On July 1 2010 the Austrian Patent Office offers opposition
procedures in addition to the possibility of cancellation proceedings.
In doing so, Austria now has all the procedures available which are
internationally standard in trade mark grant procedures.
Oppositions will be available for Austrian national marks and the
Austrian part of international trade marks. Opposition is possible after
publication of registration that is always on the 20th of a month. The
opposition period is three months. For international marks the date is
the beginning of the month following the publication in the World
Intellectual Property Organisation (WIPO) Gazette.
Since opposition is only available for trade marks published after
July 1 2010, in reality opposition periods can only begin on July 20 for
national marks and on August 1 for international marks.
In order to have a simple and straightforward procedure, the grounds
for opposition are restricted to earlier registered or applied for trade
marks valid for Austria. In case of applications, the proceedings will
be suspended till their registration. All other possible reasons why a
mark should not be registered are reserved for cancellation procedures
before the Nullity Department of the Austrian Patent Office.
Unfortunately the proceeding will not be as quick as possible for two
reasons: firstly, upon request there has to be a hearing. Usually, such
oral proceedings are not scheduled in short time but tend to be
scheduled for long delays. Secondly, it is unavoidable that the owner of
the younger mark has the right to request proof of use of the
opponent's trade mark(s) when they are longer than five years on the
register. The Patent Office cannot withdraw the right to a trade mark on
the basis of unused older trade marks. If the owner of the younger mark
is not convinced by such proofs, he has to file cancellation
proceedings for non-use, and the opposition proceedings will be stayed.
There will be no cost decision – each party has to bear its own
costs.
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| Helmut Sonn |
SONN & PARTNER Patentanwälte
Riemergasse 14
A-1010 Vienna
Austria
Tel: +43 1 512 84 05
Fax: +43 1 512 98 05
office@sonn.at
www.sonn.at