News

23.01.2019
Changes to Austrian trademarks as of 14 January 2019

The implementation of the requirements of the EU Directive 2015/2436/EU to adjust the national trademark law of the EU-Member States was already a reason for amendments to the Austrian trademark law in the past. Upon entry into force of the amended Austrian trademark law on 14 January 2019, the implementation of the requirements of the EU Directive was finalized.

The amendment of the Austrian trademark law gives rise to changes for trademark applicants and trademark owners. The most important changes are as follows:

– The graphical representability of a trademark is no longer required: The digitalization of everyday life is taken into account by the fact that from now on, trademarks which are represented by signs that are not directly graphical representable, but can be used for the commercial identification of goods and services, can be submitted. This creates the possibility of filing sound trademarks by means of corresponding audio files, and movement trademarks or multimedia trademarks by means of corresponding video files.

– The grounds for opposition against a trademark registration have been extended: Hitherto, only the owner of a confusingly similar older trademark was entitled to file an opposition against a younger trademark. However, as from now on, also the owner of a well-known (not confusingly similar) trademark, a protected designation of origin or a protected geographical indication is entitled to file an opposition against a registered trademark within the given time limits.

 – Tightening of the use requirement: Already in the past, it was possible for a third party to file a request for cancellation of a trademark based on the ground of non-use, if the trademark was not used without a justified reason for a period greater than 5 years. In the case that no request for cancellation was filed by a third party and the use of the trademark in a manner which preserves its rights was commenced, the non-use deficiency was remedied and the trademark could unfold its full scope of protection against third parties once again.

According to the new regulations, this full scope of protection can be lost due to temporary non-use, specifically against third parties that register a younger trademark during the time period in which the older trademark is vulnerable to a cancellation request based on non-use. As a consequence, it is no longer possible to take action against the registration or usage of said younger trademark based on said older trademark right. The new regulations also apply if the third party did not file a request for cancellation against the older trademark in the first place. The scope of protection of the older trademark is therefore temporarily interrupted due to the ongoing non-use after the expiry of the 5-year grace period.

To prevent those “time gaps” within the protection period of an Austrian trademark, we recommend being extra cautious when it comes to the use requirement of your trademark. Due to this new law, a trademark owner could face a situation, e.g. during court proceedings, in which the owner has to proof the serious and genuine use of a trademark during a time period that dates back for more than 5 years. In the light of the above, it is of utmost importance to have a diligent and long term documentation of a trademark’s use.

24.10.2018
Brexit, before and after: EU trade mark and EU design

As of now, the UK plans to leave the EU at the end of March 2019. Until then and in case of a Brexit without a deal, registered EU trade marks and EU designs will – according to the UK Government – automatically be granted an equivalent UK national trade mark and design registration, respectively. However, this is not the case for EU trade mark and EU design applications which will be only registered after the Brexit without deal: the EU trade mark and the EU design will no longer offer protection in the UK, and trade mark and design owners will need a separate UK trade mark or UK design application. In particular, since EU trade mark applications are taking at least four and a half months to register, we recommend that if you are considering filing any EU trade mark application in the near future, filing said application now, in order to benefit from the automatic trade mark registration in the UK.

27.04.2018
No royalties for Naruto’s „Monkey Selfies“

An odd US copyright-law case was closed recently. Background of the case were a series of selfies taken in 2011 by macaque Naruto with the camera of wildlife photographer John David Slater, wherein Mr. Slater claimed copyright ownership of said selfies. In 2015 the American animal rights organisation PETA filed a lawsuit for copyright infringement before the US District Court for the Northern District of California against the camera owner, John David Slater, and sought a decision that would acknowledge that works created by an animal hold a valid copyright, of which the animal, as originator, is the owner. The court dismissed the action, whereupon PETA filed an appeal. The US Court of Appeals for the 9th Circuit confirmed the first-instance court decision and stated that the US Copyright Act does not expressly authorize animals to file copyright infringement suits.

04.04.2018
Change in trademark renewal process

The Austrian National Council passed a resolution on 29 June 2017 which amended the Austrian trademark law. The resolution includes, inter alia, a change in the trademark renewal process.

Every 10 years, one has to renew a trademark by paying a renewal fee. The start of said 10 year term is now set to the application date and no longer to the registration date, as it was the rule in Austria prior to the recent amendment of the trademark law. By this amendment, the Austrian trademark law is now in accordance with the EU Trade Mark Directive 2015.

The new renewal calculation model is also applies for all existing trademarks, which will result in a onetime reduction of the 10 year term. If a trademark was registered prior to 1 September 2018, the current 10 year term remains unchanged. However, the following term will be reduced, since the new renewal calculation model will be applied. To take this into account, the renewal fee for the shortened term will be reduced accordingly.

Our clients will of course receive first-hand information on the new deadlines and fees.

14.03.2018
No Community Design for “CROCS” plastic slippers

The European Union Court of Justice (ECJ) in Luxembourg denied the design protection of the well-known colorful CROCS plastic slippers, thus confirming the decision of the European Union Intellectual Property Office (EUIPO) of 6 June 2016 in which the Community design that was registered on 8 February 2005 had been declared invalid.

