AUSTRIA
Trademark Law
BGBl. No. 260/1970 as amended by BGBl. Nos. 350/1977, 526/1981, 126/1984,
653/1987, 418/1992, 773/1992, 109/1993, I 111/1999, I 191/1999 and I
143/2001
TABLE OF CONTENTS
Chapter I General Provisions
Section 1
Section 2
Section 3 (repealed; Federal Law Gazette I No 111/1999)
Section 4
Section 5
Section 6
Section 7
Section 8 (repealed; Federal Law Gazette 350/1977)
Section 9
Section 10
Section 10a
Section 10b
Section 11
Section 12
Section 13
Section 14
Section 15 (Repealed; Federal Law Gazette 350/1977)
Chapter II Registration, transfer and cancellation of trade marks
1. Registration
Section 16
Section 17
Section 18
Section 19
Section 20
Section 21
Section 21a
Section 22
Section 23
1
Section 24
Section 25
Section 26
Section 27
2. Changes in the Register
Section 28
3. Cancellation
Section 29
Section 30
Section 30a
Section 31
Section 32
Section 33
Section 33a
Section 33b
Section 33c
Section 34
4. Authorities and procedures
Section 35
Section 36
Section 37
Section 38
Section 39
Section 40
Section 41
Section 42
Sections 43-49 (repealed; Federal Law Gazette 350/1977)
Section 50
Chapter III Civil rights claims in respect of infringements of trade mark
rights
Section 51
Section 52
Section 53
2
Section 54
Section 55
Section 56
Section 57
Section 58
Section 59
Chapter IV Punishable Infringements of Signs
Section 60
Section 60a
Section 60b
Section 60c
Section 61
Section 61a
Chapter VI Collective marks
Section 62
Section 63
Section 64
Section 65
Section 66
Section 67
Chapter VII Geographical indications and designations of origin in
accordance with Regulation (EEC) No 2081/92 of July 14, 1992 on the
Protection of Geographical Indications and Designations of Origin for
Agricultural Products and Foodstuffs, OJ. No L 208, page 1, as amended
by Regulation (EC) No 1068/97 of July 13, 1997 OJ. No L 156, page 10
Section 68
Section 68a
Section 68b
Section 68c
Section 68d
Section 68e
Section 68f
Section 68g
Section 68h
Section 68i
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Section 68j
Chapter VIII Community trade marks
Section 69
Section 69a
Section 69b
Section 69c
Section 69d
Chapter IX Trade marks in accordance with the Protocol Relating to the
Madrid Agreement Concerning the International Registration of Marks
Section 70
Chapter X Prohibition of Unauthorized Representation
Section 71
Chapter XI Special fees
Section 72
Chapter XII Transitional Provisions
Section 73
Section 74
Section 75
Section 76
Section 77
CHAPTER XIII Final Provisions
Section 78
Section 79
Section 80
Section 81
Section 82
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Chapter I General Provisions
Section 1
A trade mark may consist of any sign capable of being represented graphically,
particularly words, including personal names, designs, letters, numerals,
the shape of goods or of their packaging, provided that such signs are
capable of distinguishing the goods or services of one undertaking from
those of other undertakings.
Section 2
(1) Obtaining a trade mark right shall be subject to the entering of the
trade mark in the trade mark register.
(2) This Federal Act shall apply mutatis mutandis to trade mark rights
obtained for the territory of Austria on the basis of intergovernmental
agreements. Such trade marks shall also be examined for compliance with
the law (Section 20).
(3) Trade mark rights obtained on the basis of the Regulation (EC) No
40/94 on the Community trade mark, OJ. No L 11, January 14, 1994, page
1, as amended by the Regulation (EC) No 3288/94 for the implementation
of the agreements concluded in the framework of the Uruguay-Round, OJ
No L 349, December 31, 1994, page 83, shall be considered equal to trade
mark rights obtained in accordance with this Federal Act, except as
otherwise provided for in the Community Law specifications in respect
of trade mark matters. In addition the provisions of Chapter VIII shall
be applied.
Section 3 (repealed; Federal Law Gazette I No 111/1999)
Section 4
(1) Excluded from registration shall be signs which
1. exclusively consist
a) of state coats of arms, national flags or other national emblems or
of the coats of arms of Austrian provincial or local authorities,
b) of official test or guarantee signs which are used in Austria or –
pursuant to an announcement published in the Federal Law Gazette (Section
6 par 2) - in a foreign state, for the same goods or services the trade
mark is intended for, or for similar goods or services,
c) of signs of international organizations to which a member state of
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the Paris Union for the Protection of Industrial Property belongs, provided
the signs have been promulgated in the Federal Law Gazette. The last sentence
of Section 6 par 2 shall apply to such promulgation;
2. cannot constitute a trade mark in accordance with Section 1;
3. are devoid of any distinctive character;
4. consist exclusively of signs or indications which may serve, in trade,
to designate the kind, quality, quantity, intended purpose, value,
geographical origin or the time of production of the goods or of rendering
of the service, or other characteristics of the goods or service;
5. consist exclusively of signs or indications which have become customary
in the current language or in the bona fide and established practices
of the trade for the designation of the goods or service;
6. consist exclusively of the shape which results from the nature of the
goods themselves, or of the shape of the goods which is necessary to obtain
a technical result, or of the shape which gives substantial value to the
goods;
7. are contrary to public policy or to accepted principles of morality;
8. are of such a nature as to deceive the public, for instance as to the
nature, quality or geographical origin of the goods or service;
9. contain or consist of a geographical indication identifying wines and
intended for wines which do not have that origin, or identifying spirits
and intended for spirits which do not have that origin.
(2) Registration shall, however, be admissible in the cases of par 1 subpars
3, 4 and 5 if the sign in Austria has acquired a distinctive character
in the trade concerned in consequence of the use which has been made of
it prior to the application.
Section 5
Trade marks containing a distinction or one of the signs as referred to
in Section 4 par 1 subpar 1 as components shall, in so far as the use
is subject to legal restrictions, be registered only after evidence has
been furnished of the right to use that distinction or sign.
Section 6
(1) The state coat of arms, the national flag or any other national emblem
or the coat of arms of an Austrian provincial or local authority shall
not be used in trade without authorisation for the designation of goods
and services or as a component of such a designation, nor shall the signs
referred to in Section 4 par 1 subpar 1 lit. c be used without the consent
of the entitled party. Accordingly, test or guarantee signs shall not
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be used without the approval of the authority issuing such test or guarantee
signs for the designation, or as a component of the designation, of goods
or services for which the sign has been introduced, or for similar goods
or services.
(2) To foreign national emblems and official test and guarantee signs
par 1 shall apply only if an intergovernmental agreement or reciprocity
exists and if that foreign sign has been promulgated in the Federal Law
Gazette. Where the notice does not include a reproduction of the official
presentation of the sign it shall have to be stated where such reproduction
is publicly accessible.
(3) Persons infringing the prohibition (par 1) shall be punished by the
district administrative authority by a fine of up to € 218 or arrest of
up to one month. In case of aggravating circumstances both penalties may
be imposed concurrently.
Section 7
Section 4 par 1 subpar 1 and Sections 5 and 6 shall also apply to
representations which are similar to the official presentation of the
distinction or sign. Approved distinctions and signs of the kind referred
to in Section 4 par 1 subpar 1 may, however, even where they are similar
to other such distinctions or signs, constitute components of trade marks
(Section 5) and may be used for the designation of goods or services (Section
6).
Section 8 (repealed; Federal Law Gazette 350/1977)
Section 9
The Federal Minister of Economic Affairs may where required to facilitate
identification of the origin of goods of a specific type in view of their
characteristics, in particular, their dangerous nature, or for economic
reasons,orderthatsuchgoodsmayonlybeputonthemarketafteraregistered
mark has been affixed to them in a manner to be determined by ordinance.
Section 10
(1) Subject to the preservation of prior rights the registered trade mark
shall confer on the proprietor the exclusive right to prevent all third
parties not having his consent from using in the course of trade
1. any sign identical with the trade mark in relation to goods or services
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(Section 10a) which are identical with those for which the trade mark
is registered;
2. any sign identical with, or similar to, the trade mark used for identical
or similar goods or services (Section 10a) if there exists a likelihood
of confusion on the part of the public which includes the likelihood of
association between the sign and the trade mark.
(2) The proprietor of a registered trade mark shall also be entitled to
prevent all third parties not having his consent from using in the course
of trade any sign identical with, or similar to, the trade mark in relation
to goods or services (Section 10a) which are not similar to those for
which the trade mark is registered, where the latter has a reputation
inAustriaandwhereuseofthatsignwithoutduecausetakesunfairadvantage
of, or is detrimental to, the distinctive character or the repute of the
trade mark. The reputation of the trade mark filed earlier shall be required
to have existed at the latest on the day of the application for registration
of the subsequent trade mark, or the date of priority or seniority claimed
for the registration of the subsequent trade mark or at the time of creation
of the other sign.
(3) The registered trade mark shall not entitle the proprietor to prohibit
a third party from using, in the course of trade,
1. his own name or address,
2. indications concerning the kind, quality, quantity, intended purpose,
value, geographical origin or the time of production of goods or of rendering
of the service, or other characteristics of goods or services,
3. the trade mark where it is necessary to indicate the intended purpose
of a product or service, in particular as accessories or spare parts,
provided he uses them in accordance with honest practices in industrial
or commercial matters.
