Recent developments in the Austrian IP landscape

On January 1, 2014 the procedure for all IP rights was amended. Now, all remedies against first instance decisions by the Austrian Patent Office (legal, technical and nullity departments) are to be brought before the Vienna Upper Provincial Court. After that, depending on the case, a referral to the Supreme Court is possible. Further, the Vienna Commercial Court now has competence in the first instance for all civil law trademark litigation.

Patents and utility models

Austria has still not signed the London Agreement, which eliminates the need for translations of European patents into the respective language of a country. At present, it seems that the ratification has been put on the shelf for the next couple of years.

Following a landmark decision, there is no longer a difference between the merit of an invention in a patent and a utility model. It was held, in another resolution, that the logic of a computer program may be regarded as an invention, protectable by a utility model, only if it refers to technical content.

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

In a landmark decision, the peculiar question of “lack of distinctiveness” was defined very precisely. It said a “lack of any (even minor) distinctiveness” 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.

The word mark ‘Jimi Hendrix’ was denied protection for goods in class 9 (records, CDs, and DVDs) as well as class 15 (music instruments) due to reference of content or direct context of matter, respectively. For goods in class 14 (jewellery) and class 25 (clothing, etc), however, immediate protection was granted. This implied that the public would regard the trademark on the one hand as distinctive and on the other hand as indication of origin.

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.

Copyright

In a landmark decision, the Supreme Court held that hyperlinks directing to publicly available internet content are not regarded as use relevant to copyright because the concept of copyright is to protect a creative achievement produced by a person. By clicking on a link, the browser just makes an automatic connection to the internet address mentioned in the link; the content of the information is neither copied nor made available to the public.

When a computer generates automatic thumbnails as a result of the set link, it does not constitute an adaption or a revision of a work protected by copyright because not even a minimum of human activity is involved.

Recently it was ruled that the direct broadcasting of a sport event may be regarded as a work of film art and therefore entails copyright protection. It is, however, a prerequisite that the camera and cutting, etc, as well as the comment, allow an individual allocation to the respective creator.

Another judgment dealt with the question of how much the close relatives of a deceased person might be injured in respect to legal protection of a person’s personal rights by publication and/or distribution of documents and pictures. It was held that in a normal case an impairment may be assumed if a balance of interests during the lifetime of the deceased person would have resulted in her or his favour.

Peter Israiloff is an Austrian patent attorney and a European patent, trademark and design attorney at  Barger, Piso & Partner. He can be contacted at: office@bapipat.at

Peter Israiloff has worked in the IP field since studying industrial technology. He holds an engineering diploma and is a doctor of technical sciences. He is a member of the International Association for the Protection of IP and handles patents and utility models in all fields of technology, except biochemistry. Israiloff is a specialist in Austrian, EU and international trademark matters, and he is a committee member of, and Austrian contributor to, the International Trademark Association.