IP Pages 2017: Recent developments in the Austrian IP landscape

On August 1, 2016, amendments to the Austrian Patent Act and Trademark Act (and related IP acts) were published concerning an additional institution that had been attached to the Austrian Patent Office (APO). This partial legal body was created in 1992 to assist the APO with some matters. However, the body now ceases to exist and all services (eg, providing similarity searches in the course of a trademark application) are again provided by the APO as a sovereign administration.

Patents and utility models

• According to a decision of the Vienna Upper Provincial Court (VUPC), optional claims are not admitted in recourse against a resolution of the APO, ie, in the second instance of a proceeding, because this would breach the principle of introducing new matter for the first time in a higher instance of proceeding. 
• The VUPC has given a (further) definition of obviousness of an invention: for overcoming problems, it is a self-evident routine for a person skilled in the art to search for comparable solutions of the problem and to consider findings that were already known in the same or a similar technical field.
• Furthermore the VUPC stated that with respect to novelty and inventive step, the anticipation of a disclosure is to be measured by what it implies to a person of average skill in the art without them making complicated deductions or creative reasonings. However, a basic knowledge is to be expected. 
• A supplementary protection certificate can be applied for within six months of the notification of the first market admission or the grant of the respective patent on which it relies. It was decided that if more than one market admission were based on the same patent, the market admission is the first one which refers to the medical product for treating, curing or preventing the specific disease or suffering in question.

Designs

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.

Trademarks

• An opposition against an Austrian trademark can be based on an earlier identical or similar trademark covering identical or similar goods or services, only if there is a risk of confusion. In this regard, however, a higher degree of distinctiveness of the earlier trademark can be claimed on the basis of evidence. A higher degree of distinctiveness must not, however, be mixed up with a reputation of an earlier trademark, as the VUPC ruled.
• The VUPC held that words defining goods or services in a foreign language are excluded from trademark registration even if they are not yet known in Austria or regarded as fanciful. They are to be excluded because otherwise importers would not be allowed to designate the imported goods or services in the language of the country of origin.
• The Austrian Supreme Court held that if a word is regarded as fanciful by consumers but descriptive by specialists, ie, if varying views exist among the trade involved, then the overall impression of a trademark might differ. Even if the circle of the specialists, eg, importers, dealers, etc, is small, it must not be neglected.

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, which ruled that there is a likelihood of confusion.

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, but no claim for assignment of that domain.

Copyright

• It was ruled that the publication of pictures on social media is not equal to publication in mass media. From a person’s publication of pictures directed to a desired specific public, no consent can be derived from publication directed to the general public.
• In another judgment it was held that the digital processing of a person’s handwriting does not constitute a work protected by copyright because the computer writing was not regarded as a preparation or revised edition, or as an original work based on a pattern.
• The Supreme Court considered the question whether a work of art in the sense of the Austrian Copyright Act is present when technique and art are combined. It held that when the dominant design elements are defined technically, not just on the grounds of taste, beauty or aesthetics, then the required quality of work is to be denied.
• In the course of a legal dispute about the authorship of a work, the Supreme Court held that it suffices to prove that the named author is not the correct one. It is not necessary, however, to prove who the actual author is.
• If, during life, a creator (author) grants one party an exclusive right to use their works after their death, they are still in a position to validly grant another party the same right at a later date. However, after the death of the author, the first rights owner succeeds over the second one because of the priority principle, as held by the Supreme Court. n

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