Section 10a
As use of a sign for the identification of goods or services shall, in
particular, be considered:
1. affixing the sign to the goods, to the packaging thereof, or to objects
in respect of which the service is rendered or is to be rendered,
2. offering the goods, or putting them on the market or stocking them
for these purposes under that sign, or offering or supplying services
8
thereunder;
3. importing or exporting the goods under the sign;
4. using the sign on business papers, in announcements or in advertising.
Section 10b
(1) The trade mark shall not entitle the proprietor to prohibit a third
party from using the trade mark in relation to goods which have been put
on the market in the EEA under that trade mark by the proprietor or with
his consent.
(2) Par 1 shall not apply where there exist legitimate reasons for the
proprietor to oppose further commercialisations of the goods, especially
where the condition of the goods is changed or impaired after they have
been put on the market.
Section 11
(1) Separately from any change of ownership of the enterprise the trade
mark may be transferred in respect of all or some of the goods or services
for which it is registered. Where the trade mark right is the property
of an enterprise, the trade mark right together with the licence rights
if any shall be conferred to the new proprietor in case of a change of
ownership of the whole of the enterprise except there is agreement to
the contrary.
(2) Where it is obvious from the request for transfer or the respective
documents submitted that because of the transfer the trade mark is likely
to mislead the public, in particular as regards the nature, the quality
or the geographical origin of the goods or services, the request for
registration of the transfer shall be refused, unless the successor in
title agrees to a limitation of the list of goods and services in order
to eliminate the likelihood of a deception.
(3) As long as the transfer of the trade mark has not been recorded the
rights arising from the registration may not be asserted before the Patent
Office and all communication concerning the trade mark served on the
registered proprietor of the trade mark shall have effect with regard
to the successor in title of the trade mark.
Section 12
No one shall be permitted, without the consent of the person authorized,
to use the name, the firm name or the special designation of the undertaking
9
of another person for designating goods or services.
Section 13
(1) If the reproduction of a registered trade mark in a dictionary,
encyclopaedia or similar reference work gives the impression that it
constitutes the generic name of the goods or services for which the trade
mark is registered, the publisher of the work shall, at the request of
the proprietor of the trade mark, have to ensure that the reproduction
of the trade mark at the latest in a new edition of the publication is
accompanied by an indication that it is a registered trade mark.
(2) Par 1 shall also apply to reference works stored electronically and
available to the public via electronic networks. In that case any essential
alteration of the contents of the reference work shall be considered a
new edition.
Section 14
(1) A trade mark may be the subject of exclusive or non-exclusive licences
for all, or some of the goods and services for which it is registered,
and for the whole federal territory or part thereof.
(2) The proprietor of a trade mark may invoke the rights conferred by
that trade mark against a licensee who contravenes any provision in his
licensing contract with regard to
1. the duration of the licence,
2. the form covered by the registration in which the trade mark may be
used,
3. the kind of goods or services for which the licence is granted,
4. the territory in which the trade mark may be used, or
5. the quality of the goods manufactured or of the services provided by
the licensee.
Section 15 (Repealed; Federal Law Gazette 350/1977)
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Chapter II Registration, transfer and cancellation of trade marks
1. Registration
Section 16
(1) The trade mark register shall be kept by the Patent Office.
(2) For the registration of a trade mark a written application must be
filed with the Patent Office. Where a trade mark does not consist exclusively
of figures, letters or words having no pictorial design and claiming no
specific form of writing, a reproduction of the trade mark shall be submitted,
in case of a sound mark an acoustic presentation of the mark in a musical
notation or by means of a sonogram together with a tonal presentation
of the trade mark on a data carrier. The number of reproductions of the
trade mark to be submitted, their characteristics and dimensions as well
as the data carriers to be used and details for the acoustic presentation,
such as formats, sampling frequency, resolution and playing time shall
be determined by ordinance.
(3) The application shall indicate the goods and services for which the
trade mark is intended (list of goods and services); the detailed
requirements in respect of the list of goods and services and the number
of pieces to be submitted shall be determined by ordinance.
(4) In the ordinances to be issued by the President of the Patent Office
in accordance with par 2 and 3 consideration shall be given to the
requirements of the registration procedure and of the registration,
printing and publication of the trade mark.
Section 17
(1) To be entered into the trade mark register upon registration are:
1. the trade mark,
2. the registration number,
3. the date of filing and the priority claimed, if any,
4. the proprietor of the trade mark and his representative, if any,
5. the goods and services for which the trade mark is intended, arranged
according to the International Classification (Nice Agreement Concerning
the International Classification of Goods and Services for the Purposes
of the Registration of Marks, Federal Law Gazette No 401/1973 as amended),
6. the beginning of the period of protection,
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7. if appropriate, a note that the trade mark has been registered on the
basis of evidence of acquired distinctiveness.
(2)Wherearegistrationiseffectedonthebasisofarequestforconversion,
due reference shall be made in the register. Furthermore the following
provisions shall apply:
1. Where the registration is based on a request for conversion in accordance
with Art 108 of Regulation (EC) No 40/94 the date of filing of the Community
trade mark in the meaning of Art 27 of this Regulation shall be considered
the date of filing mentioned in par 1 subpar 3. If appropriate, the seniority
claimed in accordance with Art 34 or 35 of the Regulation shall be entered
into the register too.
2. Where the registration is based on a request for conversion in accordance
with Art 9quinquies of the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks, Federal Law Gazette
III, No 32/1999, the date of filing in the meaning of par 1 subpar 3 shall
be the date of the international registration in the meaning of Art 3
par 4, or the date of the registration of the territorial extension in
the meaning of Art 3ter par 2 of the Protocol. If appropriate, the time
precedence the trade mark enjoys according to Art 4bis of the Protocol
shall be entered into the register too.
(3) Trade marks consisting exclusively of figures, letters or words having
no pictorial design or claiming no special writing, shall be entered in
capital letters or Arabic figures.
(4) The proprietor of the trade mark shall receive official confirmation
of the entries in the register made in accordance with par 1.
(5) The trade mark shall be published after registration.
(6) The Trade mark register and the catalogues to be prepared on its contents
shall be open to public inspection. A certified copy of the entries shall
be issued upon request.
Section 18
(1) When registration of a trade mark is applied for, an application fee
of 69 € including a search fee (Section 21) to the amount of 29 €, shall
be payable together with a class fee. The class fee amounts to 15 € provided
the list of goods and services does not comprise more than three classes;
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for each additional class the fee shall be increased by 21 €.
(2) Before a trade mark is registered a fee of 145 € covering the period
of protection shall be payable upon request together with a contribution
to the cost of printing for the publication (Section 17 par 5) (Section
72 par 1).
(3) Fees already paid in accordance with par 2 shall be reimbursed if
the application does not lead to registration. The same shall apply to
the contribution to the cost of printing (par 2).
(4) Applications for international registration of a trade mark under
the Madrid Agreement Concerning the International Registration of Marks,
Federal Law Gazette No 400/1973, and under the Protocol Relating to the
Madrid Agreement Concerning the International Registration of Marks,
Federal Law Gazette III, No 32/1999, both as amended, shall be subject
to a national fee of 87 € in addition to the fee to be paid to the International
Bureau. If the international registration is applied for under both
agreements, the Madrid Agreement Concerning the International
Registration of Marks as well as the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks, only one
national fee shall be payable though.
Section 19
(1) The right to a trade mark shall commence on the day of entry in the
trade mark register (registration). The period of protection shall expire
ten years after the end of the month in which the trade mark has been
registered. It may be extended for further periods of ten years provided
that renewal of registration is applied for in due time (pars 2 and 3).
Thenewperiodofprotectionshallbecalculatedfromtheendofthepreceding
period, irrespective of the day of renewal.
(2) Registration shall be renewed by the payment of a renewal fee amounting
to 363 €.
(3) The renewal fee (par 2) may be paid not earlier than one year before
the end of the period of protection and not later than six months after
the end of the period. For all payments after the end of the period of
protection a 20 % surcharge shall be payable in addition.
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Section 20
(1) All applications for registration of a trade mark shall be examined
for their compliance with the law.
(2) If this examination reveals objections to the admissibility of the
registration of the trade mark the applicant shall be required to comment
on them within a set period. If, after timely receipt of the response
or expiry of the time limit, registration is found not to be admissible,
the application shall be refused by a final decision. Where there is no
obstacle to registration the trade mark shall be registered after an
examination for similarity (Section 21) and payment of the fees prescribed
in Section 18, par 2, and of the contribution to the cost of publication.
(3) Where there are objections to the admissibility of the registration
in view of Section 4 par 1 subpars 3, 4 and 5, it shall be determined
by a decision upon request of the applicant prior to the refusal that
the filed sign shall be eligible for registration only under the
preconditions laid down in Section 4 par 2; such decision shall be
contestable by appeal (Section 36).
Section 21
(1) Any trade mark filed shall furthermore be examined by the Patent Office
within the framework of its partial legal capacity (Section 58a par 1,
of the 1970 Patents Act, Federal Law Gazette No 259) whether it is identical
or possibly similar to marks filed earlier and registered for goods or
services of the same class (similarity research). Identical or possibly
similar trade marks shall be notified to the applicant together with the
notice that the sign filed will be registered in case of its admissibility
(Section 20 par 2) unless the application is withdrawn within the period
determined by the Patent Office.
