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Austria
Trademark opposition system
As a member state of the European Union, Austria's trademark system follows the unified rules of the EU while retaining some of its own characteristics. The Austrian trademark opposition procedure emphasizes efficiency and procedural fairness, providing clear legal remedies for prior rights holders.
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Trademark opposition acceptance agency
The trademark opposition affairs in Austria are uniformly managed by the Austrian Patent Office (Ö sterreichisches Patentamt, Ö PA), with specific responsibilities including:
1. Accept trademark registration applications and publish them;
2Directly review the objection application,Organize the defense and exchange of evidence between both parties;
3. Make an administrative decision on whether the objection is valid.
Those who are dissatisfied with Ö PA's ruling may apply toAustrian Supreme Court Patent and Trademark DivisionOberster Patent und Markensenat can file an appeal and further appeal toThe Supreme Court of Austria(Oberster Gerichtshof, OGH) appeal.
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Timing of Trademark Objection
Austria strictly adoptsAnnouncement before objectionThe mechanism and objection deadline have rigidity:
1. Announcement triggered:Trademark applications reviewed through Ö PA will beAustrian Trademark GazetteAnnouncement on Markenanzeiger.
2. Objection Window:From the date of announcement3 monthsAny interested party may submit a written objection to Ö PA.
3. Non extendable:This deadline is an absolute legal deadline, and objections submitted after the deadline will not be accepted.
4. Invalidation declaration procedure:For registered trademarks, they can be registered after5 yearsSubmitting invalid requests based on relative reasons (such as conflicts with prior rights); Invalid requests based on absolute reasons (such as violating public order and good customs) or malicious registrationNot limited by time.
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Basis for Trademark Objection Application
Objections must be based on the statutory grounds provided for in Articles 24 and 25 of the Austrian Trademark Protection Law (Markenschutzgesetz, MSchG), and can be divided into two categories:
（1） Absolute reason
Involving defects in the trademark itself:
Lack of significance (generic names, descriptive markers, etc.);
Violating public order and good customs or being deceptive (such as fabricating the source of goods);
Contains protected national symbols, international organization logos, or religious symbols;
Only composed of the shape of the product's function, technical effect, or shape that endows the product with substantial value.
（2） Relative reasons
Situations that conflict with prior rights, including:
1. Prior registration of trademark rights:Similar or identical to trademarks already registered in Austria or the European Union, and with identical or similar goods/services, may lead to confusion.
2. Famous Trademark Protection:The use of a trademark (identical or similar) that enjoys reputation in Austria or the European Union may exploit or damage the distinctiveness or reputation of the trademark without compensation.
3. Other prior rights:
Copyright, industrial design rights, name rights or portrait rights;
Trade name rights (requiring visibility within Austria), geographical indications;
Plant variety name, origin identification, etc.
4. Proxy/representative registration:Unauthorized registration of trademarks by agents or representatives.
5. Malicious registration(such as trademark hoarding aimed at hindering competition or demanding high prices).
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Trademark opposition process
The Austrian objection procedure revolves around written review, balancing efficiency and fairness. The specific steps are as follows:
1. Submit objection:
The objector (or authorized Austrian lawyer/patent agent) shall submit a written objection to Ö PA within 3 months, stating the legal basis, trademark conflict analysis, and supporting evidence (such as trademark registration certificate, usage records, market research report, etc.).
Pay the official fee (2024 standard: single category objection fee of 450 euros).
2. Formal review:Ö PA will review the materials within 10 working days to ensure compliance with formatting requirements (such as deadlines, fees, and basic elements).
3. Notify the objector:Ö PA will forward the objection materials to the objector and grant them a 2-month defense period (with the option to apply for an extension of 1 month).
4. Defense and rebuttal:
The objector shall submit a written defense and counter evidence;
Ö PA will forward the defense materials to the objector, who may submit supplementary opinions or evidence within one month.
5. Ö PA substantive review:
Ö PA conducts hearings based on written materials from both parties and usually does not hold oral hearings (special cases may be requested, but rarely).
The focus of the examination includes trademark similarity, similarity of goods/services, possibility of confusion, etc.
6. Administrative ruling:
Objection established: Reject all or part of the registration application of the opposed trademark;
Objection not established: Trademark registration approved.
The ruling shall be delivered to both parties by mail and electronic system.
7. Appeal Procedure:
Either party who disagrees with the ruling may file an appeal with the Patent and Trademark Court within 4 weeks after receiving the decision;
Those who are still dissatisfied with the appeal result may further appeal to the Supreme Court (OGH), but only for legal disputes.
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Trademark opposition period
The Austrian objection procedure is known for its efficiency, but the cycle is still affected by the complexity of the case:
1. Administrative Stage (Ö PA):
It usually takes time from submitting an objection to receiving a ruling12-18 months;
If both parties respond quickly and have sufficient materials, the shortest time can be shortened to9-12 months.
2. Judicial stage:
The average time for patent and trademark court appeal procedures6-12 months;
Supreme Court hearings may increase further12-18 months.
3. The impact of reconciliation:
About 25% of objection cases are terminated in advance through settlement agreements (such as limiting the scope of goods, trademark coexistence agreements), significantly shortening the cycle.
Key precautions
1. Mandatory proxy requirements:Non EU residents or businesses need to entrust Austrian lawyers or registered patent agents to submit objections.
2. Language rules:All materials must beGermanSubmit, non German evidence must be accompanied by a certified translation.
3. Evidence preparation:
Proving trademark confusion may require providing consumer survey reports, sales data, or advertising placement records;
The accusation of malicious registration requires the submission of the applicant's trademark application history or evidence of commercial threats (such as a high price transfer offer).
4. EU Trademark Linkage:
If the dispute involves an EU trademark (EUTM), a balance can be struck between resolving it through the EU Intellectual Property Office (EUIPO) or the Austrian procedure; For trademarks that are only used in Austria, choosing a domestic procedure has lower costs.