A Community design is new if no identical design has been made available to the public before the day of its formation. Notices, exhibitions, uses in trade and any other disclosure which would have the effect of disclosing the design to the professional community of the sector concerned in the normal course of business before the filing date or the priority date are considered to be novelty destroying. For Community designs, there is also a grace period of 12 months before the filing date or priority date, if the publication is attributed to the applicant himself (even if the publication was abusive).

The EUIPO’s declaration of invalidity of the Community design was based on an invalidity request filed in 2013 by the French company Gifi Diffusion. The request was based on the ground that the design was already available to the public 12 months before the priority date and, hence, the design lacked novelty. Evidence of disclosure in the United States prior to the cut-off date of March 28, 2003 has been provided, which evidence showed that the plastic slippers were presented on the CROCS website and at a trade show and, therefore, had been made available to the public.

Crocs Inc. then brought an action against the decision of EUIPO before the ECJ on the grounds that these disclosure acts, which had taken place in the United States and ultimately resulted in declaration of invalidity, could not have been known to the professional community in the EU (primarily shoe manufacturers) in the normal course of business. However, Crocs Inc. did not succeed in demonstrating sufficiently why these disclosure acts could not have reached EU shoe producers (for example by clicking on the Crocs website). Rather, the ECJ assumed that it is unlikely that the marketing activity and the accompanying hype about the CROCS plastic slippers in the US would have gone unnoticed by the professional circles in the EU. Thus, the decision of the EUIPO was confirmed by the ECJ and the EU-wide design protection for the CROCS plastic slippers was canceled retroactively.

Source: Press release of the Court of Justice of the European Union No 31/2018 of 14.03.2018 relating to the judgment in Case T-651/16 Crocs, Inc./EUIPO

14.03.2018
Validation in Cambodia

The scope of protection of a European patent can be extended to states that are not party to the European Patent Convention (EPC). To this end, the European Patent Organisation signed co-operation agreements (“extension agreements”) with a number of European non-EPC states, whereby European patents will have the same effect as national patents. Currently, extensions can be requested with effect for Bosnia-Herzegovina and Montenegro.

Similar agreements were signed with other non-EPC states (“validation agreements”). Such validations can be requested with effect for Morocco, the Republic of Moldova and Tunisia.

As of 1 March 2018, the list of “validation states” got a new entry, since a validation agreement with Cambodia entered into force on said date. The validation fee is EUR 180.

Applicants for a European patent have, thus, a simple and cost-effective way of obtaining patent protection in Cambodia.

For more information on this subject, please do not hesitate to contact our patent attorneys, which are available for you at any time.

15.09.2017
Significant easing of formal requirements regarding the recordal of assignments of IP rights in the Austrian register

An amendment in Austrian Intellectual Property law entered into force in August 2017, which markedly lowered the formal requirements for recording assignments of Austrian IP rights such as patents, utility models and trademarks in the Austrian register.

While previously the documents evidencing a transfer of IP rights (e.g. purchase, donation) were subject to strict formal provisions, from now on a joint written declaration of the contracting parties or their representatives is sufficient to effect the recordal of the assignment in the Austrian register. In the alternative, the transfer of ownership can be evidenced by other documents showing said transfer (e.g. assignment document, purchase contract). Submitting an uncertified copy of the written declaration and documents, respectively, is sufficient.

For more information, please do not hesitate to contact us.

03.05.2017
The Unitary Patent System – Opt Out?

In December 2012 the European Parliament agreed on a Unitary Patent System. For entry into force, however, the International Agreement on this System still needs to be ratified by Germany and the UK. Both EU member states have envisaged ratification before summer of this year. Against this background, the Unified Patent Court may become operational in December 2017. At the Austrian Patent Office, preparations for implementing a local chamber of the European Patent Court are already running in full swing.

The recently initiated UK “Brexit”-procedure does not, by itself, have an impact on the entry into force of the Agreement. In fact, the UK Minister of State for Intellectual Property had announced in November 2016 that the UK will ratify the Agreement in spite of the Brexit. Nevertheless, the call for new elections in the UK on 8 June 2017 may delay or even thwart the ratification process.

The Unified Patent Court will commence operations on the day the Agreement enters into force. From that point on, all pending European patent applications, existing European patents and Supplementary Protection Certificates will fall under the exclusive jurisdiction of the new European Patent System. The new regulations will only be effective in those EU member states that have ratified the Agreement at that time, i.e. also in Austria.

Owners of the above-mentioned IP rights will need a strategic decision whether they should avoid the new System by lodging a so-called “opt-out”-declaration with the Registry of the Unified Patent Court. “Opting-out” an IP right will have the effect that infringement and validity proceedings, as in the past, will be dealt with before national courts/patent offices. In order to reliably exclude these IP rights from the exclusive jurisdiction of the Unified Patent Court, such “opt-out”-declaration may already be filed during a three-month transition period (“sunrise period”) before the new System enters into force.

We strongly recommend analysing existing European patent portfolios in order to assess the necessity of lodging “opt-out”-declarations. We will be glad to provide advice on this issue concerning your European patent portfolios.