(2)Thenotificationreferredtoinpar1ortheabsenceofsuchanotification
shall in no way affect the evaluation of the scope of protection of the
respective sign. It shall require neither signature nor official
certification.
Section 21a
International trade marks (Section 2 par 2), for which protection is claimed
in Austria, shall be examined for similarity within the period open for
the notification of a refusal of protection, provided the necessary
technical and organisational preconditions are at hand. Section 21 shall
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be applied mutatis mutandis.
Section 22
(1) The Patent Office within the framework of its partial legal capacity
(Section 58a par 1 of the 1970 Patents Act, Federal Law Gazette No 259)
shall provide any person, upon request, with written information, whether
a specific sign is identical or possibly similar to trade marks whose
respective goods and services fall into the classes specified in the request.
Section 21 par 2 shall apply to such information. Where the sign is a
registered trade mark, the indication of the registration number shall
suffice. If the necessary technical and organisational preconditions are
at hand, the similarity research shall also cover applications, community
trade marks and applications of community trade marks.
(2) Information according to par 1 may be requested once only or regularly,
i.e. at semi-annual, annual or biennial intervals. Regularly requested
information shall be despatched in January, semi-annual information also
in July.
(3) The requests shall be subject to payment of a remuneration the amount
of which shall be published in the Patent Gazette (Section 79 of the 1970
Patents Act, Federal Law Gazette No 259).
(4) Upon renunciation of further information the respective amount shall
be refunded.
Section 23
(1) The applicant shall obtain the right of priority on the day the
application is properly filed.
(2) The list of goods and services in respect of a filed or registered
mark may be subsequently extended. The rules for the application of a
mark shall apply to such an extension mutatis mutandis.
Section 24
(1) The rights of priority granted on the basis of intergovernmental
agreements or in accordance with par 2 must be expressly claimed. For
that purpose, the date of the application the priority for which is claimed
and the country in which the application was effected, shall be indicated
(declaration of priority). The filing number shall be indicated too.
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(2) The applicant shall enjoy the right of priority of a previous trade
mark application for a subsequent application in Austria for a period
of six months following the date of filing the previous trade mark filed
with an application office not covered by the scope of an intergovernmental
agreement on recognition of priority, if the subsequent trade mark
application refers to the same mark and if a respective mutuality with
this application office is declared by a notice to be published by the
Federal Minister of Economic Affairs in the Federal Law Gazette. The
conditions and effects of this right of priority shall correspond to those
listed in Art 4 of the Paris Convention for the Protection of Industrial
Property, Federal Law Gazette No 399/1973.
(3) The declaration of priority shall be submitted to the Patent Office
within two months after the application has been filed. Within this period,
an amendment of the declaration of priority may be requested. Such a request
shall be subject to payment of a fee amounting to half of the fees payable
for an application.
(4) Where the granting or maintenance of the right of protection depends
on whether or not the priority was lawfully claimed, the right of priority
must be proved. The evidence required for this proof (priority documents)
and the time of submission shall be determined by ordinance.
(5) If the declaration of priority has not been filed in due time, if
the priority documents have not been submitted in due time or if the filing
number of the application for which the priority is claimed has not been
communicated on official demand within the period laid down, priority
shall be determined according to the date of filing in Austria.
Section 25
(1) Trade marks used for the designation of goods displayed in a domestic
orforeignexhibitionshallenjoypriorityinaccordancewiththeprovisions
of Sections 26 and 27.
(2) The provisions of Sections 26 and 27 shall apply in particular also
to displays in model or merchandise exhibitions.
Section 26
(1) The protection shall be accorded only if the Federal Minister of Economic
Affairs has granted to the exhibition the privilege of priority protection
for trade marks used for the designation of goods displayed there.
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(2) Such privilege shall be applied for by the exhibition management.
The request shall contain all particulars required for the decision on
the desired priority privilege.
(3) The request shall be granted where intergovernmental obligations
require protection to be afforded or where it is justified in view of
the economic importance of the exhibition.
(4) The grant of the privilege of priority protection shall be published
in “Amtsblatt zur Wiener Zeitung” and in “Österreichisches Patentblatt”
at the expense of the exhibition management.
Section 27
(1) The protection shall have the effect that the trade mark enjoys a
priority right as from the date the goods designated with the mark were
brought to the exhibition premises provided the mark is filed with the
Patent Office within three months after the day of closure of the exhibition.
The application may only comprise the displayed goods designated with
the trade mark at the exhibition.
(2) Where identical or similar goods designated by identical or similar
trade marks are brought to the exhibition premises at the same time the
trade mark filed first shall have priority.
(3) The right of priority must be expressly claimed. For that purpose,
the exhibition and the day when the goods marked were brought to the
exhibition premises shall be indicated (declaration of priority). The
provisions of Section 24 par 2 shall apply mutatis mutandis.
(4) The right of priority shall be evidenced by a reproduction of the
trade mark and a certificate of the exhibition management stating the
goods that were displayed with the respective mark and the time they were
brought to the exhibition premises (priority documents).
(5) If the declaration of priority is not submitted in due time or if
the priority documents are not submitted on official demand in due time,
the priority shall be determined according to the date of filing.
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2. Changes in the Register
Section 28
(1) The record of transfer of a trade mark, the entry and cancellation
of licence-rights and liens shall be effected at the written request of
one of the parties concerned and the submission of a document. If the
document is not of an official nature, it shall be required to bear the
duly certified signature of the person alienating his right. The entry
and cancellation of liens shall also be effected at the request of the
courts.
(2) Legal disputes concerning trade mark rights and cancellation
proceedings (Sections 30 to 34 and Section 66), assignment proceedings
(Section 30a) and proceedings for the establishment a posteriori of the
invalidity of a trade mark (Section 69a) shall, on request, be recorded
in the trade mark register (entry relating to disputes).
(3) Furthermore, Section 43 par 3, 4 and 7 and Section 45 par 2 of the
1970 Patents Act, Federal Law Gazette No 259 shall apply mutatis mutandis.
(4) For each request referred to in par 1 a fee equal to the application
fee shall be payable, for a request in accordance with par 2 a fee to
the amount of 23 €.
(5) The entries referred to in par 1 shall be noted, on request, in the
official confirmation of the registration entry (Section 17 par 4).
(6) The transfer of the trade mark shall be published.
3. Cancellation
Section 29
(1) The trade mark shall be cancelled:
1. at the request of the proprietor;
2. where the registration has not been renewed in due time (Section 19);
3. where the right to the mark has lapsed for reasons other than those
referred to under subpars 1 and 2;
4.followingafinaldecisiongrantingapetitionforcancellationsubmitted
to the Nullity Division.
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(2) Cancellation shall be entered in the trade mark register (Section
17) and published.
Section 30
(1) The proprietor of an earlier trade mark being still valid may request
the cancellation of a trade mark provided that either
1. the two trade marks and the goods or services for which the trade marks
are registered are identical, or
2. the two trade marks and the goods and services for which the trade
marks are registered are identical or similar so that there exists a
likelihood of confusion on the part of the public, which includes the
likelihood of association with the earlier trade mark.
(2) The proprietor of an earlier trade mark being still valid and having
a reputation in Austria may also request the cancellation of a trade mark,
if the two trade marks are identical or similar but registered for not
similar goods or services and where the use of the later trade mark without
due cause would take unfair advantage of, or be detrimental to, the
distinctive character or the repute of the reputed trade mark. The
reputation of the earlier trade mark shall be required to have existed
at the latest on the date of filing of the later trade mark or on the
date of priority or seniority claimed for the registration of the later
trade mark, as the case may be.
(3) Petitions in accordance with par 1 or 2 shall be dismissed if the
petitioner has acquiesced, for a period of five successive years, in the
use of a later trade mark while being aware of such use. This shall only
apply to goods and services for which the later trade mark has been used
and only if registration of the later mark was not applied for in bad
faith.
(4) If a petition for cancellation in accordance with par 2 is based on
a earlier Community trade mark, evidence of reputation in the European
Community,insteadofevidenceofreputationinAustria,shallbefurnished.
(5)Thecancellationdecisionshallhaveretroactiveeffecttothebeginning
of the period of protection (Section 19 par 1).
Section 30a
(1) A person having acquired rights to a sign abroad by registration or
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use may request an identical or similar trade mark, filed at a later date
for identical or similar goods or services to be cancelled, if the proprietor
of such mark is or was committed to looking after the business interests
of the petitioner and had the trade mark registered without the latter’s
consent and without proper justification.
(2)Thecancellationdecisionshallhaveretroactiveeffecttothebeginning
of the period of protection (Section 19 par 1).
(3) Instead of the cancellation in accordance with par 1 the petitioner
may request that the trade mark is transferred to him.
Section 31
(1) The cancellation of a trade mark may be requested by a person furnishing
evidence that the unregistered sign used by him for identical or similar
goods or services, already at the date of application of the contested
trade mark being identical or similar to his unregistered sign, had been
considered within the trade circles concerned as designation of his
undertaking’s goods or services, unless the trade mark has been used by
its proprietor unregistered for at least as long as it has been used by
the undertaking of the petitioner.
