Trademark Registration In Austria: A Comprehensive Guide

Registering a trademark in Austria is a relatively straightforward process. Trademarks can be registered locally via the Österreichische Patentamt (ÖPA) or regionally by filing a European Union Trademark (EUTM). It's important to note that Austria is a first-to-file jurisdiction, which means that rights to a trademark are granted to the first person who files it, regardless of who used it first. Before filing an application, it is crucial to search for similar trademarks to avoid potential legal issues. Once an application is accepted, the grant of registration will be published, and third parties have three months to file an opposition. This article will provide a comprehensive guide on how to register a trademark in Austria, covering all the necessary steps and requirements.

Check for similar trademarks

Before applying for a trademark in Austria, it is important to search for similar trademarks to avoid potential issues with trademark owners and to increase the chances of a successful registration. Here are some key points to consider when checking for similar trademarks:

• The Austrian Patent Office (Österreichisches Patentamt) does not determine whether identical or confusingly similar trademarks exist during the application procedure. Therefore, it is your responsibility to conduct a comprehensive search for similar trademarks before submitting your application.
• Visit the Austrian Patent Office website to obtain information on similar or identical trademarks. They offer services such as the "Trademark Similarity Search" and "Pre-Check Marke", which can provide valuable insights beyond a basic trademark similarity comparison.
• Utilize the Austrian Patent Office Customer Service Center in Vienna. They can provide guidance and assist you in your search for similar trademarks.
• Engage with experts and IP consultants who can advise you on the possibilities of obtaining information about identical or similar trademarks. They can also guide you through the trademark application process and ensure you meet all the requirements.
• Consider the distinctiveness of your trademark. Trademarks in Austria can consist of any signs, including words, designs, letters, numerals, colours, shapes, or sounds. Ensure that your trademark is capable of distinguishing your goods or services from those of other companies.
• If your trademark includes a three-dimensional (3D) element, such as product shapes, packaging, or containers, ensure you submit clear graphical representations of the mark from various angles to ensure it can be accurately compared with existing trademarks.
• Be aware of the scope of your trademark. Trademarks in Austria are classified into "classes" based on the Nice Classification. Ensure that your trademark application clearly indicates the goods or services it is intended to cover, as this can impact potential similarities with existing trademarks.

Application process

The application process for registering a trademark in Austria involves several steps and considerations. Firstly, it is important to conduct a comprehensive search for similar brands or trademarks before initiating the registration process. This includes checking for identical or confusingly similar trademarks registered for comparable goods or services. The Austrian Patent Office offers services such as "Trademark Similarity Search" and "Pre-Check Marke" to assist in this process.

Once the preliminary search is completed, the applicant can proceed with the registration process. The application can be made either locally through the Österreichische Patentamt (ÖPA) or regionally by filing a European Union Trademark (EUTM). Additionally, Austria is a member of the Madrid Protocol, allowing for the extension of international trademark registrations through the Madrid System. The application can be filed directly with the Office for Harmonization in the Internal Market by mail, fax, or electronically in German. Alternatively, the application form can be submitted to the Austrian Patent Office for forwarding to the Office for Harmonization.

The application process itself can be completed by anyone, regardless of whether they are an individual or a legal entity (company). The applicant has the option to represent themselves or choose professional or non-professional representation. If the applicant resides or has a place of business in Austria, they may apply without representation. However, if the applicant is neither domiciled nor has a business in Austria, they must be represented in the application procedure by a professional or non-professional representative.

The trademark application must clearly indicate the goods or services that the trademark intends to identify in the market. These products and services must be classified into up to 45 subgroups, known as "classes," according to the Nice Classification scheme. For trademarks with graphic elements, trademark images must be submitted, including one copy in the application form and five attachments matching the original in size, representation, shape, and colouring. These images are typically limited to a size of 8 cm by 8 cm.

After submitting the application, the Austrian trademarks office (ÖPA) will examine it to determine if it complies with the registration requirements. If the trademark meets these requirements, it will be assigned a serial number and entered into the trademark register. The applicant will receive a registration certificate, and the trademark will be published in the Austrian Trademark Gazette. The entire process typically takes around 2 to 3 months, with a Fast Track option available for a quicker turnaround time.

