Austria: Supreme Court rules on imported infringing goods
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

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

Austria: Supreme Court rules on imported infringing goods

Sponsored by


The basic facts

Both parties are owners of registered EU trademarks consisting of the letters MK in different designs, with the additional wording "illumination". The plaintiff, an Austrian company has a business concerned with decorative illuminations in Austria and abroad. The defendant, a Czech company, is selling, lending, delivering and installing decorative illuminations and illuminated commercial signs. The defendant's EU registration is younger than that of the plaintiff.

The particular activity

The plaintiff, through a frontman, ordered some goods from the defendant who delivered them in one mailing to Austria. These goods, the bill and the packaging had a trademark in the design of the defendant. The defendant denied regular commercial activities in Austria and asserted that this mailing was its only delivery to Austria. In the infringement proceedings he rejected all the plaintiff's claims, especially the similarity of the marks due to their noticeable different designs, any repetition since it was only one delivery and the necessity to render accounts due to having already sent a detailed bill with the delivery of the goods.

Findings of the first and second instances

A partial judgement containing an injunction and an order to render accounts was delivered. A refusal of the request for publishing the decision and for destruction of the goods was issued. No publication was necessary since the infringing goods and means carrying the infringing mark were all in the hands of the plaintiff with no danger of illicitly being disseminated in the market. The decision on damages was delayed until the rendering of accounts. An interim injunction was ordered until the end of the infringement procedure.

The defendant partially appealed further to the Austrian Supreme Court which rejected the appeal for the following reasons:

1) The signs are confusingly similar. The letters MK are predominant. Although the different design elements are clearly visible, consumers will still think that these goods originate from the same enterprise due to the same letters MK. They will consider the different signs only as derivations or modernisations of the same mark, especially since the goods are practically identical.

2) The danger of repetition exists which requires an injunction. There was only one delivery upon request up to now but there is no certainty that the defendant has changed his mind and will not repeat such deliveries. Indeed the fact that he sticks to the idea that the marks are distinctly different is a sign to the contrary.

3) Rendering of accounts was upheld. This is the most important part of the decision. It is standard case law that such a request is to be rejected in cases where the plaintiff already has all necessary information. A bill alone, however, might not be sufficient information. Precedents allow principally an inspection of the original bills regarding the acquiring of the goods and their further sales. Only the production of these originals to a court expert allows the examination of the rightfulness and completeness of the rendering of accounts. Since here it could be that the plaintiff is at this time, through this one bill, not in possession of all necessary information, the request for rendering accounts is principally granted. The further proceeding of the rendering of accounts will clarify what original documents are still necessary for completeness.

Rendering of accounts is nearly always granted in cases of infringement of intellectual property rights and leads to the laying open of all relevant documents, including the names and addresses of the defendant's suppliers.


Helmut Sonn

SONN & PARTNER Patentanwälte

Riemergasse 14

A-1010 Vienna, Austria

Tel: +43 1 512 84 05

Fax: +43 1 512 98 05

more from across site and ros bottom lb

More from across our site

The FRAND rate is only 5 cents higher than the per-device rate determined at first instance in 2023
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Nearly four months after joining Crowell & Moring, Edward Taelman reflects on starting afresh, new clients, and firm culture
Firms discuss the ebb and flow of life sciences IP work and explain how they help professionals pivot between specialities
Mercedes-Benz, Dolby Laboratories, and Panasonic discuss the merits and drawbacks of the USPTO's terminal disclaimer proposal
In-house counsel believe Chinese domestic firms are becoming as sophisticated as international firms, but they may not shift their portfolios just yet
The Court of Appeals for the Federal Circuit is looking to renew a ban that has prevented Judge Pauline Newman from hearing cases
The list of the top representative firms at the UPC may yield few surprises but their success did not come free
The German firms have accounted for 26% of all infringement actions, while US corporations appear interested in litigating at the forum, a report has revealed
Vincent Brault tells us how he fits kitesurfing into his lunchtime routine and why IP is no longer seen as ‘nerdy’
Gift this article