(2) The petition shall be dismissed if the petitioner has acquiesced,
for a period of five successive years, in the use of the registered trade
mark while being aware of such use. This shall only apply to goods and
services for which the registered trade mark has been used and only if
the application for the registered trade mark was not filed in bad faith.
(3)Thecancellationdecisionshallhaveretroactiveeffecttothebeginning
of the period of protection (Section 19 par 1).
Section 32
(1) An entrepreneur may request the cancellation of a trade mark if his
name, his firm name or the special designation of his undertaking or a
designation similar to these designations has been registered without
his consent as a trade mark or as component of a trade mark (Section 12),
and if the use of the trade mark could entail the likelihood of confusion
in trade with one of the signs distinctive of the petitioner’s undertaking
mentioned above.
(2) The petition shall be dismissed if the petitioner has acquiesced,
20
for a period of five successive years, in the use of the registered trade
mark while being aware of such use. This shall only apply to goods and
services for which the registered trade mark has been used and only if
the application for the registered trade mark was not filed in bad faith.
(3)Thecancellationdecisionshallhaveretroactiveeffecttothebeginning
of the period of protection (Section 19 par 1).
Section 33
(1) On any of the grounds for cancellation ex officio anyone shall be
entitled to request the cancellation of a trade mark.
(2) If a trade mark is cancelled because it ought not to have been registered,
the cancellation decision shall have retroactive effect to the beginning
of the period of protection (Section 19 par 1).
Section 33a
(1) Anyone may request the cancellation of a trade mark registered in
Austria or enjoying protection in Austria in accordance with Section 2
par 2 for at least five years, if this trade mark was not genuinely used
(Section 10a) for the designation of goods or services in respect of which
it is registered within a period of five years prior to the day of submission
of the petition in Austria, either by the proprietor of the trade mark
himself or, with his consent, by any third party, unless the proprietor
of the trade mark can justify the non-use.
(2) Where trade marks have not been used because of legal restrictions
in trade with the goods or services for which they are registered, they
shall be exempt from cancellation in accordance with par 1 only if interests
warranting protection of the trade mark in Austria can be recognised because
of genuine use of the sign abroad or other circumstances worthy of
consideration.
(3) The proprietor of the trade mark may not, however, cite use of the
trade mark which had been started only after
1. the proprietor of the trade mark or a licensee had cited the right
to the mark vis-à-vis the person submitting the petition, or
2. the person submitting the petition had drawn the attention of the
proprietor of the trade mark or of a licensee to the fact of non-use,
21
if the petition for cancellation was submitted within three months after
one of the actions referred to under subpar 1 or 2 firstly has occurred.
(4) Use of the trade mark shall be equivalent to the use of the trade
mark in a form differing only in elements which do not alter the distinctive
character of the mark in the form in which it was registered.
(5) Evidence of use (par 1) shall be furnished by the proprietor of the
trade mark.
(6) The cancellation decision shall have retroactive effect for five years
as from the date the petition is filed, but at most to the end of the
fifth year of the protection period.
Section 33b
(1) Anyone may request the cancellation of a trade mark which in consequence
of acts or inactivity of its proprietor subsequent to its registration
has become the common name in the trade for a product or service in respect
of which it is registered.
(2) The cancellation decision shall have retroactive effect to the date
for which the accomplished development of the trade mark to a sign in
general use (generic term) has been proved.
Section 33c
(1) Anyone may request the cancellation of a trade mark which in consequence
of the use made of it by its proprietor or with his consent in respect
of the goods or services for which it is registered is liable to mislead
the public, particularly as to the nature, quality or geographical origin
of those goods or services.
(2) The cancellation decision shall have retroactive effect to the date
for which deceptive use of the trade mark has been proved.
Section 34
(1) Anyone may request the cancellation of a trade mark where the applicant
was acting in bad faith when he filed the application for the trade mark.
(2)Thecancellationdecisionshallhaveretroactiveeffecttothebeginning
of the period of protection (Section 19 par 1).
22
4. Authorities and procedures
Section 35
(1) In the Patent Office the taking of decisions and other activities
in all matters of trade mark protection and of the protection of geographical
indications and designations of origin in accordance with Chapter VII,
shall be the responsibility of the competent member, according to the
allocationofactivities,oftheLegalDivisionentrustedwiththesematters,
unless where such matters fall within the competence of the President,
the Appeal Division or the Nullity Division.
(2) Sections 58 to 61 of the 1970 Patents Act, Federal Law Gazette No
259, shall apply mutatis mutandis.
(3) By order of the President, employees who are not members of the Patent
Office may be empowered to deal with matters – whose nature shall be clearly
defined – of the Legal Division insofar as this is expedient in view of
thesimplicityofthemattersinquestionandtotheextentthattheemployees
so empowered are qualified to deal properly with such matters. Such
employees may not be authorised to take decisions as to the protectability
of trade marks or to the admissibility of lists of goods and services.
They shall comply with the instructions of the member of the Legal Division,
competent according to the allocation of activities. Such member may at
any time reserve matters or take charge of them.
(4) A reasoned representation against the decision of an employee empowered
in accordance with par 3, may be made to the competent member of the Legal
Division within one month. Where such representation is made in due time,
the decision shall cease to be effective.
Section 36
The decisions of the Legal Division shall be subject to appeal. There
shall be no ordinary legal remedy against the decisions of the Appeal
Division.
Section 37
The Nullity Division shall decide in respect of petitions for the
cancellation of a registered trade mark (Sections 30 to 34 and Section
66),requestsfortransfer(Section30a)andpetitionsfortheestablishment
a posteriori of invalidity of a trade mark (Section 69a).
23
Section 38
(1) The Appeal Division and the Nullity Division shall pass decisions
by a panel of three members, one of whom shall be in the chair. The chairperson
and one other member shall be legally qualified.
(2) Preliminary decrees of the rapporteur and interim decisions shall
not be subject to separate appeal, but their review may be requested at
the respective division.
Section 39
(1) The final decisions of the Nullity Division shall be appealable to
the Supreme Patent and Trade Mark Chamber as highest instance. Section
74 of the 1970 Patents Act shall apply.
(2) The Supreme Patent and Trade Mark Chamber shall deliberate and take
decisions under the chairmanship of its president or, in his absence,
of the vice-president in boards consisting of five members, representing
the chairperson, three legally qualified members (Section 74 par 3 of
the 1970 Patents Act) and one technically qualified member (Section 74
par4ofthe1970PatentsAct).Theboardsshallbecomposedbythechairperson
in such a way as to include one legally qualified civil servant of Group
A and at least one judge. The legally qualified civil servant shall be
the rapporteur, the chairperson may, if necessary, appoint further members
of the board as joint rapporteurs.
(3) The provisions of Section 75 par 2 of the 1970 Patents Act shall apply.
Section 40
(1) For appeals a fee of 65 € shall be payable in respect of every trade
mark filed or registered, to which the appeal relates. A fee of 210 €
shall be payable for petitions to be dealt with by the Nullity Division
(Section 37), a fee of 319 € for an appeal (Section 39) in respect of
each trade mark to which the petition (appeal) refers.
(2)Thefeeforanappeal(par1)shallbereimbursediftheappealessentially
meets with success and the proceedings have been conducted without an
adverse party. Half of the fee provided for a petition to be dealt with
by the Nullity Division or for an appeal shall be refunded if that petition
or appeal is rejected or the proceedings are terminated without any hearing.
24
Section 41
(1) Members of the Patent Office and of the Supreme Patent and Trade Mark
Chamber shall be excluded from any participation under the conditions
specified in Section 76 par 1 of the 1970 Patents Act.
(2) Members of the Patent Office may not take part in the work of the
Appeal Division when they have participated in the examination for
compliance with the law (Section 20) or similarity (Sections 21 and 22)
in respect of the mark concerned by the appeal.
(3) Members of the Patent Office may not take part in the work of the
Nullity Division and members of the Supreme Patent and Trade Mark Chamber
may not participate in the work of the Chamber:
1. in proceedings for the cancellation of a trade mark under Section 30
or for the establishment a posteriori of the invalidity of a trade mark
under Section 69a in combination with Section 30, if they have taken part
in the similarity examination (Sections 21 and 22 ) of the mark concerned;
2. in proceedings for the cancellation of a trademark under Section 33
or for the establishment a posteriori of the invalidity of a trade mark
under Section 69a in combination with Section 33, if they have taken part
in the decision as to the admissibility of the registration.
(4) Section 76 pars 4 and 5 of the 1970 Patents Act shall apply mutatis
mutandis.
Section 42
(1)Inallotherrespects,unlessotherwiseprovidedforhereunder,Sections
52 to 56, 57b, 58a, 58b, 64, 66 to 73, 79, 82-86, 112 to 126, 127 pars
1, 2, 4 and 5, Section 128 first sentence, Sections 129 to 133 par 2,
Sections 134, 135, 137 to 145, 165, 169 and 172a par 1 of the 1970 Patents
Act, Federal Law Gazette No 259, shall be applied to the procedure mutatis
mutandis; the procedural fee provided for in Section 132 par 1 lit. b
of the 1970 Patents Act shall correspond to the application fee (Section
18 par 1).
(2) The publications provided for in Section 17 par 5, in Section 28 par
6andinSection29par2shallbemadeintheÖsterreichischerMarkenanzeiger
(Trade Mark Bulletin). Any authorisation of a reinstatement shall be
announced in the Österreichischer Markenanzeiger if the effect thereof
is to reinstate the right to the mark.
