SONN Patentanwälte – IP Attorneys

“IST” versus “IST”

The famous Institute of Science and Technology in Maria Gugging requested cancellation of the above “IST”-mark (IM1010802) registered by a Düsseldorf based institute offering educational services in relation to sports, leisure and tourism. The request for cancellation was based on the use of “IST” as a business identifier before the priority date of the contested mark. The holder of the contested mark replied that it had already used IST before the claimant commenced use thereof as a company sign. The Invalidity Division rejected the request for cancellation. Use of IST by the claimant (albeit not contained in its company name), a likelihood of confusion as well as the earlier use were affirmed. However, the Invalidity Division took the view that the claim for cancellation must fail because the holder of the contested mark used the sign even earlier in Austria. In its appeal the Gugging based IST put forward that the evidence provided by the Düsseldorf institute did not prove sufficient use of IST as a business identifier. The activities by the defendant were insignificant, singular and did not reach the threshold for establishing a better priority for the sign. However, according to the Higher Regional Court Vienna (34R145/15s) it is not the range of activities, but if and when the sign was used in such way that a continuous economic activity in Austria was established. On the other hand, the acquisition of a certain reputation is not essential nor are revenues or a number of customers in Austria. The domestic connection which results from the submitted documents – a cooperation with an Austrian sports organization – and the fact that the internet presence of the defendant is in German are sufficient. It should be noted that such collisions between marks could only be prevented with significant investigative efforts. Preliminary searches in relevant trademark databases will not uncover older company names. In the case at hand even an inquiry with the Austrian company register would not have yielded the desired results. Far more comprehensive investigations would have been necessary to become aware of the earlier use of the sign “IST” in Austria.