison of two stylings results as a whole in the impression of correspondence (Supreme Court of Austria, August 31, 2010).

Trademarks

Effective July 1, 2010, Austria introduced an opposition procedure for registered trademarks, but not trademark applications that are published for opposition.

While a cancellation action against a registered trademark can be filed at any time for many reasons, opposition is limited to three months of the publication date of an Austrian trademark (this is always the 20th day of a month, usually during the same month of the registration date or the month after).

For international trademarks covering Austria, opposition is also limited to three months but the time period starts on the first day of the month that immediately follows publication. There is no opportunity for reinstatement provided by statute if the time limit is missed because cancellation requests can be filed.

An opposition shall only be based on a senior trademark application or registered trademark (ie, Austrian trademark, international trademark valid in Austria, or Community trademark). The proceedings are generally conducted in written form.

However, on request of one of the parties, oral hearings have to be scheduled. An oral hearing may also be scheduled ex officio. A lack of use plea, against the trademark on which the opposition is based, may be brought forward.

In this case the opposing party does not need to provide full proof of use but must show prima facie evidence of use. In case of an action (eg, based on non-use) against the trademark on which the opposition is based, the opposition proceedings shall be suspended.

The most promising opposition may be continued and the rest suspended when several oppositions are active against the same trademark. The decision on an opposition is rendered by a single member of the legal department of the Austrian Patent Office. If an opposition is partly or fully granted, the opposed trademark is quashed (not cancelled) from the beginning of its duration of protection.

An opposition decision may be appealed against before the patent office’s Remedies Department. Each party has to bear its own costs during an opposition proceeding. This is in contrast to a cancellation proceeding in which the losing party has to refund the statutory costs of the proceeding and representation to the successful party.

Legal practice has to adapt to changing economic climates and public opinion. In 1994, the Spanish Riding School, owner of the trademark Spanische Reitschule for arts and crafts goods made of glass, porcelain and earth ware, sued the manufacturer of porcelain horses in the levade position (the horse stands on its hind legs) marked with Spanische Reitschule, Wien (Spanish Riding School, Vienna) for trademark infringement.

At that time the Supreme Court of Austria ruled that there was no trademark infringement because the public would regard the label as a reference to the fact that a horse of the famous Spanish Riding School is represented, but not that the porcelain figure originates from an enterprise named the Spanish Riding School per se (Supreme Court of Austria, December 5, 1995).

In 2010, the Spanish Riding School brought another trademark infringement action. This time, however, a case was brought against a souvenir dealer offering souvenir plates that showed a mounted Lipizzaner (a breed of horse) together with the same inscription as contested in the earlier case, ie, Spanische Reitschule, Wien.

The Supreme Court altered its position in view of the commercial developments that had occurred during the past decade. It held that the public generally knows that institutions, formerly run by the government, become commercially independent and are bound to get additional income from activities such as merchandising.

In this situation the inscription would be regarded as a designation of the origin of the goods. In view of this new assessment, the Supreme Court confirmed the cease and desist order that was released by the court of first instance (Supreme Court of Austria, March 23, 2011).

Domain names

International tourist destination and skiing village Schladming, owner of the domain name schladming.at, and a tourism company offering its services under the domain name schladming.com, became involved in a legal dispute over their domain names.

The Supreme Court of Austria held in a non-final decision that it might be possible for different top-level domains, .at and .com, to show no confusion between the respective owners. Although the case was remitted to the court of first instance, for a finding of the actual understanding of the trade involved, the new standpoint is remarkable, because a confusion assessment was just directed to the second (and higher) level domain (Supreme Court of Austria, January 18, 2011).

Copyright

An exploitation corporation (licensing body) sued a hotel operator and requested copyright compensation because radio and TV broadcasts were distributed from an aerial antenna into the hotel’s individual rooms.

The Supreme Court of Austria finally held, reversing its former rulings due to EU legal changes, that the extension of the programmes into the rooms is to be regarded as re-broadcasting and that the reproduction of copyright-protected works in hotel rooms, even in privacy, is to be regarded as public reproduction.

Therefore, the prerequisites for the success of the plaintiff were given (Supreme Court of Austria, August 31, 2010).