Jul 01, 2023 (Newsletter Issue 7/23)
Official TM Similarity Search Abolished
The patent law amendment also brings about changes in the trademark area: With the entry into force of the patent law amendment, the Austrian Patent Office ceases to conduct official similarity searches as part of the application procedure for applications filed on or after June 1, 2023.
While the average processing time of a fast-track trademark application in the 1st quarter of 2023 was less than 4 working days, the mentioned step is expected to accelerate the procedure by at least 20% for applications on paper or via a standard online application.
Source: www.patentamt.at
Dec 03, 2020 (Newsletter Issue 20/20)
New eService Launched
The Austrian Patent Office (ÖPA – Österreichisches Patentamt) has launched a new ‘Trade Mark Opposition’ eService for trademarks.
The new digital service became available on 15 November 2020.
Source: www.euipo.europa.eu
Jul 23, 2020 (Newsletter Issue 12/20)Becoming Depositing and Accessing Office for WIPO DASThe Austrian Patent Office (APO) notified WIPO in accordance with paragraphs 10 and 12 of the Framework Provisions for the Digital Access Service for Priority Documents (DAS) that it would commence operation as a depositing and accessing office with effect from October 1, 2020.
Technical and operational options adopted by APO are:
- APO as a depositing Office will deposit certified copies of patent, utility model, industrial design and trademark applications as priority documents, including PCT applications filed with the Office on and after October 1, 2020, which the applicant specifically requests be made available to the service
- APO as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by October 1, 2020.
- All documents and information will be exchanged in black and white or color and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI;
- As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by the depositing
More information can be seen hereSource: www.wipo.int Jun 06, 2019 (Newsletter Issue 7/19)
New Online Services for Designs Launched
The Austrian Patent and Trademark Office has implemented a new online service for filing design applications electronically.
The new system is easy to access, including from mobile devices, and it provides guidance and tips for users through the different steps in the application. It can process standard and multiple designs as well as divisional design applications.
The Office is also the first intellectual property office to integrate DesignClass, the online tool for harmonised product indications, in its e-filing for designs.
Source: www.euipo.europa.eu
Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationAustria has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, Austria has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Feb 14, 2019 (Newsletter Issue 2/19)Important Amendments to Trademark ActThe Austrian Trademark Act (MSchG) has been amended, following the implementation of several new provisions of Austrian legislation in 2017. The changes of the EU Trademark Directive 2015/2436 have been implemented into law and entered into force on January 14, 2019.
Important changes are the following:
- Requirement of graphic representability of signs abolished
- Protection against product piracy possible
- Procedural fees reduced: Online incentives available now also for patent, design and international trademark applications. Significantly reduction of fees for applications before the Nullity Division of the Patent Office and of fees for application for cancellation of trademarks
- E-filing of new types of trademark such as multimedia and motion marks
Further changes affect the examination procedure:
- An opposition can now also be based on nationally and internationally well-known trademarks or designations of origin and geographical indications.
- An opposition may also be based on several trademarks provided that they belong to the same proprietor.
- In cancellation proceedings it is possible to base a cancellation request on a trademark application; if the trademark is registered before the cancellation decision (Sec. 30 para 2a MSchG).
- New relative grounds for cancellation are available. Among others, persons who are entitled to injunction claims against the use of the trademark under the Copyright Act (Sec. 32b MSchG) or the Design Protection Act (Sec. 32c MSchG) may also apply for cancellation of the trademark.
For more information, please check the article of Wolf Theiss here
Please note that the amendments have been included and the Austrian chapter (survey/licensing) has been updated thanks to our contributor Maybach Görg Lenneis & Partner from Austria.Source: www.wolftheiss.com; www.patentamt.at Jan 30, 2018 (Newsletter Issue 2/18)Fast Track Application Process WorkingThe Austrian Patent Office introduced a fast track application process which leads to registration within two weeks if no further interaction is necessary.
The fast track application process is available for the application of word/figurative individual trademarks filed and paid online. Further, the applicant needs to choose exclusively terms of the harmonised database to specify the goods and services. The service is provided without additional cost.
Our Country Index partner FMO Law Firm from Austria reported that his firm was able to register a trademark in a record time of six days.
Source: FMO Law Firm, Austria Dec 20, 2017 (Newsletter Issue 22/17)Trademark Law AmendedThe Austrian Trademark Protection Act (MSchG) has been amended to partly implement the EU Trademark Directive 2015/2436 and to better adapt the national provisions to the needs of trademark owners. Most of the amendments have been in force since September 1, 2017.
Some of the main amendments are:
- Introduction of certification marks
Certifications marks have been registrable since September 1, 2017.
- Changed calculation of due date and reduction of renewal fees
The ten-year protection period of national Austrian trademarks will be calculated from the date of the application and no longer from the registration as of September 1, 2018. Also, existing trademarks will fall under this new provision. The adoption to the new calculation will shorten the next protection period. To avoid this disadvantage, the renewal fees will be reduced according the length of the shortened period.
- Division of a trademark application or registration
Since September 1, 2017, national trademark applications or registrations may be divided into two or more separate applications or registrations which will bear the original application or priority date. A fee of EUR 200 has to be paid within two months upon filing. Divisions which affect goods and services subject to an opposition or cancellation proceeding may only be effected after termination of those proceedings. The division of Austrian designations of International Registrations is possible from February 1, 2019.
- No subsequent extension of the list of goods and services
Austria eliminated the possibility to extend the protection of an existing trademark to additional goods and services.
- Reduced official application fees and 'fast track application'
The official fees for trademark applications have been reduced and the possibility of a 'fast track application' process has been introduced for online applications without additional cost.
