An Austrian trade and/or service mark application is filed with the Austrian Patent Office. The following information is required therefor :

	name and full address of the applicant
	the mark (word, word & device, device – also in colours)
	the goods and services the mark is destined for

For device marks as well as for word & device marks representations of the mark are required. Provided that we have one good and clear representation available, we can ourselves provide the necessary number (20) of representations in the required size (not exceeding 8 x 8 cm). Special prescriptions for filing of sound-marks can be found under » Question & Answer.

The specification of goods and services has to be classified in accordance with the International Classification of Goods and Services. We will be pleased to do that for you. An Austrian application can include as many classes as desired. Class fees, however, are due.

In order to be able to act for you, we need a power of attorney. For one and the same applicant one single general power of attorney will suffice for all future cases. The power and the reference to the power of attorney, respectively, can be late filed.

The Austrian Patent Office examines every Austrian application for compliance with formality requirements (e.g. correct classification of the goods and services, power of attorney etc.) and for possible absolute bars to registration (e.g. lack of distinctiveness of the mark, whether it is merely descriptive or deceptive). The requirements on registrability are relatively high. It is particularly difficult to obtain a registration on geographic names.

In addition, the Austrian Patent Office automatically carries out an examination for similar marks in respect of every Austrian application. This examination covers older identical and similar registrations valid in Austria in the same classes of goods and services.

The result of this search is communicated to the applicant in the form of a computer printout. This printout frequently contains a plurality of older marks that do not come particularly close to the mark searched. We, therefore, review the search result for you and, in our report, emphasise those marks that could indeed constitute a bar, in particular also with a view to later use of the mark. We have made it our practice to enclose copies of the publications of particularly relevant marks to our report.

This official search is carried out for informative purposes only, which is to say that the Austrian Patent Office is not entitled to reject an application because of the existence of older similar (even identical) registrations.

On the basis of the result of the official search the applicant can either withdraw his application or restrict the specification of goods and services or else start negotiations with the owners of older registrations. Thanks to such negotiations, which we will be pleased to conduct for you, we frequently have success in avoiding later controversies, such as cancellation and infringement proceedings.

If, upon obtaining knowledge of the result of the official similarity examination, the application is further prosecuted, registration is effected relatively quickly. Registration always takes place for a renewable period of ten years. The period of protection of the mark starts with its registration. The registered mark is published in the Austrian Trade and Service Marks Gazette.

The opposition is possible after the publication of the registered mark. If no opposition is lodged within the three months opposition term, the mark is finally registered.

If the owner of an older registration considers himself disturbed by a younger mark, he can also file an action for cancellation with the Nullity Department of the Austrian Patent Office, and, if the younger mark is in use, he may also file an action for infringement. Accordingly, it is of particular importance that the applicant is aware of the risk of a later action and that he takes the necessary decisions beforehand.

An Austrian registration can repeatedly be renewed for further periods of ten years by payment of a fee; the fee can be paid one year before expiry of the ten year period of protection at the earliest. Within six months after expiry of the ten year period, renewal "in the period of grace" is still possible, payment of a fine is due.

If somebody considers himself disturbed by a new registration, he can file an action for cancellation (in respect of the entire or part of the specification of goods and services) with the Nullity Department of the Austrian Patent Office. Such action for cancellation has to be based on reasons as provided for by our law.

The main reason for an action for cancellation is the ownership of an older registered mark. In this regard a term of five years from obtaining knowledge of the use of the younger registered mark has to be observed.

An action for cancellation can, however, also be based on a non-registered mark, provided that the latter has acquired secondary meaning in Austria. Such action has to be filed within five years from registration of the younger mark.

Non-observance of the above deadline means acquiescence, i.e. the owner of older rights forfeits his claims and has to tolerate co-existence of the marks. Therefore, it is necessary to watch new registrations when they come about and to take proper action in time.

In addition, a trade or service mark can be attacked on the basis of an older foreign company name under the provision that the latter has been used in Austria to a certain extent or is recorded in the Austrian register of companies.

