A brief survey of national and international trademark law and trademark protection

1. Concept

Section 1 of the Austrian law on trademark protection defines trademarks as signs that can be graphically depicted, in particular words including personal names, images, letters. Every distinctive sign that serves to designate an enterprise or products of an enterprise is also considered a trademark. One distinguishes between word trademarks¹ (words, personal names, several capital letters), word-picture trademarks (combinations of word and picture) or picture trademarks (no word component).

2. Advantages

A registered trademark serves to protect the origin of the goods, their quality, and the good reputation of an enterprise. In addition, entry in the register of trademarks leads to quicker traceability of the trademark and helps prevent interference with trademarks (publicity effect). Every natural or juristic person can be the proprietor of a trademark. Associations with legal personalities can also register trademarks² (collective marks, e.g. AMA [Agrarmarkt Austria] seal of quality).

3. National registration

In principle, trademark protection is conceivable at three levels. First, a trademark can be registered at the national level with the Austrian Patent Office. This affords trademark protection for the entire national territory. The application for the trademark must be made using the forms supplied by the Austrian Patent Office. In principle, trademark protection is conceivable at three levels. First, a trademark can be registered at the national level with the Austrian Patent Office. This affords trademark protection for the entire national territory. The application for the trademark must be made using the forms supplied by the Austrian Patent Office. In registering, the class number (“Kl.”) of the goods and services for which protection is sought must be indicated. The goods and services are classified according to the so-called Nice Classification (e.g. Kl. 3: perfumery goods).

The fees for a national registration depend on the number of classes in which a trademark is to be protected and are normally around EUR 360.00. Trademark protection commences on the day of registration and lasts for an initial period of 10 years; it can be extended upon payment of a renewal fee.

4. Rights of the trademark proprietor

4.1. The proprietor of a registered trademark can, in accordance with Section 10 of the Austrian law on trademarks, prohibit a third party from using a trademark or a sign that resembles the protected trademark with a suit for discontinuance. A third party can also be prohibited from using a trademark or a sign if this causes the danger of a confusion of the trademark/sign and the registered trademark for the public.

4.2. According to Section 30 of the Austrian law on trademarks, the proprietor of an older trademark has a claim for cancellation against the proprietor of a younger trademark if the two trademarks are identical or similar and there is a danger of confusing the two trademarks for the public. If, however, the older trademark proprietor tolerates the use of the younger trademark for a period of 5 successive years he can no longer demand its cancellation.

5. Community trademark

5.1. At the second level, a community trademark can be registered which constitutes an own protective right independent of the national trademark law. For this reason, neither a national basic application nor a basic trademark is required when applying for a community trademark. The person filing the application can obtain protection in all member nations of the EU by the registration of the trademark. The protection of the community trademark cannot be split over individual member nations.

5.2. The Office for Harmonisation in the Internal Market (trademarks, designs, and models -OHIM) with its seat in Alicante is responsible for registration in the entire EU. The application can be filed directly with the OHIM or with the Austrian Patent Office. In practice, however, the application should be made directly with the OHIM using application forms. The costs for filing a community trademark are between EUR 1 600.00 and EUR 1 750.00. The OHIM keeps a register of community trademarks that is publicly accessible^3,4. Like the national trademark, the community trademark affords 10 years of protection and can be extended.

5.3. Rights of the proprietor of the trademark
The community trademark already affords temporary protection as soon as the application is published and grants the person filing the trademark a claim for compensation against the infringer of the trademark. Once the registration of the trademark is published, the trademark proprietor has rights to defensive demand according to national law (Art. 1 Para, 2 Council Regulation on the Community Trade Mark).

6. International trademark registration:

International trademark registration offers the person filing the trademark application the possibility to register his trademark in member nations of the Madrid agreement on international registration and the protocol of the Madrid agreement. 75 nations in which trademark protection can be applied for are presently members of these agreements. The World Intellectual Property Organisation in Geneva is responsible for registration. It should be noted that a national basic trademark is a condition for the application. The international application filed with the Austrian Patent Office is then forwarded to Geneva. The costs of registration are composed of a basic fee (EUR 100.00) and at least one country fee (726 Swiss Francs).

7. Rights of the proprietor of the trademark:

The trademark is protected for 10 or 20 years in accordance with the respective national law of the contracting state depending on which of the two agreements named above apply. The period of protection can be extended by paying the renewal fee.

Our law firm will be pleased to assist you if you want to learn more about this subject.