For further information, please read the article of Schönherr Attorneys at Law here
Source: Schönherr Attorneys at Law, Austria and Sonn & Partner Patentanwälte, Austria Sep 20, 2017 (Newsletter Issue 16/17)
Formal Requirements for Recordal of Assignments Reduced
On August 2, 2017, an amendment of the Austrian IP laws entered into force which considerably reduces the formal requirements for the recordal of assignments, mergers or changes of name. The new rules will apply for all protective rights (patents, utility models, trademarks, designs and SPCs).
Generally, it is now sufficient to submit a confirmatory assignment signed by the concerned parties, without notarization of their signatures. Filing the original of an assignment document with the signature of the assignor notarized has thus become unnecessary in most cases.
Source: www.sonn.at
May 27, 2015 (Newsletter Issue 8/15)Publications Only Online AvailableThe Austrian Patent Office announced on its website that they have ceased the printed publications of the Patentblatt, Gebrauchsmusterblatt, Marken- und Musteranzeiger.
Since January 2015 the above mentioned publications have been available online only. The Office publishes the official Gazette (Österreichischer Marken- und Musteranzeiger) on its website every month on the 20th. The electronic publications can be seen here
Source: www.patentamt.at Feb 25, 2015 (Newsletter Issue 3/15)E-Payment Now PossibleThe Austrian Patent Office offers the possibility of an e-payment when filing trademark applications online starting from January 1, 2015.
For more information, please see here
Source www.patentamt.at Oct 10, 2013
Introduction of New Provincial Administrative Courts
The introduction of new provincial administrative courts in Austria will change administrative provisions in several IP statutes that will become effective on January 1, 2014.
The amended Trademark Act contains important changes, one of which concerns the concentration of all trademark disputes with the Vienna Commercial Court. At the present, the court has exclusive jurisdiction for patent disputes, as well as disputes regarding utility models, solid-state contractors and designs. In the future, this exclusive competence will also include trademark disputes. The Trademark Act also concentrates criminal proceedings - to be initiated at the request of trademark holder only - with the Vienna Regional Criminal Court.
The amended Trademark Act also changes the rules for opposition proceedings. In future, the holder of a more recent trademark must argue non-use of the older trademark no later than the first response to the opposition. If the holder of the younger mark does not respond within the prescribed time limit to the opposition, the younger trademark will automatically be cancelled in whole or in part as applied for, even if the opposition is based on a trademark application only which has not yet proceeded to registration at the time at which the opposition is decided on.
In addition, in the future it will no longer be possible to raise opposition against trademarks that are registered in Austria due to the conversion of Community trademarks or international trademarks (with regard to the latter, where the declaration as to the grant of protection has already been transmitted and the period to deny protection has already expired).
Finally, two objection periods will be shortened under the new law. The objection period to oppose an application for registration of a name as a geographical indication will be shortened from four to three months. The objection period to oppose an application pursuant to Regulations (EU) 1151/2012 on Quality Schemes for Agricultural Products and Foodstuffs will be shortened from three to two months.
Source: Graf & Pitkowitz Rechtsanwälte GmbH, Austria
Jul 01, 2013 (Newsletter Issue 10/13)Online Filing Now PossibleThe Austrian Patent Office announced its new online service starting from 1 July 2013. Applicants can now file a national trademark application online.
To access the online service, please click here
Source www.patentamt.at Jan 01, 2010 (Newsletter Issue 6/10)
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 as of January 14, 2019).
Austria is a member of the Paris Union Agreement, the Madrid Agreement, the Madrid Protocol, the Nice Agreement and the European Union.
Trademark protection is obtained by registration. An unregistered trademark can only be held against a registered trademark if it has become well-known at the priority date of the registered trademark.
Nice classification, 11th Edition
Registrable as a trademark are signs of any kind, particularly words, personal names, images, letters, numerals, colours, the shape or packaging of goods and sounds, provided that such signs are capable of distinguishing goods or services of one undertaking from those of other undertakings and can be represented in the trademark register in a way that the competent authorities as well as the public may recognise the subject of protection clearly and unambiguously. Pattern, position, hologram, motion, and multimedia marks are also registrable.
The Austrian law does not differentiate between trademarks and service marks. Special rules apply to collective trademarks. Certifications marks are registrable.
Multiple-class applications are possible.
Applicants not having their residence in the European Economic Area (EEA) or in Switzerland need a local agent.
Power of Attorney has to be presented, simply signed is sufficient. Power of attorney needs not to be presented but just referred to, if an attorney is the representative.
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 officially older rights as bar to the registration. The search results, however, may serve for the information of the applicant. Owners of prior trademarks are not informed. If the trademark 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 2 to 3 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”.
If the applicant uses goods and services from the “Harmonised Database” and if the applicant chooses the “fast track” application process (same fees), then the registration process speeds up to 2 weeks (if the examiner does not refuse registration because of a non-registrable sign). However, a search report by the Patent Office is not part of the “fast track” application process.
National:The opposition period is 3 months from the publication of the registration in the 'Österreichischer Markenanzeiger".
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
The protection period is 10 years and the registration is renewable for periods of 10 years without limitation. Since September 13, 2018, the ten-year protection period of national Austrian trademarks is calculated from the date of the application and no longer from the registration. Previously registered trademarks also fall under this new provision. The adoption to the new calculation shortens the next protection period for these trademarks. To avoid this disadvantage, the renewal fees are reduced according to the length of the shortened period for these trademarks.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is EUR 280 online and EUR 300 in paper in total for up to three classes and EUR 75 for each additional class.
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Practical details on trademark licensing are available in our publication
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More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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