A further ground for cancellation consists in that the owner of the attacked mark was obliged to protect the business interests of the petitioner and that registration had taken place without consent of the latter (mark of an agent). In such a case the petitioner is free to request either cancellation of the mark or its assignment to him.

Independent of any acquiescence, a trade or service mark registration can also be attacked on the basis of absolute bars to registration, which is to say that it should not have been registered in the first place as it is for instance descriptive or deceptive. Such action for cancellation can be filed by anybody.

Similarly, any party can request cancellation of a mark if the mark has not been used within the five years preceding the filing of the action for cancellation in respect of the goods or services the mark is registered for. It lies with the owner of the mark to prove use in such proceedings.

If it is desired to stop the use of an identical or similar sign by a third party, a suit has to be brought before the commercial court having competence in the respective case. In the frame of such proceedings, also an action for a temporary injunction is possible. There is no immediate deadline for bringing such action apart from the ordinary statute of limitation of six months.

Use of a mark should be taken up five years after its registration at the latest as otherwise there is the danger of an attack for non-use by third parties. Also use of a mark by a licensee, whether registered or not, is considered trademark use. Our law requires use "to an adequate extent". What is adequate is decided from case to case.

A marking by, for instance, ® or TM is not compulsory in Austria and without legal effect. It, of course, serves to identify a registered trade mark more clearly as being registered, which may be of importance whenever it has to be clarified whether the sign in question has been used as a trade mark or not. If, for instance, a mark is used in a continuous text in a manner that consumers will take it for a general term and not for a mark, also a registered mark could be cancelled retroactively because of its development to a general or generic term. Such a development could possibly be avoided by a consistent use of ®.

It is important, however, that the ® is used only in connection with marks which are in fact registered. According to a pertinent decision of the European Court of Justice (Pall Corp ./. P.J. Dahlhausen u. Col, C 238/89), the ® may be used even though the mark is not registered in the country in question, but in another (EEA) member state. No products bearing an ® should be exported e.g. to the United States, if there is no registered trade mark there. Upon request of thirds the trade mark registration number of a product marked with ® must be disclosed. In the worst case a plaint because of deception (market confusion) could be lodged if a product is marked with an ® without the existence of a trade mark registration.

The marking TM is less problematic. It means nothing in Austria. According to US practice TM refers to a used, non-registered trade mark. If TM is marked on a product on the Austrian market, the mark in question is certainly used, accordingly this is true. It is unclear whether Austrian circles associate any meaning with the marking TM; in any case there is no pertinent decision on that issue in Austria.

It is possible in Austria to have a license or mortgage recorded in the Register of Marks. Similarly, all changes concerning the ownership of marks are recorded there.

Find more information under point » Register Entries

The specification of goods and services of an existing registration or pending application can be broadened. Accordingly, it is not necessary to file a new application whenever the business interests are expanded. The newly added goods and services naturally have a younger priority. The term for renewal, however, is the same for the entire mark (original mark plus broadened mark). Therefore, only one single registration needs to be maintained and the renewal fees paid therefor.

If, however, the mark itself is modified (modernised), a new application is necessary.

The Austrian Patent Office does not automatically notify trademark owners of the registration of new identical or similar marks.

However, apart from the similarity examination in the course of the application proceedings (see above), our Patent Office offers official searches (with fees payable) for individual marks in certain classes and for marks of a certain registrant. Such official searches can also be requested on a regular basis and thus serve for watching and detecting newly registered marks.

We can ourselves carry out online searches for more or less identical marks prior to filing an application. The latter not only for Austria, but for a number of further countries, among them naturally International Trademarks and Community Trademarks. For comprehensive preliminary searches prior to filing one can either resort to the services of the Austrian Patent Office or to those of private search institutes. We will be glad to evaluate the search results for you.

A trade and service mark can be assigned without the business of the owner. We would be pleased to provide you with samples of assignment deeds.

It is equally possible to assign a mark for only part of the goods and services. However, the goods and services remaining with the original owner must not be of the same kind with those of the other owner.