1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Austria. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable because rights against infringers are only acquired through registration. Trade names of sufficient repute in Austria may, however, be protected without registration.
3. What is registrable?
Any 搒igns?that are graphically representable and capable of distinguishing the goods or services of one person from another, e.g., words, names, devices, certain three-dimensional shapes, and certain types of sound marks are registrable.
4. Can a trademark be registered for retail and like services?
No. Retail and like services are not registrable with the Austrian Trademark Office. They can, however, be registered as Community Trade Marks.
5. How are domain names protected?
Domain names are protected by registration with the national domain name authority on a first come, first served basis. In general, the courts apply the same principles for domain name disputes as they apply to trademark disputes. An arbitration office for .at domains has been established, as well. No specific legislation is currently in force for the protection of domain names.
6. Should a trademark be searched before filing?
Applications are officially searched as to prior marks, but this takes several months. If the applicant makes no prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting an Austrian trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide one specimen of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, and a list of goods/services to be covered.
9. Is local registration the only option, or are there international alternatives?
An Austrian application only has effect in Austria. International and Community registrations are also available (see entries for the Madrid Agreement and Protocol and the Community Trade Mark).
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. It is only necessary to file one application and pay extra class fees as required.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding an Austrian application, the filing date of the home application can be claimed as the filing date in Austria. A Community or International registration can be based on an Austrian registration (see entries for the Madrid Agreement and Protocol and the Community Trade Mark). Similarly, if an applicant抯 home country is a member of the World Trade Organization, it should be possible to claim the home filing date; consult an Austrian trademark attorney.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years of the registration date. If not, the registration will become vulnerable to cancellation for nonuse. However, late use after the five-year term may restore registration provided that no third party has started (within three months of notification or warning) an action for cancellation for nonuse.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of a slightly different trademark would not affect the enforceability of the registration. However, if the difference is significant, a new application may be necessary because it is not possible to amend a registration. An Austrian trademark attorney should be consulted on this issue.
14. Is there any advantage to using a trademark before filing an application?
Yes. Austria recognizes prior trademark use. Provided such prior use qualifies as substantial and nationwide use, the prior user may cancel subsequent marks and sue for infringement, even in the absence of registration. However, the prior user has the burden of proving exclusive rights in the mark by providing substantial evidence, which implies a higher cost than that of a registration.
15. For an application to be valid, are there any particular requirements that must be met?
No.
16. What information is first published about an application/ registration and when is it published?
If the application is accepted for registration, it is registered on payment of the registration fee. The registration is published in the Austrian Official Gazette.
17. What kind of examination (if any) will a new application undergo?
An application is examined to determine if the mark complies with local rules as to distinctiveness and deceptiveness, which are absolute grounds for refusal of registration. Furthermore, the applicant is warned about earlier identical and similar registration in a similarity report. The Registrar only has power to reject applications on absolute grounds. The applicant will probably receive at least one office action that will have to be answered within a given period.
18. What response to official objections is required?
The applicant is entitled to reply within a given period that may be extended. The applicant may have to provide evidence that the mark has acquired distinctiveness through extensive use in Austria and/or limit the goods or services of the application.
19. How long is the registration process?
The registration process takes approximately 6 to 12 months.
20. What rights does an application confer?
Rights are only obtained upon registration. A pending application cannot be cited against a later application or used in cancellation proceedings.
21. What is the legal effect of a registration?
The registrant can sue for infringement and cancellation of subsequent registrations and can apply for injunctions.
22. Can an application be opposed or cancelled by third parties?
No. The application cannot be opposed prior to registration.
23. Can an application or registration be assigned?
Yes. However, if this results in the assigned mark or other marks becoming nondistinctive or deceptive, such marks will be vulnerable to cancellation.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Recordation is not compulsory, but if the assignment is not recorded, a subsequent assignment may have priority.
26. Can an application or registration be licensed?
Yes. Consult an Austrian trademark attorney.
27. Does a license have to be recorded?
Recordation is not compulsory, but if the license is not recorded: (1) a subsequently recorded license may have priority; (2) in the case of an assignment, the license need not to be honored by the assignee; and (3) there may be disadvantages if an infringer is sued.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Austria.
29. How long does a registration last?
The term of registration is ten years from the date of registration, and is renewable for ten-year periods.
30. What is required to renew a registration?
Payment of a renewal fee is the only requirement.
31. Is it necessary to indicate a trademark registration on goods or services?
Although marking is optional, it is advisable, e.g., ?or 揜egistrierte Marke?are commonly used.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes, the web address is: www.patentamt.at. |
