A guide to intellectual property law in Austria. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.
To compare answers across multiple jurisdictions, visit the Patents, trade marks and designs Country Q&A tool.
This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.
The requirements are for:
Novelty.
Inventive step.
Susceptibility to industrial applications.
Non-inventions:
Discoveries, scientific theories and mathematical methods.
The human body or parts of it (including DNA sequences).
Aesthetic creations.
Schemes, rules and methods for performing intellectual acts, for playing games or for doing business and programs for computers.
Reproduction of information.
Contrary to public policy or morality:
Cloning of human beings.
Methods of modification of the human genetic code.
Use of human embryos.
Creation and utilisation of hybrid beings.
Processes changing the genetic identity of animals which cause suffering of these animals without essential medical benefit for human beings or animals, as well as animals that are created by means of these processes.
Others:
Surgical or therapeutical methods for treatment of humans or animals, except for substances or compositions for use in any of these methods.
Plants (see Regulation 2100/94/EC on the protection of new plant varieties), animals and biological methods for breeding of these.
The Patent Office is responsible for the registration of patents and provides information and forms concerning the application at www.patentamt.at (see box, The regulatory authority).
Opposition can be filed within four months after publication of the patent for the following reasons:
Lack of patentability.
Lack of sufficiently clear and complete disclosure of the invention.
The patent extends beyond the content of the application in the version originally filed determining the filing date.
Lack of permanent accessibility of deposit as defined by the Budapest Treaty regarding microorganisms.
Patent protection begins with publication in the Patent Gazette.
A patent enjoys protection with a maximum term of 20 years from the application date. Expiration before this term is possible, including if:
Renewal fees are not paid on time.
The owner withdrawals his right to the patent.
The patent is declared null and void.
A patent allows the patent holder to exclude others from industrially:
Producing the subject of the invention.
Putting it on the market.
Offering it for sale.
Using it.
Importing or possessing it for the purposes as stated.
The patent holder may also pursue "contributory infringement".
If a third party conducts any of these acts, or such action is imminent, the patent holder can bring a claim for a cease and desist order.
The courts dealing with patent infringement actions are:
Vienna Commercial Court.
Vienna Regional Criminal Court.
Defences include:
No infringement by the acting of defendant.
Invalidity of patent.
No action concerning the use of respective patent.
Use within studies or experiments if this is necessary to obtain a market authorisation for pharmaceuticals.
Prior (or intermediate) use.
Licence.
Right to a compulsory licence.
Exhaustion.
Claims are time-barred.
Competition law issues.
Remedies include:
Injunctive relief (also through preliminary injunction).
Removal and destruction (also through preliminary injunction).
Disclosure of information on supply channels.
Rendering of accounts.
Monetary remedies.
Publication of judgment.
Criminal sanctions (on request).
The requirements are:
Capability of graphical representation.
Distinctiveness.
Unregistered trade marks, even if they are distinctive, can only enjoy protection if they have acquired distinctiveness through the use on the market (secondary meaning). The legal requirements and proof of an existing right are much harder to prove with unregistered trade marks.
Applications for national trade marks must be submitted to the Patent Office (www.patentamt.at).
Signs incapable of protection, consisting exclusively of:
National signs (armorial bearings, flags and so on).
Official signs indicating control or warranty.
Signs of international organisations.
Refusal of registration:
Signs cannot constitute a trade mark as such.
Descriptiveness (without secondary meaning).
Generic signs (without secondary meaning).
Signs consisting exclusively of a shape which is based on the nature of goods, on technical reasons or which give the goods or services substantial value.
Contrary to public policy or morality.
Deceptive trade marks.
An opposition against a newer trade mark can be filed within three months after publication and is based on:
An older trade mark enjoying protection in Austria.
An older application for trade mark protection in Austria.
Oppositions can only be based on the relative grounds of refusal due to:
Double identity (identity of signs and goods or services).
Similarity of signs and/or goods or services which result a risk of confusion.
There is no opposition available based on well-known trade marks.
A trade mark right arises with registration in the register. The protection of a trade mark ends ten years after registration, unless it is renewed for ten more years on timely payment of renewal fees. Renewal is possible without limitation.
Infringement of exploitation rights covers:
Use of an identical sign for identical goods or services.
Use of an identical or similar sign for identical goods or services if there is a likelihood of confusion.
Use of a sign which is identical or similar to a trade mark having a reputation even for non-similar goods or services if this use takes unfair advantage of or is detrimental to the distinctive character or the repute of a trade mark.
Use of a sign includes (non-exhaustive):
Affixing the sign on products.
Doing the following in relation to products under the sign:
offering;
putting on the market;
stocking;
importing;
exporting.
Using the sign on business papers.
If any such act happens or is imminent, the IPR holder can bring an infringement action for a cease and desist order.
The courts dealing with trade mark infringement actions are:
Commercial Courts.
Regional Criminal Courts.
Defences include:
Non-identical or no confusion over similarity of signs.
No similarity of goods and services.
No action on commercial scale.
No use as a trade mark.
Acquiescence.
Descriptive or non-distinctive sign.
Registration in bad faith.
Earlier rights.
Exhaustion of trade mark rights.
