Opposition proceedings concerning Austrian trademarks
The amendment published in the Austrian Federal Law Gazette BGBl. I 126/2009 introduced opposition proceedings into Austrian Trademark Law (§§ 29a-29c of the Austrian Trademark Act (MSchG)). This grants the earlier trademark holder the opportunity to file a notice of opposition to a subsequent trademark already at an early stage of its registration.
Who may file a notice of opposition and against what?
The holder of an earlier registered trademark may file a notice of opposition against the registration of a subsequent trademark. If the trademark has been previously applied for, this is also sufficient in order to enable the applicant to file a notice of opposition, provided that the application entails the registration of the trademark.
What are possible justifications for filing a notice of opposition?
Identical or similar trademarks and identical or similar goods and services, as regulated by § 30 (1) of the Austrian Trademark Act, constitute justifications for opposition.
Is it possible to protest against non-use of a trademark?
If the opposition is based on a trademark which has been registered for more than five years, the opponent, upon request by the holder of the subsequent trademark, has to furnish proof of the use of the trademark on which the opposition is based during the last five years. If the holder of the subsequent trademark files a cancellation request according to § 33 of the Austrian Trademark Act (non-use), the opposition proceedings will be suspended.
Which grounds are, thus, not valid for filing a notice of opposition?
Opposition may not be raised, if
• it is based on a "trademark with a reputation" as the earlier trademark;
• the subsequent trademark is a "mark filed by an agent";
• it is based on an earlier non-registered sign;
• it is based on an entrepreneur's name, an entrepreneur's company or the specific name of the entrepreneur's company;
• the subsequent trademark has been applied for in bad faith.
It is, however, still possible to institute cancellation proceedings based on these grounds.
When does a notice of opposition have to be filed?
The period for filing a notice of opposition ends three months after the day of the publication of the registration. The notice of opposition has to have been received by the Austrian Patent Office at the last day of this period together with a statement of grounds. The opposition fee also has to be paid within said period.
For Austrian trademarks, this means that the 20th of each month is the decisive day, as Austrian trademarks are published in the Austrian Trademark Gazette (Markenanzeiger) on the 20th of each month.
The opposition period for international trademarks according to the Madrid Agreement starts on the 1st of the month after the day of the publication of the registration in the WIPO Gazette of International Marks.
Thus, two days are important for filing notices of opposition: the 1st and the 20th of each month.
What happens if the respective period is not observed?
A re-establishment is not possible. If the opposition period is not observed, the normal known cancellation proceedings are, however, still available.
Does the unsuccessful party have to bear the costs?
No, each party has to bear its own costs arising in connection with the opposition proceedings.
What happens, if several notices of opposition are filed against one trademark?
If several notices of opposition are filed against one trademark, the holder of the trademark will be notified of all of them. After having received the notice of refutation, the Austrian Patent Office may decide only to deal with one (the most promising) opposition and to suspend the others.
What happens, if there is no response to the opposition?
If no notice of refutation is filed, the application will be granted, i.e. the trademark will be cancelled.
Is the opposition independent of subsequent cancellation proceedings?
Yes, subsequent cancellation proceedings are independent of opposition proceedings; a cancellation application with equal wording may, however, be dealt with as "res judicata" and may, thus, be decided upon in the same way as the opposition proceedings.