Austria (AT)

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01-01-2010 (Newsletter Issue 6)
Introduction of Opposition Proceedings and Amendment of Official Fees
With the latest amendment of the trademark law of 2009, trademark opposition proceedings were introduced. Owners of prior trademarks may file an opposition against the registration of confusingly similar trademarks at the Austrian Trademark Office within 3 months from publication. Owners of prior trademark filings have the same right as long as their filing proceeds to registration. Opposition can be filed against trademarks published after July 1st, 2010.
The fees for trademark filing were amended as well: As from January 1st, 2010, the total fees have to be paid at the beginning of the registration proceedings. The fee for each additional class exceeding the 3rd is raised from EUR 25.00 to EUR 40.00. The former trademark duration fee has been integrated with the filing fee. The total filing fee for up to three classes amounts to EUR 329.00, and another EUR 40.00 for each additional class.


Source: Sonn & Partner, Austria

Legal basis is the Trademark Act of 1970 (last amended 1999).
Austria is a member of the Paris Union Agreement, the Madrid Agreement, the Madrid Protocol, the Nice Agreement and the European Union.
The international classification of goods and services consisting of 45 classes has been adopted.
Trademark protection is obtained by registration. An unregistered trademark can only be held against a registered trade mark if it has become well-known at the priority date of the registered trademark.
Registrable as a trademark are any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing a good or services of one undertaking from those of other undertakings. Colours are only registrable upon proof of acquired distinctiveness. Sound trademarks are registrable if represented graphically. Three-dimensional forms are also registrable, but if they consist of the form or design of goods or their packaging, registration is difficult. There do not exist any olfactory marks in Austria. The Austrian law does not differentiate between trade marks and service marks. Special rules apply to collective trademarks.
The application is filed at the Patent Office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination and an examination on absolute grounds of refusal. Signs not considered distinctive in the examination can be only registered upon proof of acquired distinctiveness. The Patent Office also conducts a search for identical and similar trademarks, but does not cite offically older rights as bar to the registration. The search results, however, serve for the information of the applicant. Owners of prior trade marks are not informed. If the trade mark applicant insists, the trademark must be registered in spite of similar or even identical prior trademarks.
The application procedure from first filing to registration will take approximately 3 to 4 months if no serious problems are raised by the examiner. The first office action is to be expected after 3 to 4 weeks. Only after registration, the trademark is published in the monthly journal “Österreichischer Markenanzeiger”.
The opposition period is three months from the publication of the registration for trademarks published after July 1st, 2010. Formerly, Austrian law did not provide for an opposition procedure.
Trade mark protection begins with the date of registration, but retroactively as of the priority date. The protection period is 10 years from the registration date and ends on the last day of that month in which the protection period ends. The registration is renewable for periods of 10 years without limitation.
A trade mark registered for at least 5 years may be contested by any third party on the basis of alleged non-use. The burden of proof for serious use is excusively upon the trademark owner. If not contested, the trademark will continue to be valid and even if not used for a period longer than 5 years, it can be revalidated by taking up serious use subsequently, provided that no third party contested the trademark during the period of non use.
The official fee is EUR 300.00 for up to three classes and EUR 40.00 for each additional class. Another EUR 25.00 of printing costs are due and a further EUR 4.00 for confirmation of trademark registration.
Search type First class Add. class
Word Mark Search (availability) 220,00 € 70,00 € 
Word Mark Search (identical) 60,00 € 20,00 € 

The Prices above are S.M.D. Markeur Search Fees


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SONN & PARTNER Patentanwälte
Dr. Elisabeth Zakl-Buchner
Dr. Elisabeth Zakl-Buchner
Riemergasse 14
1010 Vienna
Austria (AT)
Tel +43 1 5128405
Fax +43 1 5129805
office@sonn.at
www.sonn.at

SONN & PARTNER is one of the leading Intellectual Property Attorneys Offices in Austria. Our office, located in the centre of Vienna, serves the needs of large and small international and local clients in all areas of technology and goods.
The fundamental philosophy of SONN & PARTNER is to find solutions to the individual problems of our clients in industry and commerce taking into account not only the legal requirements and possibilities but also the commercial aims to be achieved.
In order to guarantee advice of the highest quality in a European and worldwide context, we combine broad general knowledge of intellectual property law with the specific, very detailed knowledge of each of the partners in his or her own special technical field. By dealing with various cases in the field of industrial property, of course, often problems concerning other fields of law have to be taken into consideration. Our office therefore has very close contacts with the best Austrian lawyers specialised in the field of intellectual property but also with expert lawyers on other fields of law.
The location of SONN & PARTNER in the heart of Europe is an obligation to the partners to fully participate in the constant evolution of European Community Law as well as to cultivate long-standing relationships with the best offices in European countries not least also in Eastern Europe, where old ties with Austria still are intact.

Schmidt - Kornfeld - Wukoschitz Rechtsanwälte
Dr.  Harald Schmidt
Dr. Harald Schmidt
Maria Hilfer Strasse 1d
A - 1060 Vienna
Austria (AT)
Tel +431 586 1521
Fax +431 587 4206
RAe@coop-recht.at
www.coop-recht.at

OUR CREDO:

WE DO offer PERSONAL SERVICE of in-depth domestic expertise, fully independent from any influence (or entity whatsoever), recognized by clients and correspondents around the world.

THE LAW we certainly do regard a PROFESSION rather than a 'Business' - yielding the latter quite happily to larger conglomerates.

SO WE have built up an INTERNATIONAL NETWORK of affiliated offices of equal standing in the major countries and cities of this world, carefully selected to provide highly qualified legal care for our clients, well to match firms larger by far.

BMA Brandstätter Rechtsanwälte GmbH
Mag. Konrad Lenneis
Mag. Konrad Lenneis
Wallnerstrasse 3
1010 Vienna
Austria (AT)
Tel +43 1 535 16 30
Fax +43 1 535 16 30 - 40
konrad.lenneis@bma-law.com
www.bma-law.com

BMA Brandstätter Rechtsanwälte GmbH is an independent Austrian business law firm with strong international ties and a simple philosophy:

"Legal advice must be clear and comprehensible;
our clients shall profit from our services."

In order to fulfill this promise, we offer our clients:

- a team of highly qualified business lawyers
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For years, lawyers working for BMA Brandstätter Rechtsanwälte GmbH have successfully advised renowned businesses, including not only global players but also small start-ups.

Österreichisches Patentamt
Dresdner Straße 87
A-1200 Vienna
Austria
Tel + 43 15 34 24 0
Fax + 43 15 34 24 53 5
www.patentamt.at

European Patent Office (EPO)
Erhardtstrasse 27
80469 Munich 2
Germany
Tel + 49 89 23 99 0
Fax + 49 89 23 99 45 60
www.epo.org

Office for Harmonization in the Internal Market (OHIM)
Avenida de Europa 4
Apartado de correos 77
03008 Alicante
Spain
Tel + 34 96 51 39 10 0
Fax + 34 96 51 31 34 4
www.oami.europa.eu

World Intellectual Property Organization (WIPO/OMPI)
34, Chemin des Colombettes
1211 Geneva 20
Switzerland
Tel + 41 22 33 89 11 1
Fax + 41 22 73 35 42 8
www.wipo.int