Two Years Of Trademark Opposition

More than two years after the introduction of trademark opposition procedures in Austria, uncertainties remain about various aspects to be considered by trade mark owners. Finding the right strategy on how to challenge younger trade marks is important.

Since 1 July 2010, trademark owners (national Austrian trade marks, Community Trademarks or International Registrations designating Austria or the EU) have the possibility to oppose new Austrian trade mark registrations within three months from their publication.

Limitations

But limitations apply. For example, oppositions must be based on earlier registered trademarks or earlier trademark applications. Therefore, an opposition may not be based on earlier unregistered trademarks, company names, copyright or well-known trademarks under Article 6bis Paris Convention. Nor may oppositions be based on "bad faith filing", filing of an "agent's mark" or on absolute grounds (such as lack of distinctiveness).

In addition, oppositions are limited to: (i) identical trademarks registered for identical goods or services or (ii) similar trademarks registered for similar goods or services based on likelihood of confusion. It is not possible to invoke the specific protection of famous trademarks against taking unfair advantage of, or being detrimental to, its distinctive character or repute (Sec 10(2) Austrian Trademarks Act, Art 5(2) EU Trademark Directive).

According to the Austrian Patent and Trademark Office, currently 3.5% of all trademark registrations have been subject to oppositions. Eleven per cent of first instance decisions have been appealed. Despite opposition proceedings have been in place for more than two years, only three cases had been finally processed by the board of appeal (the second instance body) until October 2012. No decisions of the Austrian Supreme Patent and Trademark Senate (the third and highest instance in opposition proceedings) have been rendered until October 2012. This means that there is no guidance from the higher instances on many procedural aspects.

Considerations before filing an opposition

The following points should thus be considered before filing an opposition.

Especially if the opponent's trademark has a reputation on the market, the opponent should consider whether a challenge of the younger trademark might be more likely to succeed if based also on the specific protection of famous trademarks (ie, not only on likelihood of confusion). A cancellation action may...