25
(3) If the proprietor of a contested trade mark does not gainsay in writing
within the period prescribed, the Nullity Division shall, in accordance
with the petition, without any further proceedings order the entire or
partial cancellation or transfer of the trade mark or establish a posteriori
the entire or partial invalidity of the trade mark. Where both, the
cancellation and the transfer of a trade mark are requested in the same
procedure, the Nullity Division shall order the transfer, unless the
petition reads to the contrary.
Sections 43-49 (repealed; Federal Law Gazette 350/1977)
Section 50
(1) Those involved in proceedings shall be entitled to inspection of
documents referring to the proceedings and to making copies thereof. Other
persons shall have that right with the consent of those involved or on
furnishing prima facie evidence of a legal interest.
(2) Where documents refer to a trade mark still in force, anyone may inspect
or copy them or may have copies made of them.
(3) Copies shall be certified by the Patent Office upon request.
(4) The wording or the representation of the trade mark filed and the
list of goods and services as it stands at the time of application shall
be communicated to anyone so requesting. Information and official
certificates as to the date of an application, the name of the applicant
and of his representative - if any -, the serial number of the application,
the priority claimed, the serial number of the application on which priority
is based, whether the application is still pending and if and to whom
the right to the application was assigned, shall be supplied to anyone
so requesting.
(5) Records of deliberations and parts of files referring to internal
administrative transactions only shall not be accessible to the public.
Furthermore also parts of files not requiring a laying open to public
inspection for information purposes may be excluded on request if they
refer to a trade or industrial secret or if there is another good reason
therefore.
26
Chapter III Civil rights claims in respect of infringements of trade mark
rights
Section 51
Any person who suffers an infringement of one of the rights belonging
to him under a trade mark or who has to worry that such an infringement
might take place, may sue for an injunction.
Section 52
(1) The infringer of a trade mark shall be obliged to eliminate the
circumstances constituting the violation of the law.
(2) The infringed party may, in particular, demand that at the expense
of the infringer the objects infringing the trade mark and possibly existing
stocks of imitated trade marks (infringing objects) be destroyed and the
implements, machinery and other means having served solely or mainly for
the manufacture of the infringing objects (infringing means) be rendered
unusable for the intended purpose, insofar the rights in rem of third
parties are not thereby infringed.
(3) Where the infringing objects or infringing means specified in par
2 contain parts of which the continued existence and use by the defendant
do not infringe the right of exclusion of the plaintiff, the court shall
specify those parts in the judgment ordering them to be destroyed or rendered
unusable. At the execution of the judgment these parts shall, as far as
possible, be exempt from being destroyed or rendered unusable if the obligor
pays the costs incurred in advance.
(4) If it becomes apparent in the course of execution that rendering
infringing means unusable would entail higher costs than their destruction
and if these costs are not paid by the obligor in advance, the court of
execution shall order the destruction of these infringing means after
having heard the parties.
(5) If the law contending circumstances can be eliminated in another way
than that specified in par 2, which involves no or less destruction of
assets the injured party may request only measures of this kind. The mere
removal of the trade mark from the good shall be sufficient only if another
procedure would cause undue hardship for the infringer.
(6) Instead of the destruction of infringing objects or the rendering
27
infringing means unusable the injured party may demand that the infringing
objects and means be handed over to the injured party by their owner in
exchange of an adequate compensation not exceeding the production costs.
Section 53
(1) The party infringed by unauthorised use of a trade mark shall be entitled
to an appropriate compensation by the infringer.
(2) In the case of a culpable infringement of a trade mark the infringed
may, instead of an appropriate compensation, demand
1. damages including the missed profit or
2. the handing over of the profit made by the infringer through the trade
mark infringement.
(3) Irrespective of proof of a damage the infringed may demand twice the
compensation due to him in accordance with par 1 if the infringement of
the trade mark results from gross negligence or intention.
(4) The infringed shall also have a claim of appropriate compensation
for disadvantages not consisting of a damage in property suffered by the
culpable infringement of the trade mark insofar as this is justified by
the special circumstances of the case.
(5) Where the same pecuniary claim is raised against several persons,
they shall be jointly and severally liable.
Section 54
(1) The proprietor of an enterprise may be sued for an injunction (Section
51) if an infringement of a trade mark has been, or is likely to be, committed
by an employee or an agent in the course of the activities of his enterprise.
He shall be obliged for the elimination (Section 52) if he is the owner
of the objects or means of infringement.
(2) If the infringement of a trade mark constituting a claim for appropriate
compensation is committed in the course of the activities of an enterprise
by an employee or an agent, the obligation to pay compensation (Section
53par1)andtodrawupaccounts(Section55)shallaffectonlytheproprietor
of the enterprise unless the latter neither knew of the infringement of
the trade mark nor obtained any profit from it.
28
(3) If the infringement of a trade mark is committed in the course of
the activities of an enterprise by an employee or an agent culpable, the
proprietor shall be liable in accordance with Section 53, pars 2 to 4,
without prejudice to the liability of these persons, provided that he
knew or should have known about the infringement of the trade mark.
Section 55
In all other respects Section 119 par 2 (exclusion of the public), Section
149 (publication of the judgement), Section 151 (accounting) and Section
154 (prescription) of the 1970 Patents Act, Federal Law Gazette No 259,
shall apply mutatis mutandis.
Section 56
In order to safeguard the claims for injunction or elimination provided
for in this chapter, interim injunctions may be issued also where the
preconditions stipulated in Section 381 of the Order of Execution (EO)
are not met. However, an interim injunction, based on a trade mark registered
for more than five years, may only be issued, if prima facie evidence
is furnished that there is no justification for a cancellation in accordance
with Section 33a.
Section 57
If it transpires in the course of court proceedings that the decision
depends on the preliminary question of whether the trade mark right in
respect of which the infringement is claimed, is valid in accordance with
the provisions of this law, and if the court has suspended proceedings
until a legally effective decision has been passed on the preliminary
question by the Patent Office at which the preliminary question had already
been brought to trial prior to the beginning of or during the court
proceedings, the judgment shall be based on that decision.
Section 58
(1) Where the proprietor of an earlier registered trade mark has acquiesced,
for a period of five successive years, in the use of a later sign in Austria
while being aware of such use, he shall no longer be entitled on the basis
of the previous right to oppose the use in respect of the goods or services
for which the later sign was used, unless the user of the later sign commenced
the use in bad faith or, if the later sign refers to a registered trade
mark, its application was made in bad faith.
(2) In the case of par 1 the proprietor of the later trade mark or the
29
user of the later sign shall not be entitled to oppose the use of the
previous registered trade mark although the latter may no longer be invoked
against him.
Section 59
(1) Where a commercial announcement or communication in respect of which
an injunction in the meaning of Section 51 is at issue, appears in a
publication not subject to the disposition of the obligor, the competent
court for the authorisation of the execution may, upon request of the
acting creditor, issue an order (Section 355 EO) to the proprietor of
the enterprise dealing with the publishing or the distribution of the
publication to discontinue further publications of the announcement or
communication in numbers, volumes or editions of the publications appearing
after the delivery of the order or, if the publication contains the
announcement or communication only, to discontinue the further
distribution of the latter.
(2) This measure may also be adopted as an interim order in the meaning
of Section 382 EO under the terms of the rules of the Order of Execution
upon request of an endangered party. Section 56, first sentence, shall
be applied.
(3) As regards the claim for damages of the applicant on the grounds of
infringement of the order (Section 355 EO) Section 53 par 2 subpar 1 and
par 4 shall be applied mutatis mutandis.
30
Chapter IV Punishable Infringements of Signs
Section 60
(1) Whoever infringes a trade mark in the trade shall be punished by the
court with a fine of up to 360 daily rates. Whoever commits the deed for
gain shall be punished with imprisonment of up to two years.
(2) Equally punished shall be whoever uses, without authorisation, a name,
a firm name or the special designation of an undertaking or a sign similar
to these designations for the identification of goods or services in
accordance with Section 10a entailing the likelihood of confusion in the
trade.
(3) The proprietor or manager of an enterprise shall be punished if he
fails to prevent an infringement in accordance with pars 1 or 2, committed
by an employee or an agent in the course of the activities of the enterprise.
(4) Where the proprietor of the enterprise in accordance with par 3 is
a company, a cooperative, an association or an other legal subject not
being a physical person, par 3 shall be applicable to the organs guilty
of failure to act. As regards the fine imposed, the proprietor of the
enterprise shall be jointly and severally liable with the person found
guilty.
(5) The penal provisions referred to in par 1 and 2 shall not be applicable
to employees or agents having acted upon instruction of their employer
or the ordering party if it would be unreasonable to expect them to refuse
the execution of such action because of their economic dependency.
Section 60a
(1) The offences referred to in Section 60 shall be pursued only upon
request of the infringed.
(2) The criminal proceedings shall be incumbent on the judge sitting alone
at the court of the first instance.
(3) As regards the assertion of claims under Section 53 the provisions
of the Title XXI of the Code of Criminal Procedure,1975, Federal Law Gazette
No 631, shall apply. Both parties shall be entitled to appeal against
the decision on the claims for compensation.