Consent to trade mark use.
Legitimate use, including:
in comparative advertising;
for indication of own name, kind, quality, purpose, value, and so on of a product;
purpose of a product as spare part.
Claims are time-bound.
See Question 9.
Works are protected if they are original intellectual creations in literature, musical art, visual art and cinema. Essential elements for copyright protection are:
The creation itself.
That the individual character of the creator is reflected in the work.
Its correlation to the above genres.
Neither the author's intention to create a work which is protected by copyright nor its registration is necessary.
Copyright arises automatically with the act of creation of the work. Registration of copyright is not required and not provided for by law.
The Ministry of Justice keeps a register which provides authors (or their heirs) a possibility to claim creatorship for an anonymously created or published work. This register is of marginal relevance.
Copyright arises with creation of the work and ends 70 years after the death of its author (or last-living co-author). All copyrights end on 31 December of the year in which the right expires.
Infringement of exploitation rights covers:
The right of the first table of content.
The right to adapt and translate the word.
Reproduction.
Distribution.
Lending and renting.
Broadcasting.
Performance or display to the public.
The right to make available to the public.
If any such act of a third party without consent of the author happened or is imminent, the author can bring an infringement action. In addition to these exploitation rights, moral rights can also be claimed.
See Question 17.
Defences include:
No copyright protection.
No infringement of copyrights.
Fair or free use.
Licence.
Claims are time-barred.
See Question 9.
The requirements are for:
Novelty.
Individual character.
Applications for national designs must be submitted to the Patent Office (www.patentamt.at). The Patent Office provides standard forms for applications and a short guidance on the application requirements.
Opposition proceedings before registration are not possible. Third parties can only claim for invalidation or deprivation and assignment (Aberkennung und Übertragung) of design rights after a design's registration.
Protection of a design starts with its registration. Renewal fees must be paid every five years. The maximum protection term is 25 years after application.
A registered design confers on its holder the exclusive right to use it and to prevent any third party from using it without the holder's consent. This covers in particular,
Making.
Offering.
Putting on the market.
Importing or exporting.
Using a product in which the design is incorporated or to which it is applied.
Stocking such a product for those purposes.
The scope of design protection covers not only identical designs but also those designs which do not effect a different overall impression.
See Question 7.
Defences include:
No infringement: different overall impression.
No novelty or individual character.
Technical dependence.
Licence.
Exhaustion.
Rights of prior use.
Claims are time-bound.
See Question 9.
Even without registration, new designs with individual character can enjoy protection for three years as from the date on which the design was first made available to the public within the Community (Article 11, Regulation (EC) 6/2002 on Community designs (Community Designs Regulation)).
Further, unregistered designs (for example, used for a company, its products or business papers) can enjoy protection based on the Article 9(3), Unfair Competition Act as far as they acquired distinctiveness through secondary meaning.
See Question 35.
Infringement of an unregistered design occurs if the design is used within the course of business (such as on business papers, product packages, and so on) (Article 9, Unfair Competition Law).
Defences include:
No protection for the unregistered design.
No identity or similarity of designs.
Prior right.
Consent of the claimant.
Claims are time-bound.
Remedies include:
Injunctive relief (also through preliminary injunction).
Removal and destruction (also through preliminary injunction).
Monetary remedies.
Rendering of accounts.
Publication of judgment.
The Unfair Competition Law protects secret information if (Articles 11 to 13, Unfair Competition Act):
Employees come to know about them and disclose them to others during their employment.
Third parties come to know about these secrets (by employees, by breach of law or by breach of morality) and use them for a competitive purpose or disclose them to others.
Samples or technical specifications are used within the scope of business or disclosed (in case this information has been forwarded to the offender within the course of business).
Any other confidential information can only be protected through contractual obligations.
See Question 40.
The courts dealing with these actions are the:
Commercial Courts.
Criminal District Courts.
The main defences in civil proceedings are:
Public knowledge.
No interest in non-disclosure (public or reasonable private interests).
No use on a commercial basis.
Remedies include:
Injunction (also through preliminary injunction).
Damages.
Criminal sanctions.
Main areas of responsibility. Application and administration of patents, design and trade mark rights.
Guidance on application procedure. The Patent Office provides standard forms for applications and a short guidance on the application requirements.
T +43 1 582 580
F +43 1 582 582
E c.kletzer@fplp.at
W www.fplp.at
Qualified. Austria (Vienna), 2003
Areas of practice. Patent law; trade mark law; copyright and design law; product piracy; unfair competition law; licensing and publishing agreements; pharmaceutical regulatory issues.
Recent transactions
For more details of recent transactions, publications, and so on, see full PLC Which lawyer? profile here.
T +43 1 582 580
F +43 1 582 582
E k.hesse@fplp.at
W www.fplp.at
Qualified. Not yet admitted in Austria
Areas of practice. Patent law; trade mark law; copyright and design law; product piracy; unfair competition law; licensing and publishing agreements; IP law; general business law; commercial law.
Recent transactions
An associate at Fiebinger Polak Leon Attorneys-at-Law, Kristina studied at the University of Constance and graduated from the University of Vienna School of Law in 2009.