29.06.2016
Impact of Brexit

Message to all people worried about the so-called “Brexit”, or rather its effect on IP rights: Stay calm. There is still left plenty of time until the Channel will become a EU outer border again.

The recent UK vote in favour of the exit from the EU (“Brexit”) does not immediately mean that the UK has left the EU. First of all, the UK Parliament has to take the decision if and when the withdrawal procedure is started. Then, according to Article 50 of the EU Treaty, the UK will notify the European Council of its intention to withdraw from the EU; this will start a period of two years for negotiating an Agreement about the framework of the UK’s future relationship with the EU. (The 2-years period may be extended by a unanimous decision of the Council; conversely, the withdrawal may become effective earlier if the Agreement so defines.) In the meantime, the EU treaty and EU law will continue to apply to the UK.

Which European IP is affected by a “Brexit”?

·    Fundamentally, the European patent system as currently operating will be unaffected. European patents designating the UK will stay so. This is because the European patent convention (EPC) is a treaty independent from the EU, and there is no indication that the UK intends to leave the EPC, but it will become a non-EU member of the EPC, like Switzerland or Norway.

·    The Unitary Patent and the Unitary Patent Court, however, are tied to the UK membership. Thus, the treaties of the Unitary Patent System (which were believed to come into force next year) will have to be amended, which is why it is very likely that the start of the Unitary Patent System will be delayed again (and significantly); what will happen exactly, remains to be seen.

·    EU trademarks and EU Community Designs are not affected currently, but upon the UK’s leave, they will cease to be effective from the UK (of course while continuing to be effective for the EU without UK). However, we believe that provisions will be enacted that will allow current holders of EU IP rights (trademarks and designs) to continue their rights into corresponding national IP rights in the UK, very likely by a ‘conversion procedure’.

Incidentally, UK national IP rights will also be unaffected.

Another besides: Ireland does stay. Let’s see what happens with the Scottish …

11.04.2016
EU trade mark law reform – important information for proprietors of EU trade marks!

Since March 23, 2016 the new EU trade mark regulation is in force.

Do you own an EU trade mark (formerly Community trademark), which was filed before June 22, 2012? If so, we strongly recommended reviewing the list of goods and services of your trade mark in order to assess whether adaptations of the list to the requirements of the new regulation are necessary.

Upon entry into force of the new regulation, applicants of EU trade mark applications are required to more precisely define the goods and services, effectively implementing the decision of the European Court of Justice from 2012, C-307/10 – IP Translator.

This new requirement is retroactive and also effects EU trade marks (Community trade marks) filed before June 22, 2012; in particular, trade marks citing goods and services drafted in wide terms or citing the header of the respective Nice classes.  Accordingly, trademark owners may take the opportunity to file a statement until the deadline of September 24, 2016 and further specify the goods and services of their trade marks; otherwise, they face the risk that the scope of protection may be limited automatically.

Please feel free to contact us if you need any assistance in doing so! We will be pleased to provide you with the best possible advice in view of the recent developments.

10.02.2016
Coming Soon – Major EU Trademark Reform is Approaching!

On 23 March 2016 a reform of EU trademark law will enter into force, which is possibly the most important since the introduction of the Community Trademark in 1996.  

The changes to the Community Trademark will be quite considerable and will, inter alia, affect the basic definitions. The Community Trademark will be called European Union Trademark and the Office for Harmonization in the Internal Market (OHIM) will be renamed to “European Union Intellectual Property Office”, or for short EUIPO.

Specifications of goods and services of EU Trademarks which cover class heading terms will be interpreted literally, thereby incorporating the established practice at the OHIM. This will ensure sufficient clarity and precision with regard to the goods and services for which protection is sought.

The absolute grounds for refusal will be partly modified and, in addition, supplemented by new grounds, namely, predating designations of origin, geographical indications, and denominations for wine and plant varieties will effectuate refusal of an EU trademark application.

Furthermore, the new regulations will introduce the protection of EU Certification Marks into the EU trademark system.

Beyond that, the reform will affect the fee structure. For example, the application fees for EU trademarks will include fees for each class instead of one single fee for three classes.

Further changes concern the seizure of counterfeit goods being in transit through the European Economic Area. These will now constitute infringement of an EU trademark. Thus, seizure will be possible even in cases where the final destination of the goods is outside the European Economic Area, unless the holder of the goods can provide proof that the trademark owner cannot prevent the sale of these goods in the country of destination.

22.01.2016
As of 1 January 2016, the Austrian Patent Office searches patent applications in German, English, and French.

Generally, patent applications may be filed with the Austrian patent office in German, English, and French. Until recently, however, applicants filing their application in English or French, were invited to file a German translation before the start of search/examination.

As of 1 January 2016 new regulations will apply to the benefit of applicants. From that date on, the Austrian Patent Office will also search and examine patent applications filed in English and French; thus, applicants will receive a first search opinion before being invited to file a German translation. Thanks to this new regulation, applicants will be able to assess if it is worthwhile to file a costly translation into German.

The new regulation is applicable to patent applications filed on or after 1 January 2016 as well as to pending patent applications for which a search report has not been issued yet.

The new regulation does not apply to utility model applications.