Austria: Examining the law around bad faith trade marks

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

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

Austria: Examining the law around bad faith trade marks

Sponsored by

sonn-400px.png

Until 2017, it was clear from several decisions of the Austrian Supreme Court that trade marks registered in bad faith were invalid and therefore could be successfully attacked any time and that asserted rights based on them would be rejected as immoral. However, the decisions went further: the mere use of that sign was held to be inadmissible and therefore could be forbidden as such without any other reason.

In a long-lasting series of proceedings about a television programme named Fashion One (European trade mark (EUTM) of defendant) and Fashion Television (EUTM licensed to the defendant) the then plaintiff requested the courts forbid use of the licensed mark Fashion Television for the sole reason that the use of that mark, acquired with the intent to obstruct and hinder the plaintiff, in itself supports a claim for an injunction. The plaintiff based his request on settled case law as indicated above.

In 2017, the Austrian Supreme Court changed its mind and decided in this case that prior case law did not give any reason for an injunction against use of a bad faith trade mark without any further support and that such an injunction does not have a basis in the law. Article 52 paragraph 1 lit b EUTM Regulation as well as the parallel Austrian provision say only that acquiring a registration of a mark in bad faith is forbidden. For example, these provisions do not relate to the derivation of licensed rights. The use of such a mark on the market is independent of acquiring trade mark rights for that mark. This use also does not hinder the plaintiff in any perceivable way. No rights are derived by the mere use of a trade mark registered in bad faith which could be rejected for being immoral and unfair. Hence the old case law was overturned and the complaint rejected.

We now have a second case in which that point of law (is mere use of a trade mark registered in bad faith lawful?) was decided (indirectly) in the same way. In this case, the first instance judge rejected the complaint of the same plaintiff as in the above-mentioned case against the same defendant mentioned above regarding the use of the EUTM Fashion Television. The rejection was based on the above-mentioned decision without any relevant procedure since the situation was clear from the beginning. However, before the decision was rendered, the plaintiff added new grounds. This extension of the case was rejected by the judge. On appeal, the decision was overturned. At such an early stage in the procedure, the first instance judge should have accepted these new grounds in light of the fact that the original ground was not sustainable. The Austrian Supreme Court confirmed this.

It is therefore now settled case law in Austria that the use of a bad faith trade mark is per se not objectionable.

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 SHARED ros bottom lb

More from across our site

A flurry of hiring activity among UK firms suggests they are confident of mounting a serious challenge at the UPC
With the submission deadline approaching, we sat down with our research team to provide top tips on how to make your firm stand out
EA, owner of video games including Madden and The Sims, will be sold to a consortium including Saudi Arabia’s Public Investment Fund and a firm owned by Donald Trump’s son-in-law
New arrival marks Mewburn Ellis' second partner hire in ten days as firm looks to boost patent litigation and prosecution capabilities
In-house counsel and teams are invited to submit information for the 21st annual Managing IP Awards
The 2025 list of Rising Stars and Corporate Stars, produced by Managing IP’s accreditation title IP STARS, is now available
Eszter Szakács, partner at Danubia in Hungary, discusses women’s progression, workplace flexibility, and how to deal with imposter syndrome
Rob Fewery is a solicitor at Allwyn Entertainment in the UK
Piotr Rafalski is a patent attorney at Qemetica in Poland
Joanna Rodrigues is an IP lawyer at Dassault Systèmes in France
Gift this article