Property Rights - Trademarks
Rights from the trademark right, infringement
International trademark protection
Trademark rights protect signs used to distinguish goods and/or services from those of other persons or companies. In principle, any sign which can be represented graphically can be protected as a trademark, i.e., in particular names, letters, numbers, logos, three-dimensional forms, sounds, colours and also the make-up of the goods provided that the sign is principally suitable for distinguishing goods or services of one company from those of another.
However, certain signs are excluded from trademark protection through absolute obstacles to registration, e.g. sovereignty or official signs, signs having no distinctiveness, descriptive signs, generic designations or misleading signs.
A trademark is the only industrial property right which must be used to remain legally valid. If a trademark is not seriously used by the applicant or a licensee within a period of (in most countries) five years, the trademark can be cancelled on request.
Trademarks are registered on application. The application must merely contain the name and the registered headquarters (domicile) of the applicant, a representation of the trademark, a list of goods and services and information on the representative.
Applicants having registered headquarters or domicile outside the EEA must be represented by an admitted representative.
The trademark application is examined for formal requirements (absolute obstacles to registration) by the Austrian Patent Office (ÖPA). If the Office has any doubts, the applicant will be requested to comment on this. The Office conducts a similarity search for each trademark application, which is only for the information of the applicant and does not hinder the registration. If there are no objections to the registration of the trademark, it will be registered. The trademark is published with the registration.
An Austrian trademark can only be contested by an application for cancellation after its registration. For other countries or organisations, it is also possible to file opposition against the application before the trademark is registered so that if this is successful, the trademark is not registered. The application for cancellation or the opposition can be supported on various grounds for cancellation, e.g. lack of use or prior rights.
The trademark right comes into existence with the registration of the trademark. The registered trademark gives its proprietor the exclusive right to prevent third parties from using a sign in business, which is identical or similar to the trademark for the same or similar goods or services.
However, in some cases, an unregistered characterising sign can also acquire protection through usage, which can also be enforced against third parties.
The infringed party then has a claim for injunction, removal, publication of judgement, monetary claims (appropriate remuneration or compensation), submission of accounts and information about the origin and marketing route of the infringing objects. An interlocutory injunction can also be taken out against the infringer.
Trademark protection can in principle be acquired nationally in any country. In addition to national trademark rights, there are also regional and international trademark agreements such as, for example, the Council Regulation for Community Trademarks (EC) or the Madrid Agreement Concerning International Registration of Marks and the relevant Protocol (MMA and MMP).
A standard trademark for the entire EU can be acquired with a Community Trademark. The Community Trademark is examined, registered and administered centrally by the Office for Harmonization in the Internal Market in Alicante, Spain.
A trademark application can be filed and registered centrally via the MMA or MMP for a large number of countries (MMA, MMP Staaten) The responsible authority is the World Intellectual Property Office (WIPO) in Geneva, Switzerland, which administers international trademarks. However, the individual countries named in an international trademark application have the possibility of raising objections to the registration within a certain term. It is thus possible that the international trademark is registered in different countries with different goods and services. However, a national parent trademark in the country of the registered headquarters or domicile of the applicant is required for an international trademark application.
Many possibilities for acquiring trademark rights in certain countries therefore exist. We should be pleased to advise you as to which of these possibilities is strategically or financially most favourable for your particular case.