31
Section 60b
In respect of criminal proceedings concerning the infringement of trade
marks and signs Section 52 of this Federal Act (elimination) and Section
119 par 2 (exclusion of the public) and Section 149 (publication of
judgement) of the 1970 Patents Act, Federal Law Gazette No 259, shall
apply mutatis mutandis. In respect of the criminal proceedings concerning
the infringement of trade marks Section 57 shall also apply.
Section 60c
Whoever acts in contradiction to the provisions of an ordinance issued
pursuant to Section 9 shall be punished by the district administration
authority with a fine up to € 72 or with arrest of up to one month. In
case of aggravating circumstances both penalties may be imposed
simultaneously. In case of a conviction the forfeiture of the goods shall
always be adjudged.
Section 61
(1) Anyone acting as a representative vis-à-vis the Patent Office or the
Supreme Patent and Trade Mark Chamber shall have a domestic residence;
however, the respective professional regulations shall apply to attorneys
at law, patent attorneys and notaries. The representative shall prove
his authorisation by furnishing the original written power of attorney
or a duly certified copy thereof. If more than one person are vested with
the power of attorney each of them shall be entitled to act alone as a
representative.
(2) If an attorney at law, patent attorney or notary takes action, reference
to the authorisation granted to him shall replace its documentary evidence.
(3) If a representative takes action without a power of attorney or in
the case of par 2 without referring to the authorisation granted to him,
the procedural action taken by him shall be effective only on condition
that he furnishes a proper power of attorney or refers to the authorisation
granted to him within a reasonably fixed time limit.
(4) Anyone having neither domestic residence nor domestic place of business
may assert rights on the basis of this Federal Act vis-à-vis the Patent
Office only if he has a representative meeting the requirements of par
1. He may assert such rights vis-à-vis the Appeal Division and the Nullity
Division and the Supreme Patent and Trade Mark Chamber only if he is
represented by an attorney at law, a patent attorney or a notary. If the
32
residence or place of business is situated in the EEA the appointment
of a representative for service having a domestic residence shall suffice
for asserting rights on the basis of this Federal Act. Neither the
appointment of a representative nor of a representative for service shall
be required for the use of the customer and information services of the
Patent Office.
(5) An authorisation granted to an attorney at law, a patent attorney
or a notary for the purpose of representation at the Patent Office shall
entitle the latter, in virtue of the law, to assert all rights on the
basis of this Federal Act vis-à-vis the Patent Office and the Supreme
Patent and Trade Mark Chamber, in particular to file trade mark applications,
withdraw applications, waive rights to trade marks, file and withdraw
petitionsandappealsfallingwithinthecompetenceoftheNullityDivision,
furthermore to conclude compromises, accept deliveries of all kinds as
well as official fees and the procedural and representation costs to be
paid by the adverse party, and to appoint a substitute.
(6) An authorisation in accordance with par 5 may be restricted to a certain
protective right and to the representation in certain proceedings only.
However, it shall not be revoked by the death of the grantor nor by a
change in his capacity to take legal action.
(7) If a representative other than an attorney at law, a patent attorney
or a notary also is meant to be entitled to waive a trade mark wholly
or in part, he shall have to be explicitly authorised therefore.
Section 61a
Supplementary to Section 83c JN the place where
1. the representative has his domestic residence or domestic place of
business, or
2. the representative for service has his domestic residence, or,
3. in lack of a representative with a domestic residence or a domestic
place of business or a representative for service with domestic residence,
the place where the Patent Office is situated
shall be considered for all matters referring to the trade mark as the
residence or place of business of a proprietor of a trade mark who has
neither a domestic residence nor a domestic place of business.
33
Chapter VI Collective marks
Section 62
(1) Associations with legal personality may apply for the registration
of trade marks intended for the purpose of identifying goods or services
of their members and capable of distinguishing these goods or services
from those of other undertakings (collective marks).
(2) Legal persons governed by public law shall be considered to be equal
to the associations referred to in par 1.
(3) The provisions of this Federal Act shall apply accordingly to collective
marks unless otherwise provided for in par 4 and in Sections 63 to 67.
In particular, the legal effects provided for in Section 4 par 2 and Section
31 of this Federal Act and in Section 9 par 3 of the 1984 Federal Act
Against Unfair Competition, Federal Law Gazette No 448 in favour of
unregistered signs shall apply where the sign is recognized in the trade
concerned as distinctive of the goods or services of the members of an
association.
(4) In derogation from par 1 and Section 4 par 1 subpar 4 collective marks
may consist exclusively of signs or indications which may serve in trade
to designate the geographical origin of the goods or services. Such a
trade mark shall not entitle its proprietor or any other association member,
authorised to file a claim according to the regulations on their own,
to prohibit a third party from using these signs or indications in the
course of trade, provided that such use corresponds to the honest practices
in industrial and commercial matters; in particular, such a trade mark
may not be invoked against a third party entitled to use a geographical
name.
Section 63
(1) The application of a collective mark shall be accompanied by regulations
rendering information on the name, place of business, purpose and
representation of the association, on the circle of persons authorised
to use the collective mark, the conditions governing such use, the
withdrawal of the right of use in case of misuse of the collective mark,
and on the rights and obligations of the members where the collective
mark is infringed. With collective marks in accordance with Section 62
par 4 the regulations shall, furthermore, authorize any person whose goods
or services originate in the geographical area concerned and correspond
34
to the conditions of use of the collective mark as contained in the
regulations, to become a member of the association. Subsequent amendments
of the regulations shall be communicated to the Patent Office. They shall
be binding on third parties only as from the day following such communication.
The regulations and any amendments thereto shall be submitted in duplicate.
The regulations shall be open to public inspection.
(2) The application fee for collective marks shall be four times the
application fee provided for in Section 18 par 1, the fee for the period
of protection and the renewal fee shall be ten times the fee for the period
of protection provided for in Section 18 par 2.
Section 64
When registering collective marks the Patent Office shall enter the
particulars prescribed in Section 17 par 1 in the Trade mark Register
and in the certificate to be issued to the party in question, with the
following supplements and modifications:
1. under the registration number the term “collective mark”;
2. a reference to the regulations and its date.
Section 65
(1) Collective marks may only be transferred to associations in the meaning
of Section 62 pars 1 or 2. The request for a transfer shall be accompanied
by the regulations of the new proprietor. Section 63 par 1 shall be applied
mutatis mutandis.
(2) The transfer fee for collective marks shall be four times the application
fee provided for in Section 18 par 1.
Section 66
Notwithstanding the provisions otherwise in force in respect of the
cancellation of a trade mark (Section 62 par 3) a collective mark shall
be cancelled
1. where an association in the meaning of Section 62 pars 1 or 2 no longer
exists as proprietor of the collective mark;
2. where the association permits or tolerates that the collective mark
is used in a way contrary to the general purposes of the association or
its regulations. In particular, use of the collective mark which is likely
to mislead the trade shall be considered as misuse.
35
Section 67
The claim of the association to compensation for unauthorized use of the
collective mark in accordance with current provisions shall also extend
to any loss sustained by a member.
36
Chapter VII Geographical indications and designations of origin in
accordance with Regulation (EEC) No 2081/92 of July 14, 1992 on the
Protection of Geographical Indications and Designations of Origin for
Agricultural Products and Foodstuffs, OJ. No L 208, page 1, as amended
by Regulation (EC) No 1068/97 of July 13, 1997 OJ. No L 156, page 10
Section 68
(1) Applications for registration of a geographical indication or
designation of origin in the Register kept by the Commission of the European
Communities of protected designations of origin and protected geographical
indications and enclosures thereto shall be filed in triplicate with the
Patent Office.
(2) For the application a fee to the amount of 581 € shall be payable.
(3) The form and content of the application may be determined in more
detail by an ordinance of the President of the Patent Office. When issuing
such an ordinance consideration shall be given to the utmost usefulness
and simplicity as well as to the requirements in respect of the publication
of an application.
(4) If an application does not meet the specified requirements, the
applicant shall be requested to remedy the deficiencies within a prescribed
period to be extendable upon request. Not amended applications shall be
rejected by decision.
(5) Half of the fee stipulated in par 2 shall be refunded if the application
is rejected in accordance with par 4 or is withdrawn prior to having been
forwarded to the Commission of the European Communities.
(6) Unless otherwise provided for in this Chapter the other provisions
of this Federal Act shall be applied to the procedures in accordance with
this Chapter mutatis mutandis.
Section 68a
(1) If it appears from the examination that the application meets the
requirements of the Community Law regarding the Community-wide protection
of geographical indications or designations or origin, the name and address
of the applicant, the geographical indication or designation of origin,
the type of the agricultural product or foodstuff to be designated with,
in the case of applications in accordance with Section 68c the designation
37
of the element of the specification covered by the amendment, as well
as information on the possibility of delivering an opinion in accordance
with par 2 shall be published in the Patent Gazette. Failing this, the
application shall be dismissed by decision.
(2) Within a period of three months from the day of publication anyone
may file a written opinion on the application with the Patent Office,
to be included into the official examination procedure. By doing so the
intervening person shall neither become a party nor be entitled to
compensation of costs. The intervening person shall not be informed on
the result of the examination procedure, either. Opinions lodged out of
time shall not be taken into consideration.
