Opposition proceedings in Austria

The Austrian Patent Office offers as of July 1, 2010 the possibility of an opposition proceeding. Oppositions can be brought in against Austrian marks and the Austrian part of international marks, this after the publication of the registered mark. The publication of Austrian marks takes place every 20th of a month; the opposition period is three months. For the Austrian part of an international mark the three months opposition perod starts on the first day of the month following the publication in the WIPO-Gazette.

Oppositions will be possible only against marks published after July 1, 2010. The opposition period accordingly can start on July 20, 2010 for national marks and on August 1, 2010 for the Austrian part of international marks at the earliest. Opposition writ and opposition fee must have reached the Austrian Patent Office at the last day of the oppoosition period. The official fee for lodgement of the opposition is € 150,--; in addition € 50,-- document fees will have to be paid.

For a smooth proceeding, only registered marks and applications valid in Austria can form the basis of an opposition. If the opposition is based only on one or more applications, the proceeding will be suspended until the finalisation of the registration process. This can, especially in case of Community trademark applications, take relatively long. All other grounds for the declaration of invalidity of a mark can be invoked in the course of the cancellation proceeding, which still exists. No restutio in integrum is possible in case of missing the opposition term or not timely payment of the opposition fee.

The trademark owner will have the possibility of a reply within an appropriate time which can be prolongated with a sufficient reasoning upon request. Also an objection because of assumed non-use, should the opposition mark(s) be registered since more than five years, is possible. If the attacked owner of the mark does not file a reply to the opposition, it will be decided according to the opponent's request without further proceeding and the registration will be cancelled with retroactive effect to the beginning of the duration of protection. An oral hearing can be scheduled upon request. After the procedure of taking evidence the competent member of the responsible department (national or international Legal Department) has to issue the decision.

In case more oppositions were lodged against a mark, the Office can elect in a preliminary examination the most suitable opposition and suspend the proceedings in respect of the other oppositions. If the trademarks in dispute lose their protection because of other circumstances, the opposition proceeding has to be seen as terminated without further formalities.

Against the decision, an appeal to the Appeals Department is possible and against their decision an appeal to the Supreme Patent and Trademark Senate.

No cost decision will be issued; each party has to bear its own cost.

We want to hint to the fact that the Austrian Patent Office does not inform the owner of existing trademarks on the registration of younger similar or identical marks; the publication of younger marks has to be monitored actively, normally by a respective monitoring service. We will be pleased to provide you with more information on that in case of interest.