SONN Patentanwälte – IP Attorneys

When the scorpion stings

In a case on trade mark infringement, the Austrian Supreme Court developed its previous case law on the scope of protection of trade marks. The decision also deals with the defence of non-use of the plaintiff's mark in the past with respect to intermediary rights.

The plaintiff registered a trade mark comprising of a logo with the word element "SKORPION MOBILE EINSATZGRUPPE" (scorpion mobile task force) with priority of 1990 for private detective services. However, "SKORPION" has only been used by the plaintiff's company since 2008. The defendant was founded as Scorpio Security Bewachungen (surveillance services) GmbH in 1992, but - so the plaintiff - only became known to the plaintiff in 2010.

The plaintiff sued for injunctive relief and change of the defendant's company name. The court of 1st instance found for a likelihood of confusion between the signs at issue and granted the plaintiff's claims. In its reasoning, the court dismissed the defendant's argument of non-use of the plaintiff's trade mark. In addition, the court found that the plaintiff's rights were not forfeited as the plaintiff was not aware of the defendant's activities until 2010.

Both parties appealed. The appeal court reversed the decision of the 1st instance on the basis that according to the jurisprudence of the European Court of Justice in C-17/06 Céline the defendant cannot be ordered to change its company name, as trade marks do not protect against the use of the sign as a corporate name. Furthermore, the appeal court took the view that the plaintiff was not entitled for injunctive relief if the plaintiff's mark was not used at the time of establishment of the defendant's company.

The plaintiff appealed to the Austrian Supreme Court, which confirmed the findings of the appeal court in that the use of a sign strictly as a company name does not infringe trade mark rights, unless the company name is also used for labelling goods and services. It is only in the latter case that the main function of the mark to identify the origin of goods and services is affected. Thus, the claim for cancellation of the defendant's mark was finally rejected.

However, the Supreme Court did not agree on the consequences of non-use of the plaintiff's mark in the past. The Supreme Court found that what matters is if the mark at issue is subject to cancellation for non-use at the end of the oral proceedings in the 1st instance. On the other hand, non-use in the past - prior to the 5-years window - was not detrimental to the plaintiff's claim for injunctive relief. Consequently, the defendant cannot rely on intermediary rights derived from past non-use of the plaintiff's mark. Thus, the Austrian Supreme Court did not adopt the approach from Germany trade mark law which provides for such intermediary rights.

Thus, the present decision strengthens the position of trade mark owners in Austria who are not required to produce proof of use for the time before the emergence of a conflicting sign if the mark relied upon was used in the past five years before the lawsuit.

DI Johannes Strobl