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Austrian Trademark Law: NEW Opposition Procedure

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Implementation of a new Opposition Procedure into the Austrian Trade Mark Law as of 1 July 2010


Introduction

In November 2009 the Austrian Parliament adopted the latest amendment to the Austrian Trademark Protection Act (Markenschutzgesetz) that is implementing a new opposition procedure as of 1 July 2010. The aim of this new legal remedy was to provide for better legal protection for the owner of prior trademark rights that are eventually infringed by a new trademark registration.

Until the latest amendment of the Austrian Trademark Law the Austrian Patent Office - as the competent authority for registration of trademark and patent rights - only had to examine an application for registration of a new trademark for so-called absolute grounds for refusal. Additionally a simple search for similarity was done (e.g. regarding the name), but there was no extensive search for conflicting prior trademark rights required. Under the previous legal regime the owner of a prior trademark had to await valid registration of the new trademark and then oppose the later trademark by filing regular cancellation proceedings.

Opposition period

Now, starting with 1 July 2010, the owner of an earlier trademark can actively challenge a later conflicting trademark registration within an opposition period of three months from publication in the Austrian Trademark Bulletin (Österreichischer Markenanzeiger) after 1 July 2010 or - for international registrations - within three months starting from the first day of the month following publication in WIPO’s Trademark Gazette after 1 July 2010. The opposition is therefore filed against a trademark registration and has to be received (not: send!) by the Austrian Patent Office not later than on the last day of the deadline. No restitutio in integrum shall be admissible if the deadline is missed. All other remedies of cancellation actions remain fully available and can be even filed jointly with opposition.

Costs

The tax for filing an opposition is EUR 150,-- which must be paid and received by the office within the opposition period otherwise the opposition is deemed not be filed. The amount of EUR 50,-- is due as document tax and should be paid at the same time in order to avoid a delay. There will be no reimbursement of costs, each party has to bear its own expenses.

Grounds for opposition

Furthermore the opposition has to be substantiated. Grounds for opposition are prior registration of a trademark or a prior application provided that it will be registered that is confusingly similar to the later trademark. It is to be noted that only the owners of registered trademark rights may file an opposition. For owners of other rights (such as e.g. known, but unregistered trademarks) the provisions regarding the new opposition system are not applicable, but all remedies of cancellation actions remain available.

Procedure

Any timely filed opposition will be recorded in the trademark register.

After expiration of the opposition period the trademark owner will be informed about all opposition proceedings that were filed in time and then may file himself a statement within a period of two months and of three months in case of an international registration. If the owner of the opposed trademark does not comment on the opposition within the set period of two months its new trademark registration will be cancelled.

As soon as the statement was filed the opposition proceeding will be continued by the exchange of written pleadings and the collection of evidence. This is especially the case when exception of non-use has been raised against an opposing trademark which has been registered for more than five years. Such a trademark owner must then file all easily available means of evidence of its serious use of its trademark. The owner of the opposed trademark must then decide whether he withdraws his exception of non-use or files a separate cancellation action which would then suspend the opposition procedure.

If opposition is based on a pending trademark application the opposition procedure will be interrupted until the registration of the trademark has occurred.

The procedure usually takes place in writing, but if requested by a party or initiated by the office, an oral hearing may be scheduled.

After that, the single member of the relevant division of the office and not a senate composed of three members as in cancellation action proceedings shall render a decision and can base it on a single opposition among multiple ones which has the most chance of success whereas the other oppositions are put on hold.

If opposition is granted the opposed trademark is cancelled ex tunc back to the date when the trademark was filed.

Various special provisions shall therefore allow a speedy and simplified procedure. The office estimates that the average duration will be about three months.

Appeal

Against this decision of the office division an appeal to the Board of Appeal is admissible. Finally, that decision may be contested before the Supreme Patent and Trademark Board. In both cases, there will be again no reimbursement of costs.

Procedural differences

The following chart shows the major differences between opposition and cancellation action procedures:

OppositionCancellation Action
DurationApprox. three monthsApprox. three years
HearingUpon requestCompulsory
Decision makerSingle member of the divisionSenate of three persons
Costseach party has to bear its own expensesLoosing party has to reimburse the taxes and costs of legal representation calculated according to the civil procedure code
TaxesEUR 150 (plus document tax EUR 50)EUR 450 (plus document tax EUR 230)
DeadlineWithin three months from publication of registrationunlimited
GroundsPrior trademark / applicationAlso for other reasons
Exception of non-use of the opposing trademark for the last five yearsPossible with and without interruption of procedureNot possible – a separate cancellation action must be filed

Practical impact

The Austrian Patent Office calculates that there will be among national registrations max. 10% (approx. 600) and among international registrations max. 5% (approx. 260) opposition cases per year. Due to early settlements in between half and two thirds of these cases remaining 200-300 cases will be ended by office rulings.

Conclusions

With the implementation of the new opposition procedure trademark holders and applicants obtained in Austria an additional remedy to defend their IP rights and to attack infringing trademark registrations at an early stage. Practice will show how efficient the procedure will be. If the office is able to keep the promise of keeping the duration down to several months this remedy can indeed become an interesting alternative to lengthy cancellation action procedures. More than ever it will be important for trademark proprietors to be vigilant and to run a watch service in order to intervene timely within the opposition period limited to three months from the publication of the national or international registrations. A certain downer is the fact that even a successful opposition gives not the right to have at least reimbursed the paid taxes.


For more information please contact
Dr. Christoph Petsch
Petsch Frosch Klein Arturo Rechtsanwälte

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