(3) If no opinions are received or if the examination carried out on the
basis of the opinions received reveals that the application meets the
requirements of the Community Law regarding the Community-wide protection
of geographical indications and designations of origin, the applicant
shall be informed accordingly and the application forwarded to the
Commission of the European Communities with all documents of relevance
for the decision. Failing this, the application shall be dismissed by
decision.
Section 68b
(1) Objections to the intended registration of a geographical indication
or designation of origin in accordance with Art 7 par 3 of Regulation
(EEC) No 2081/92 shall be raised with the Patent Office within three months
of the date of the relevant publication in the Official Journal of the
European Communities in accordance with Art 6 par 2 of this Regulation
and the grounds for the objection shall be stated within this time limit.
The substantiated objection and all enclosures if any shall have to be
submitted to the Patent Office in triplicate at the latest on the last
day of the period.
(2) The circumstances explaining the reasonable interest of the objector
shall be indicated in the objection.
(3) Objections lodged out of time or those being not substantiated in
good time or objections not containing statements in accordance with par
2, shall be deemed not to have been raised. This shall be communicated
informally to the objector. This communication or any absence thereof
shall have no bearing on the commencement of the legal effect.
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(4) A reinstatement into the former status shall not be granted where
the time limit stipulated for the activities referred to in pars 1 and
2 has not been observed.
(5) The Patent Office shall be the competent authority for procedures
in accordance with Art 7 par 5 of Regulation (EEC) No 2081/92.
Section 68c
Applications for amendments of the specification shall be filed with the
Patent Office. Section 68 par 3, 4 and 6 and Sections 68a and 68b shall
be applied mutatis mutandis.
Section 68d
In procedures in accordance with this Chapter the Patent Office may obtain
the opinion of, in particular, federal ministries, regional authorities
as well as associations, organisations and institutions of trade and
industry.
Section 68e
Where a legitimate interest can be demonstrated the Patent Office shall
grant authorisation to consult the file and to make copies in accordance
with Sections 68 to 68c. Section 50 pars 2 to 5 shall be applied mutatis
mutandis.
Section 68f
(1) Whoever performs acts in trade which infringe Art 8 or 13 of Regulation
(EEC) No 2081/92 may be sued by parties entitled to the use of the protected
geographical indications or designations of origin or by associations
for the promotion of economic interests of entrepreneurs, in as far as
these associations represent interests affected by the acts performed,
by the Federal Chamber of Labour (Bundesarbeitskammer), the Austrian
Chamber for Trade and Industry (Bundeskammer der gewerblichen Wirtschaft),
the Standing Conference of the Presidents of the Agricultural Chambers
in Austria (Präsidentenkonferenz der Landwirtschaftskammern Österreichs)
and the Austrian Trade Union (Österreichischer Gewerkschaftsbund), for
an injunction and, as far as the person concerned is vested with the
respective right of disposal, for the elimination of the conditions
infringing the relevant provisions. Section 52 pars 2 to 6 shall be applied
mutatis mutandis.
39
(2) If an act as referred to in par 1 is performed culpably the person
entitled to the use of the protected geographical indication or designation
of origin shall be entitled to pecuniary claims in application of Section
53 pars 2, 4 and 5 mutatis mutandis.
(3) The proprietor of an enterprise may, in accordance with par 1, be
sued for an injunction if one of the acts referred to in par 1 has been
performed or is likely to be performed by an employee or an agent in the
course of the activities of his enterprise. If he is the owner of the
objects or means of infringement he shall be obliged for their elimination
in accordance with par 1.
(4) If an employee or agent in the course of the activities of an enterprise
culpably performed an act as referred to in par 1, the proprietor of the
enterprise may be sued for damages in accordance with Section 53 pars
2and4irrespectiveofpossibleliabilitiesoftheabove-mentionedpersons,
and for accounting, provided that he knew or should have known about the
infringement of the law.
Section 68g
(1) In order to safeguard the claims for injunction or elimination provided
for in this Chapter, interim injunctions may be issued also where the
preconditions stipulated in Section 381 of the Order of Execution (EO)
are not met.
(2) In all other matters Section 119 par 2 (exclusion of the public),
Section 149 (publication of the judgement), Section 151 (accounting) and
Section 154 (prescription) of the 1970 Patents Act, Federal Law Gazette
No 259 shall apply, mutatis mutandis, to the civil rights infringement
procedures in accordance with this Chapter.
Section 68h
(1) Whoever, in trade, without justification on the basis of an accepted
exceptional Community Law provision for the use of a protected geographical
indication or designation of origin
1. uses such an indication or designation for identifying other products
than those referred to in the respective specification but comparable
to the latter, or
2. misuses or imitates such an indication or designation or evokes the
protected name, even if the true origin of the product is indicated or
40
if the protected name is translated or accompanied by an expression such
as “style”, “type”, “method”, “as produced in”, “imitation” or similar,
or
3. uses such an indication or designation in a way that exploits the
reputation of the protected name, or
4. uses the above in any other misleading way in connection with the
distribution of goods or services or for the identification of his
undertaking,
shall be punished by the court with a fine of up to 360 daily rates. Whoever
commits the deed for gain shall be punished with imprisonment of up to
two years.
(2) Whoever offers goods as designated in par 1 for sale, puts them on
the market, or imports, exports or possesses the latter for these purposes,
shall be punished in the same way.
(3) The proprietor or manager of an enterprise shall be punished if he
fails to prevent an infringement in accordance with pars 1 or 2 committed
by an employee or agent in the course of the activities of the enterprise.
(4) Where the proprietor of the enterprise in accordance with par 3 is
a company, a cooperative, an association or an other legal subject not
being a physical person, par 3 shall be applicable to the organs guilty
of failure to act. As regards the fine imposed, the proprietor of the
enterprise shall be jointly and severally liable with the person found
guilty.
(5) The penal provisions referred to in pars 1 and 2 shall not be applicable
to employees or agents having acted upon instruction of their employer
or the ordering party if it would be unreasonable to expect them to refuse
the execution of such action because of their economic dependency.
Section 68i
(1) The offences referred to in Section 68h shall be prosecuted only upon
request of a person entitled to the use of the protected geographical
indication or designation of origin.
(2) The assertion of claims under Section 68f par 2 shall be subject to
the provisions of Title XXI of the Code of Criminal Procedure, 1975, Federal
Law Gazette No 631. Both parties shall be entitled to appeal against the
41
decision on the claims for compensation.
(3) In criminal proceedings the provisions on the elimination in accordance
with Section 68f par 1 of this Federal Act and Section 119 par 2 (exclusion
of the public) and Section 149 (publication of the judgement) of the 1970
Patents Act, Federal Law Gazette No 259, shall apply mutatis mutandis.
Section 68j
(1) The commercial courts shall be the competent authorities for actions
and interim injunctions in accordance with this Chapter irrespective of
the value of the matter in dispute.
(2) Jurisdiction in criminal matters in accordance with this Chapter shall
be incumbent on the judge sitting alone at the court of the first instance.
42
Chapter VIII Community trade marks
Section 69
Applications for Community trade marks may be filed at the Patent Office
in accordance with Art 25 par 1b of Regulation (EC) No 40/94 on Community
trade marks, OJ No L 11, January 1,1994, page 1, as amended by the Regulation
(EC) No 3288/94 for the implementation of agreements concluded in the
framework of the Uruguay-Round, OJ No L 349, December 31,1994, page 83.
The Patent Office shall endorse the application with the date of receipt
of the latter and shall forward the documents without any verification
within the time limit of two weeks as provided for in Art 25 par 2 of
this Regulation to the Office for Harmonization in the Internal Market
in Alicante (trade marks and designs).
Section 69a
(1) Where the seniority of a trade mark either entered into the Trade
mark Register of the Patent Office or enjoying protection in Austria on
the basis of an international registration was claimed for a Community
trade mark application or a Community trade mark in accordance with Art
34 or 35 of Regulation (EC) No 40/94, and where that trade mark forming
the basis of the seniority-claim was taken off the register due to
renunciation on the part of its proprietor or in the absence of a renewal
in due time, the invalidity of the trade mark may be established a posteriori
on the grounds for cancellation provided for in Sections 30 to 34 and
Section 66.
(2) Petitions in accordance with par 1 shall be addressed to the registered
proprietor of the Community trade mark.
(3) Where the establishment a posteriori of the invalidity of a trade
mark in accordance with par 1 is requested in connection with Section
33a, the relevant date shall not be the date the petition was filed as
provided for in Section 33a pars 1 and 6, but the date when the taking
off the register of the trade mark forming the basis of the seniority
claim, due to renunciation on the part of its proprietor or in the absence
of a renewal in due time, became effective.
Section 69b
(1) The Patent Office shall decide on the admissibility (Art 108 par 2
of Regulation (EC) No 40/94) of a request for conversion of a Community
trade mark application or Community trade mark transmitted in accordance
43
with Art 109 par 3 of Regulation (EC) No 40/94.
(2) Upon request of the Patent Office the applicant shall, within a period
of two months, extendable upon request
1. pay the application fee and the class fee (Section 18 par 1, Section
63 par 2),
2. submit the required representations of the trade mark, in the case
of sound marks the acoustic presentation of the trade mark on a data carrier
in accordance with Section 16 par 2,
3. submit the translation into German of the request for conversion and
the attached documents if the request for conversion and the attached
documents have not already been submitted in German,
4. indicate an address for service in accordance with Art 110 par 3 lit.
c of Regulation (EC) No 40/94 if he is not represented in accordance with
Section 61 by an authorised representative or has not nominated a
representative for service.
