SONN Patentanwälte – IP Attorneys

Amendment 2006 to the Austrian Industrial Property Laws

With the Austrian Law Gazette » I 96/2006 the directive » 2004/48/EG on the enforcement of Intellectual Property Rights was (partially) implemented in the Austrian Patent Act, Semiconductor Act and Trademark Act. An implementation in the Utility Model Act and the Design Right Act was not necessary, as these refer to the Patent Act with respect to the enforcement of rights. The implementation of the provisions of the enforcement directive in the different Industrial Property Acts followed essentially the implementation with respect to the Copyright Act as it has already been implemented with Law Gazette I 81/2006 earlier this year.

Basically, the enforcement directive shall lead to more harmonisation and an improvement of the enforcement of IP rights in the internal market. Numerous provisions of the enforcement directive were already part of Austrian law such that there was no need for implementation.

The amendment of the Austrian Patent Act, Utility Model Act and Trademark Act exhausts rather in a clarification of the existing provisions than substantially improving the enforcement of IP rights. For example, in § 151b Patent Act, § 21 Semiconductor Act, §§ 56, 59(2) and 68g(1) Trademark Act provide that preliminary injunctions may be granted for preserving evidence in order to meet the requirements of Art. 7 of the enforcement directive. However, such a preservation of evidence was already possible based on the general provisions of the Austrian Execution Act by means of preliminary proceedings.

Also the new provisions for implementing Art. 9 of the enforcement directive referring to provisional and precautionary measures (cf. particularly new § 151b Austrian Patent Act) do not improve the enforcement possibilities of IP owners substantially. It should be noted that on the basis of the previous §147(2) Austrian Patent Act the courts could rescind a preliminary injunction against an adequate security payment at any time reasonable grounds could be presented to the court. This regulation does not have any corresponding provision in the new §151b Austrian Patent Act. Also the Austrian Execution Act (§ 391 subpara.1) does not provide a corresponding provision according to which a request for rescindment is possible at any time also if reasonable grounds only arise after grant of a preliminary injunction. According to the Execution Act the payment of an adequate security must rather be already fixed in the courts preliminary ruling. However, hopefully the courts adhere to the former practice.

Additionally, it must be noted as particularly regrettable that the Austrian legislator has missed to implement Art. 6 of the enforcement directive according to which evidence which lies in the control of the opposing party could be ordered to be presented to the court. Art. 6 was one of the central points of the enforcement directive in order to ensure that effective means of presenting, obtaining and preserving evidence are available (cf. No. 20 of the considerations of the enforcement directive). In the explanatory remarks of the Austrian Industrial Property Amendment Act 2006 it is erroneously stated that such an order for presenting evidence to the court is already provided for in the Austrian Civil Procedure Rules in §§ 303-307 with regard to certificates. However, these provisions of the Austrian Civil Procedure Rules are restricted to certificates. Thus, these provisions are much narrower. Therefore, delivery of infringing products by the opposing party can still not be claimed on the basis of national Austrian law. Accordingly, the IP owner may only try to argue that Art. 6 of the enforcement directive is directly applicable, or, respectively if necessary may get findings within a preliminary ruling of the European Court of Justice that Art. 6 was not correctly implemented into Austrian law and thus may provoke yet another amendment of the Austrian IP Acts.