IP Pages 2016: Recent developments in the Austrian IP landscape


Peter Israiloff

IP Pages 2016: Recent developments in the Austrian IP landscape

MicroStockHub / iStockphoto.com

The Vienna Upper Provincial Court (VUPC) which has since January 1, 2014 competence for all appeals or recourses against decisions of the Austrian Patent Office turns out to be very expeditious. On January 20, 2015 it was decided that Austria should maintain a Local Chamber of the Unified Patent Court which will start working probably not earlier than 2017.

Patents and utility models

Recently it was held that when assessing the novelty and inventiveness of a patent it is not decisive whether one skilled in the art could have reached the invention by altering or adapting the closest state of art but instead whether he/she would have reached the goal due to inducement by the state of art.

A Supplemental Protection Certificate may be granted even if the active ingredient contained in the product is combined with other active ingredients by a molecular (covalent) bond. The ingredient thus bonded is, however, only regarded as an active one if its therapeutical effect complies with the range of application of the product as covered by the market authorization. Otherwise no SPC can be granted.

The VUPC has requested a preliminary ruling by the Court of Justice of the European Union with respect to the calculation of time limits of an SPC. The question is whether the date of grant of the first market authorization is crucial or the date when the decision of grant was received by the applicant (because the receipt is usually later than the decision). A ruling by the CJEU might be expected by the end of 2015.


In assessing an infringement, the recognition of the overall impression is crucial: namely, whether the comparison of two styles results in the impression of similarity. Concerning the infringement of a design, only that design is to be compared with the allegedly infringing product.

For example, if the design is registered in black and white, then the specific colour of the infringing product is not to be taken into account when assessing the design right.


In a landmark decision, the peculiar question of Òlack of distinctivenessÓ was defined very precisely. It said a Òlack of any (even minor) distinctivenessÓ is given when the public is stringently forced to associate a term with goods or services immediately, without further considerations, precisely, directly, exclusively and without any other faintest possibilities.

Moreover, lack of distinctiveness can only be asserted in the course of a cancellation action but not in an opposition proceeding. In the latter always a certain amount of distinctiveness has to be regarded.

Indirect confusability of a trademark with a series of marks is given when the trade involved allots to the congruent parts of the signs a product or origin identifying function with respect to specific goods and services.

If a trademark application has been filed without one ownÕs intent to use or marketing and if it serves primarily to sue third parties for discontinuance and monetary compensation when they, at a later time, use identical or similar signs, then it is regarded as filed with bad faith. An indication therefore is given when numerous trademarks having no or just poor distinctiveness are filed, of which only few are finally registered, and when the applicant lacks any business relationship with potential users and does not have a realistic business concept except the intent to use the trademarks for raising discontinuance and compensation claims.

Domain Names

The question of whether a community using a top-level domain (such as .com or .at) may prevent confusion with someone of the same name using a second-level domain was solved by the Supreme Court of Austria, in that the likelihood of confusion was attested.

In the same judgment, it was held that an infringed domain name holder has a claim for discontinuance and for cancellation of the infringing domain, although no claim for assignment of that domain.


Against an access-provider, a claim for discontinuance of a copyright infringement is only effective after a warning letter. This prerequisite is, however, only fulfilled if, on basis of the warning, the violation of law is obvious to the provider without any further investigation.

The interest of an attorney at law, acting as defending council, to keep his/her private address secret is a higher object of legal protection than the interest of the publisher of a newspaper to free reporting together with photographs.

A storage media compensation is only to be paid if the original from which the copy is taken was a rightful one. For a work directly downloaded from the internet with permission of the right holder no copy compensation is due. If, however, further copies are made from the downloaded copy than a fee is to be paid.

As of October 1, 2015 a major amendment of the Copyright Act (ie Creator's Right Act) came into force focusing especially on

  • private copies: no privilege anymore for copying if the original from which the copy is made was obviously produced or made available contra legem;
  • storage media fee: the calculation principles are ruled now in detail; if it might be expected, however, that any copying will have only minor effects on the creators no fee is to be paid;
  • educational institutions: were granted more copying privileges than in the past;
  • second right of use: creators of scientific contributions published in periodicals are granted, under specific conditions, the right to exploit their work themselves even if they have granted an exclusive right of use to any publisher.

Peter Israiloff is an attorney at Barger Piso & Partner. He can be contacted at: office@bapipat.at

Peter Israiloff, Barger Piso & Partner, Austrian Intellectual Property, Austrian Copyright Act 2015, Creator's Rights Act