(3) If it appears from the examination that there are objections to the
admissibilityoftheconversion,theapplicantshallberequestedtocomment
on them within a period to be determined by the Patent Office. If upon
submission of a comment in due time or upon expiry of the period the
inadmissibility of the conversion is determined or if the request in
accordance with par 2 was not met, the request for conversion shall be
rejected by decision.
Section 69c
(1) The request shall be dealt with like a national trade mark application
and be examined for compliance with the law (Section 20) with the exception
of the case regulated in par 2.
(2) Where the request for conversion refers to a trade mark that has already
been registered as a Community trade mark, the trade mark shall not be
examined for compliance with the law (Section 20).
Section 69d
(1) The Community trade mark court of first instance in the meaning of
Art 91 par 1 of Regulation (EC) No 40/94 shall be the Commercial Court
of Vienna, irrespective of the value of the matter in dispute. In legal
matters in which a Community trade mark court is the competent authority
for actions the Commercial Court of Vienna shall also have exclusively
44
jurisdiction for interim injunctions.
(2) Jurisdiction in criminal matters in respect of Community trade marks
shall belong to the Vienna Provincial Court for Criminal Matters.
45
Chapter IX Trade marks in accordance with the Protocol Relating to the
Madrid Agreement Concerning the International Registration of Marks
Section 70
(1) A request for conversion of an international registration shall be
designated as such and shall show the number of the international
registration. In addition, within a period of two months, extendable upon
request
1. a certificate of the International Bureau of the World Intellectual
Property Organization, in the original or a certified copy, showing the
trade mark and the goods and services covered by the protection of the
international registration in the territory of the Republic of Austria
at the date of cancellation in the international register, and
2. a translation into German of all documents as far as not drafted in
German,
shall be submitted. If the request does not meet the conditions listed
it shall be rejected by decision.
(2) The request shall be dealt with like a national trade mark application
and examined for compliance with the law (Section 20) with the exception
of the case regulated in par 3.
(3) Where the request refers to an international registration for which
at the date of its cancellation the time limit for the refusal of protection
in accordance with Art 5 par 2 of the Protocol already has elapsed unused,
the trade mark shall not be examined for compliance with the law (Section
20).
46
Chapter X Prohibition of Unauthorized Representation
Section 71
(1) Anyone who in matters relating to the protection of trade marks, without
being authorised to represent parties professionally in Austria in such
matters, for gain
1. prepares written submissions or documents for use before Austrian or
foreign authorities,
2. provides opinions
3. represents parties before Austrian authorities, or
4. offers to perform a service mentioned in subpars 1 to 3,
shall be guilty of unauthorized legal representation and is liable to
a fine not exceeding 4,360 € imposed by the district administrative
authority.
(2) The representation of a legal person by employees of another legal
person having economic connections with the first legal person shall not
be considered as unauthorized representation. Other legal entities, with
the exception of natural persons, shall be equivalent to legal persons.
(3) The special provisions relating to the treatment of unauthorized legal
representation at ordinary courts shall remain unaffected.
47
Chapter XI Special fees
Section 72
(1) Contributions to the costs of printing as well as special fees for
official copies, publications, certificates and attestations as well as
for extracts from the register may be determined by ordinance. In the
determination of any fee which shall not exceed 87 €, account shall be
taken of the labour and material expenditure required for the official
service. In as far as the amount of the fee depends on the number of pages
or sheets, Section 166 par 10 of the 1970 Patents Act, Federal Law Gazette
No 259, as amended, shall apply mutatis mutandis.
(2) Requests for official publications and requests entailing official
publications on the basis of a provision regulating the trade mark right,
if consented, shall be refused if the relevant fees or contributions to
the costs of printing have not been paid.
48
Chapter XII Transitional Provisions
Section 73
The provision of Section 4 par 1 subpar 9 shall be applicable to trade
marks filed in good faith prior to January 1, 1996 neither as regards
the examination for compliance with the law (Section 20) nor in respect
of the cancellation procedure in accordance with Section 33.
Section 74
In respect of claims against the proprietor of a trade mark registered
prior to the entering into effect of the Federal Act Federal Law Gazette
I, No 111/1999 and existing at that date, the time period of five years
stated in Section 32 par 2 shall start with the entering into effect of
this Federal Act.
Section 75
(1) As regards petitions for the cancellation of a trade mark in accordance
with Section 33 in combination with Sections 1, 3, 4, 7, 60 or 66 filed
prior to the entering into effect of the Federal Act Federal Law Gazette
I, No 111/1999, these provisions in the version applicable prior to the
entering into effect of the Federal Act Federal Law Gazette I, No 111/1999
shall continue to be applied.
(2) Where after the entering into effect of the Federal Act referred to
in par 1 a petition for cancellation of a trade mark previously registered
is filed in accordance with Section 33, this petition shall no longer
be based on Section 33 in combination with Sections 1, 3, 4, 7, 60 or
66 in the version applicable prior to the entering into effect of the
Federal Act referred to in par 1, but only on Section 33 in combination
with Sections 4, 7 or 66 in the version applicable after the entering
into effect of the Federal Act as mentioned in par 1.
Section 76
As regards petitions in accordance with Section 33a, Section 33a in the
version applicable prior to the entering into effect of the Federal Act
Federal Law Gazette I, No 111/1999 shall continue to be applied as far
as the evaluation of the use of a trade mark until January 1, 1994 is
concerned.
Section 77
(1) As regards actions entered prior to the entering into effect of the
49
Federal Act Federal Law Gazette I, No 111/1999, the provisions of Chapter
III in the version applicable prior to the entering into effect of the
Federal Act Federal Law Gazette I, No 111/1999 shall continue to be applied.
(2) In respect of claims against the proprietor of a trade mark registered
prior to the entering into effect of the Federal Act Federal Law Gazette
I, No 111/1999 or against the user of a sign, the use of which was commenced
prior to this date, existing at the time of the entering into effect of
the Federal Act Federal Law Gazette I, No 111/1999, the time period of
five years stated in Section 58 shall start with the entering into effect
of this Federal Act. Any prescription already occurred shall remain
unaffected by this provision.
50
CHAPTER XIII Final Provisions
Section 78
The form chosen in this Federal Act for all designations referring to
persons shall equally apply to both sexes.
Section 79
In as far as reference is made in this Federal Act to provisions of other
federal laws, the latter shall be applicable in the currently valid versions,
unless otherwise indicated.
Section 80
The following shall be responsible for the implementation of this Federal
Act:
1. as regards Sections 10, 10a, 10b, 12, 14, 23 and 57 the Federal Minister
of Economic Affairs and the Federal Minister of Justice,
2. as regards Section 6 par 2 the Federal Minister of Economic Affairs
in agreement with the Federal Minister of Foreign Affairs,
3. as regards Sections 13, 51 to 56, 58 to 60b, Section 67 and Sections
68f to 68j the Federal Minister of Justice,
4. as regards Section 72 par 1 the Federal Minister of Economic Affairs
in agreement with the Federal Minister of Finance,
5. as regards all other provisions the Federal Minister of Economic Affairs.
Section 81
(1) Section 18 pars 1, 2 and 4, Section 40 par 1, Sections 42, 61, 69
par 1, Section 70 and the heading of Chapter IX as amended by the Federal
ActFederalLawGazetteNo418/1992shallenterintoforceasofthebeginning
of the fourth month following the promulgation of the Federal Act Federal
Law Gazette No 418/1992.
(2) Section 4 par 1 subpar 2, Sections 9, 10a, 16 par 2, Section 17 par
4, Sections 18, 22 par 3, Sections 26, 28 par 2, Sections 30, 30a, 31
par 3, Sections 32, 33, 33a pars 3 and 6, Sections 33b, 33c, 37, 42, 60
par 1, Section 62 par 3, Sections 70, 71 and 72 par 1 as amended by the
Federal Act Federal Law Gazette No 773/1992 shall enter into force at
the same time as the European Economic Area Agreement.
(3) Section 2 par 3, Section 4 par 1 subpar 9, Section 17 par 2 subpar
1, Section 24 par 1 and Chapter VIII with the exception of Section 69d
51
in the version of the Federal Act Federal Law Gazette I, No 111/1999 shall
become effective retroactively on January 1, 1996.
(4) Section 17 par 2 subpar 2, Section 18 par 4 and Chapter IX in the
version of the Federal Act Federal Law Gazette I, No 111/1999 shall become
effective with the entering into force of the Protocol Relating to the
Madrid Agreement Concerning the International Registration of Marks for
the territory of the Republic of Austria, Federal Law Gazette III, No
32/1999.
(5) Section 6 par 3, Section 18 pars 1, 2 and 4, Section 19 par 2, Section
28 par 4, Section 40 par 1, Sections 60c and 68 par 2, Section 71 par
1 and Section 72 par 1 in the version of the Federal Act Federal Law Gazette
I, No 143/2001 shall become effective on January 1, 2002.
Section 82
Ordinances on the basis of this Federal Act as amended may be enacted
at any day following the promulgation of the Federal Act to be implemented;
they shall not become effective prior to the entering into force of the
provision to be implemented.
52