Trade Mark vs Company Name

In a recent decision of the Austrian Supreme IP Tribunal an Austrian auditor company named CONFIDA requested cancellation of three younger trade marks, all including the word CONFIDA and registered i.a. for auditing services and financial services in class 36. The cancellation action was based on the company name, whereas the company was registered in 1978 in the Austrian company register and the attacked marks were only registered in the 1990s and later. Likelihood of confusion between the opposing signs was not under dispute.

However, the owner of the younger marks claimed that he was the owner of older company name rights as he registered and started his company already in 1964 in Liechtenstein and since from the beginning also services were offered in Austria. However, the Nullity Department of the Austrian Patent office, the competent authority in 1st instance, found that only 10 % of the revenues of the owner of the trade marks were gained in Austria and that the activities were carried out only in the very West of Austria, close to the border to Liechtenstein. Therefore, the 1st instance found that the trade mark owner was unsuccessful in proving continuous business activities in Austria which started before the company name of the claimant was registered in 1978. Accordingly, the attacked trade marks were cancelled.

However, the trade mark owner successfully appealed this decision. The Supreme IP Tribunal found that the evidenced activities were sufficient to prove continuous business activities within the territory of Austria, which is according to established case law sufficient in order to prove older company name rights in Austria.

What seems surprising and what is not actually covered by the wording of Art 32 of the Austrian Trade Mark Act on which the claimant relied upon, is that the Supreme Tribunal found that an owner of an older company name cannot successfully request cancellation of a younger trade mark in case the owner of this trade mark holds older company name rights as the claimant.

From a business point of view, this decision seems reasonable; however, the legal basis in the Trade Mark Act is dodgy. This decision once again highlights the delicate relation between company names and trade marks, with respect to which the Austrian Trade Mark Act leaves very much room for interpretation by the courts.

Dr Rainer Beetz, LL.M.