Austria: The difficulties of establishing two trade marks
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Austria: The difficulties of establishing two trade marks

Sponsored by

sonn-400px.png

During the time of the Austro-Hungarian Monarchy, a famous hotel existed in Vienna. Its name was Meissl & Schadn and its restaurant was very well-known for its high-end beef dishes.

For some decades now, a well-known chain of restaurants in Vienna that specialises in high-quality beef dishes has existed. Its name is Plachutta.

In 2000 Plachutta registered the trade mark Meissl & Schadn in class 42 for the running of restaurants and cafés. It was for use as a secondary trade mark. In brochures, menus, its cookbooks and other material it purported to continue the tradition of the old Meissl & Schadn and saw itself as its successor.

A short time ago, a new hotel opened on the prestigious Ring with a fashionable old Viennese-style restaurant called Meissl & Schadn. This restaurant also specialises in traditional, high-end Viennese cooking, using beef as the basis of many of its dishes. The existence of the trade mark Meissl & Schadn registered in the name of an established, famous competitor posed too great a danger to the new business. As a result, a cancellation action was started on the basis of non-use.

Plachutta used the trade mark Meissl & Schadn solely in print and that too only in order to point to the tradition of Viennese beef cooking. The trade mark had no specific and concrete connections to certain services which would enable consumers to distinguish these services from those of other enterprises. However, this is the essence and purpose of trademarks. Consumers were not able to distinguish the origin of certain specific services by hearing or reading the trade mark Meissl & Schadn from the same services offered by others. Consequently, a trade mark was not established. The mere use of it as a reference to an old tradition did not suffice. The trade mark Meissl & Schadn was cancelled due to non-use.

Normally, restaurant services are carried out under the name of the restaurant and this is also its trademark. The above case shows the difficulties that arise when trying to establish a second trade mark.

sonn.jpg

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

more from across site and ros bottom lb

More from across our site

A majority of clients – particularly high-earning businesses – want advisers with demonstrable social credentials, according to a survey of more than 28,000 corporate counsel
The US Supreme Court’s ruling in Warner Chappell Music v Nealy is a boost for certain copyright plaintiffs, but some counsel wonder if the court addressed the right question
Private equity firm Adamantem Capital leads the race to acquire Australia-based intellectual property business Qantm IP
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Counsel at four firms reveal how they supervise associates on pro bono matters and what kind of volunteer work their attorneys do
Kramer Levin litigators explain how they secured victory for their client against Microsoft subsidiary Activision in a dispute concerning the video game ‘Call of Duty’
Steven Cooper, partner at Ware Fressola Maguire & Barber, explains what sponsoring Brand Action means for his firm and why the IP community is well-placed to help
Tilman Müller-Stoy reveals why he never made it as a footballer and how he could have had an alternative career as a fire juggler
As the UPC approaches its first anniversary, there’s a risk that persisting teething issues will continue to be the major pain points
Justin Davidson and Stanley Ng of Norton Rose Fulbright discuss what China’s recent Ultraman ruling does and doesn’t say about who is responsible when an AI system infringes copyright
Gift this article