Two Years of Trademark Opposition Procedures in Austria

→ Michael Woller

More than two years after the introduction of trademark opposition procedures in Austria, uncertainties remain about various aspects to be considered by trademark owners. Finding the right strategy on how to challenge younger trademarks is important.

Since 1 July 2010, trade­mark own­ers (nation­al Aus­tri­an trade­marks, Com­mu­ni­ty Trade­marks or Inter­na­tion­al Reg­is­tra­tions des­ig­nat­ing Aus­tria or the EU) have the pos­si­bil­i­ty to oppose new Aus­tri­an trade­mark reg­is­tra­tions with­in three months from their pub­li­ca­tion.

Limitations

But lim­i­ta­tions apply. For exam­ple, oppo­si­tions must be based on ear­li­er reg­is­tered trade­marks or ear­li­er trade­mark appli­ca­tions. There­fore, an oppo­si­tion may not be based on ear­li­er unreg­is­tered trade­marks, com­pa­ny names, copy­right or well-known trade­marks under Arti­cle 6bis Paris Con­ven­tion. Nor may oppo­si­tions be based on “bad faith fil­ing”, fil­ing of an “agent’s mark” or on absolute grounds (such as lack of dis­tinc­tive­ness).

In addi­tion, oppo­si­tions are lim­it­ed to: (i) iden­ti­cal trade­marks reg­is­tered for iden­ti­cal goods or ser­vices or (ii) sim­i­lar trade­marks reg­is­tered for sim­i­lar goods or ser­vices based on like­li­hood of con­fu­sion. It is not pos­si­ble to invoke the spe­cif­ic pro­tec­tion of famous trade­marks against tak­ing unfair advan­tage of, or being detri­men­tal to, its dis­tinc­tive char­ac­ter or repute (Sec 10(2) Aus­tri­an Trade­marks Act, Art 5(2) EU Trade­mark Direc­tive).

Accord­ing to the Aus­tri­an Patent and Trade­mark Office, cur­rent­ly 3.5% of all trade­mark reg­is­tra­tions have been sub­ject to oppo­si­tions. Eleven per­cent of first instance deci­sions have been appealed. Despite oppo­si­tion pro­ceed­ings have been in place for more than two years, only three cas­es had been final­ly processed by the board of appeal (the sec­ond instance body) until Octo­ber 2012. No deci­sions of the Aus­tri­an Supreme Patent and Trade­mark Sen­ate (the third and high­est instance in oppo­si­tion pro­ceed­ings) have been ren­dered until Octo­ber 2012. This means that there is no guid­ance from the high­er instances on many pro­ce­dur­al aspects.

Considerations before filing an opposition

The fol­low­ing points should thus be con­sid­ered before fil­ing an oppo­si­tion.

Espe­cial­ly if the opponent’s trade­mark has a rep­u­ta­tion on the mar­ket, the oppo­nent should con­sid­er whether a chal­lenge of the younger trade­mark might be more like­ly to suc­ceed if based also on the spe­cif­ic pro­tec­tion of famous trade­marks (ie, not only on like­li­hood of con­fu­sion). A can­cel­la­tion action may thus be more promis­ing than an oppo­si­tion.

If the ear­li­er trade­mark has acquired enhanced dis­tinc­tive­ness through use, which may broad­en the trademark’s scope of pro­tec­tion, this could also be invoked in oppo­si­tion pro­ceed­ings. How­ev­er, due to the expe­dit­ed char­ac­ter of oppo­si­tion pro­ceed­ings, the oppo­nent should be pre­pared to at least spec­i­fy (even bet­ter: already sub­mit) with­in the oppo­si­tion peri­od any rel­e­vant doc­u­men­ta­tion that the trade­mark has acquired enhanced dis­tinc­tive­ness through exten­sive use. This requires time­ly prepa­ra­tion of the oppo­si­tion.

Because oppo­si­tion pro­ceed­ings are expe­dit­ed, it is advis­able to sup­port the oppo­si­tion with a rea­soned state­ment with­in the oppo­si­tion peri­od (the law only states that the “rea­soned” oppo­si­tion must be sub­mit­ted with­in the oppo­si­tion dead­line with­out spec­i­fy­ing what “rea­soned” means). So it is not clear (i) whether just sub­mit­ting the filled-in oppo­si­tion form would meet the require­ment of a “rea­soned oppo­si­tion” and (ii) whether fur­ther argu­ments sub­mit­ted after expi­ra­tion of the oppo­si­tion peri­od would be accept­ed by the Patent and Trade­mark Office.

In the oppo­si­tion pro­ceed­ings, the defen­dant can request proof of gen­uine use of the invoked trade­marks, if they are already sub­ject to use-require­ment. But even if the oppo­nent sub­mits doc­u­men­ta­tion sup­port­ing gen­uine use, the Aus­tri­an Patent and Trade­mark Office will noti­fy the defen­dant that he can file a non-use revo­ca­tion claim against the opponent’s trade­marks (lead­ing to sus­pen­sion of the oppo­si­tion pro­ceed­ings). Oppo­nents should thus care­ful­ly con­sid­er on which trade­mark reg­is­tra­tions an oppo­si­tion should be based to avoid a mate­r­i­al counter-attack based on non-use.

The los­ing par­ty pays no cost reim­burse­ment. So in a straight-for­ward case, oppo­si­tion pro­ceed­ings may help to quick­ly remove reg­is­tra­tions from the reg­is­ter already at a very ear­ly stage. The oppo­nent will have to bear his own costs (includ­ing the oppo­si­tion fee of EUR 200) even if the oppo­si­tion suc­ceeds. On the oth­er hand, there is no risk that the oppo­nent will have to reim­burse the defendant’s costs if the oppo­si­tion fails.

Oppo­nents intend­ing to file an oppo­si­tion to an Aus­tri­an trade­mark reg­is­tra­tion should there­fore seek time­ly advice and elab­o­rate the strate­gies on how to best defend their trade­mark rights. They can then decide whether straight-for­ward oppo­si­tion pro­ceed­ings, full-fledge can­cel­la­tion pro­ceed­ings or an out-of-court set­tle­ment is best.

Especially owners of trademarks having a reputation on the market should carefully consider their different procedural options on how to challenge possibly infringing earlier trademark registrations.