IP Pages 2019: Recent developments in the Austrian IP landscape


Peter Israiloff

IP Pages 2019: Recent developments in the Austrian IP landscape

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An amendment to Austria’s Patent Attorneys’ Act, which involves slight adjustments to several IP acts, is under consideration. Its main focus lies on freedom to provide services of patent attorneys within the EU.

Patents and utility models

A patent infringer was successfully sued in Germany for discontinuance, elimination, accounting and information regarding distribution channels of the infringing goods. The
plaintiff realised that its European patent was also infringed in Austria, where it also launched an infringement suit.

The patent infringer raised the objection that the plaintiff had already forfeited its right to sue because the interval between the filing of the first suit in Germany and the follow-
up suit in Austria was longer than three years (the period of limitation in Austria). However, the Austrian Supreme Court did not accept this defence and held that according to the EU directive on IP enforcement, the right to information is not restricted to the territory of one member state.

As a consequence, the term of prescription in Austria started no earlier than the receipt of the information request in Germany, which meant the Austrian suit was filed in good time.

In the preliminary proceedings of an infringement suit concerning a utility model, the Vienna Commercial Court (court of first instance) rejected the request for discontinuance because the request was regarded as indefinite for not naming precisely all the features of claim 1 of the infringed utility model; instead, it was merely directed to enjoin the defendant from infringing “claim 1” and only cited some of the features as examples.

The Commercial Court followed established legal practice which is also still in force in Germany. However, upon appeal by the plaintiff, the Vienna Upper Provincial Court (VUPC, court of second instance) released a landmark decision in that it accepted the language of the request. It held that for the specification of an injunction order it makes
no difference whether the scope of protection is described by a literal quotation of the respective claim or just by referring to the respective claim with a further specification by a demonstrative reference to essential features.


The Court of Justice of the European Union (CJEU) released a judgment concerning criteria for exclusion of Community design protection when the appearance of a product is dictated by its technical function. This judgment is a landmark in the EU and also applicable for domestic designs. The key sentences are:

  1. In order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.
  2. In order to determine whether the relevant features of the appearance of a product are solely dictated by its technical function, all the objective circumstances relevant to each individual case must be taken into account. In that regard, there is no need to base those findings on the perception of an ‘objective observer’.


In several decisions, the VUPC denied registrations of trademarks for pharmaceuticals (eg, ‘Bronchocold’; ‘Bronchakut’; ‘Bronchonight’; ‘Uroprotect’; and ‘ViruProtect’) which consist of two parts, one describing the type of protection, the other the field of application, because consumers will merely understand them as descriptive.

The VUPC diverged from established legal practice by holding that “pharmaceutical preparations” and “medicines” on one hand and “preparations for destroying vermin, fungicides, herbicides” on the other hand are not similar. So far, in most of the cases they were, more or less, regarded as similar because they are listed in the same international class 5.

The popular Original Salzburger Mozartkugel (a chocolate ball with nougat, marzipan, etc) was invented in 1890 in the city of Salzburg and, since then, has been produced and sold there. The wrapping of the ball (a silver paper depicting a blue circle logo showing the head of Mozart looking to the right) was registered as a trademark.

A competitor, also residing in Salzburg, in 2015 started to sell Salzburger Mozartkugel, also wrapped in a silver paper with
a blue circle logo, but with the head of Mozart looking to the left. It was sued for infringement based on the Trademark Law and the Law Against Unfair Competition. The request
for discontinuance of distribution in Austria (based on trademark rights) was, however, not granted (because the competitor’s confections were not deemed confusingly similar to the registered wrapping of the trademark).

The competitor was enjoined from distribution of his goods only in the city of Salzburg, where the Original Salzburger Mozartkugel was regarded as having acquired high distinctiveness and enjoys protection on the basis of competition law.

The VUPC held, confirming the Nullity Department of the Austrian Patent Office (APO), that the mere use of a trademark for description of an enterprise is not genuine. Without a specific relationship to goods and services, a trademark misses its objective as an indication of origin.

An individual word-design mark, ‘Steirisches Kürbiskernöl’ (styrian pumpkin seed oil), was licensed to a producer association and used as a protected geographic al indication. A cancellation action was brought against it because it was allegedly not genuinely used in Austria by the proprietor nor, with his consent, by a third party. Neither the proprietor nor the association sold styrian pumpkin seed oil.

The Nullity Department of the APO dismissed the request. However, the court of appeal (VUPC) overturned the decision and cancelled the trademark; this was confirmed by the Supreme Court. It held that the trademark was not used to identify the origin of the goods under the control of a single enterprise responsible for their quality. On the contrary, the individual mark was used as a certification (quality) mark and therefore is understood as such by consumers.

Purchasers will regard the sign as a mere indication of a specific, controlled quality and/or manufacturing method being locally restricted. By such a use, no relation or connection to a single enterprise, namely the trademark owner or the licensed association, can be established.


An internet access provider which, among other services, provides access to bit-torrent platforms, was sued by a performing rights society safeguarding the rights of music producers and performing artists to discontinue this access.

In the preliminary proceedings, the Austrian Supreme Court issued a temporary injunction, holding that making available and operation of a bit-torrent platform enabling online file-sharing among users of this platform is a “public communication” reserved for the copyright owners.

The internet provider’s defence that it is, on one hand, just an intermediary and, on the other hand, that its websites serve just as index pages on which internet users can search for music titles but which do not contain any protected matter and do not enable any links to protected content, was dismissed.

The Supreme Court thus followed the CJEU, which has held that the term “public communication” also encompasses the provision and operation of a file-sharing platform on the internet which leads, via indexation of metadata, to protected works and, via a search engine, enables users of that platform to find these works and share them through a peer-to-peer network.

Amazon EU, a Luxembourg company, mentioned on its German-language website, which is also directed to consumers in Austria, that if consumers want to place any comments, Amazon would be granted an exclusive licence to use this content online and offline on the basis of Luxembourg law. The Austrian Society for Consumer Information attacked this clause successfully.

The Austrian Supreme Court held (after a preliminary judgment by the CJEU) that only Austrian law is applicable and that the clause violates not only Austria’s Copyright Law (because it restricts the rights of the creators of any comments) but also Austria’s Civil Law and Consumer Protection Law.

Two well-known artists created a combined sculpture and got into a legal dispute about revenue, and the Austrian Supreme Court had to decide whether co-authorship existed. It held that co-authorship can be assumed only when an indivisible work was created to which each author has contributed a specific mental creation. The mere working together when producing the work does not suffice for the qualification of co-authorship.

No indivisible work is present if parts of it may be individually and separately commercialised. The subjective idea of several authors/creators about the inseparability of a work is not decisive but instead the objective possibility of a separate commercialisation.

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

Austria, utility models, Barger Piso & Partner, patent infringement, Austrian Supreme Court, CJEU, design protection, APO, music copyright