Registration requirements

The trademark application must indicate the goods or services that the trademark intends to identify in the market. These products and services must be classified into up to 45 subgroups, or "classes", according to the Nice Classification. The goods or services must be named in words, preferably using the terms of the classification. For example, "Cl. 3: Perfumery, soaps, cleaning products, body and beauty care products".

If the trademark includes graphic elements such as words with upper and lower-case letters, special fonts, figurative elements, or colours, trademark images must be submitted. One copy should be included in the application form, with five additional copies attached that match the original in size, representation, shape, and colouring. These trademark images must be no larger than 8cm by 8cm.

In Austria, a trademark can be registered either locally via the Österreichische Patentamt (ÖPA) or regionally by filing a European Union Trademark (EUTM). Austria is also a member state of the Madrid Protocol, which means that the extension of an international trademark registration is possible through the Madrid System.

There are no specific deadlines for registration, but it is recommended to secure the right as soon as possible due to potential competition. The average duration of the registration procedure is 2-3 months, but any exchange of correspondence will prolong this period.

Publication of registration

Once your trademark application has been accepted for registration, the grant of registration will be published in the Austrian Trademark Gazette, issued on the 20th of each month. This marks the beginning of a three-month period during which third parties can file an opposition against it.

The publication of the registration includes the consecutive registration number, and the trademark owner will also receive a confirmation of registration. The registered trademark will be entered in the trademark register.

The Austrian Trademarks Office (ÖPA) will examine the application to check whether the trademark complies with the registration requirements. If the trademark meets the requirements, it will be entered in the trademark register under a serial number of registration, and the applicant will receive a registration certificate.

After the trademark has been registered, the abbreviation ® can be used in the course of trade. This indicates that it is a registered trademark. Holders are obliged to provide third parties with information in this respect.

Rights and obligations

Rights

Trademark registration in Austria confers several rights to the owner. Firstly, the owner gains the exclusive right to prevent unauthorised use of their trademark by third parties. This includes using an identical or similar mark for identical or similar goods and services if there is a likelihood of confusion. The owner can also stop the transfer of goods from third countries brought into the market without their consent, helping to combat product piracy. Additionally, the owner has the right to use the registered trademark symbol ® in trade, indicating their trademark's official registration.

Obligations

Trademark owners in Austria also have specific obligations. One key obligation is the requirement to disclose the use of the trademark to third parties. This includes providing information to prevent confusion or infringement of other trademarks. Trademark owners must also actively monitor and protect their trademarks. They should regularly check for conflicting or identical signs used by third parties and, if necessary, take appropriate action, such as concluding coexistence or delineation agreements.

Protection and Enforcement

Trademarks in Austria can be protected and enforced as Austrian trademarks, EU trademarks, or Austrian trademarks based on international registration under the Madrid Protocol. The national legal framework for trademarks is outlined in the Trademark Protection Act. Additionally, Austria adheres to international treaties like the Paris Convention for the Protection of Industrial Property and the Madrid Protocol for international trademark registration.

Registration Process

The Austrian Patent Office facilitates trademark registration. While there are no specific deadlines, applicants should secure their rights as soon as possible to avoid potential competition. The application process can be done on paper using Form MA 1, and applicants with residence or a place of business in Austria can represent themselves. The trademark application must clearly indicate the goods or services associated with the trademark, classified into up to 45 subgroups or "classes" according to the Nice Classification.

Examination and Approval

The Austrian Patent Office examines the legality of the trademark, including its distinctiveness and potential registration obstacles. If obstacles are identified, applicants are notified and given the opportunity to respond. If the application is approved, the trademark is registered and published in the Austrian Trademark Gazette. The owner then has the right to use the registered trademark symbol ®.

Duration and Renewal

Trademarks registered in Austria are typically protected for 10 years from the application date and can be extended for subsequent 10-year periods by paying a renewal fee. No additional requirements, such as proof of use, are necessary for renewal. However, failure to use the trademark could result in cancellation actions based on non-use after five years.

Frequently asked questions