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Austria: Supreme Court confirms Fair use is devoid of distinctiveness

The case reported here concerns the application for registration of a figurative mark containing the word element "FairUse" in relation to print media (class 16), services in class 35 (computer databases, computer networks), class 38 (electronic communication) and class 41 (online publication of electronic newspapers).

The Austrian Patent Office and the appeal court both denied registration of the trade mark for lack of distinctiveness. The applicant took this case to the Supreme Court, but without success. In its decision, the Supreme Court remarked that "fair use" is a legal doctrine in US copyright law that permits limited use of copyrighted material without acquiring permission from the rights holders, for example in schools.

The Supreme Court went on to state that the term "fair use" has also been used in Europe, for example in respect of the reform of copyright law. Thus, the targeted consumers will perceive the sign as an indication that use of the offered goods and services is not subject to a contractual licence, but is legitimate within the boundaries of "fair use".

In this way, the Supreme Court found, the sign for which protection is sought would not be perceived as an indication of origin from a specific undertaking but as a mere description of the terms of use for the goods and services. The Supreme Court did not follow the applicant’s argument that the reasoning of the famous cjeu decision in Baby-dry (C-383/99) or similar decisions from the Austrian courts could be applied to the sign in question. In contrast to the signs concerned in these decisions, Fair use is not a term created by the applicant. On the other hand, the graphical elements were found insufficient to guarantee the identity of origin for the goods and services covered by the application. The decision to reject the application thus became final.

The findings of the Supreme Court seem "fair use" of the case law of European courts, which have become increasingly reluctant to accept strongly allusive terms for trade mark registration. The Austrian courts also follow the European lead in that minimal graphical adornments will not pave the applicant's way towards trade mark registration.

Johannes Strobl

SONN & PARTNER PatentanwälteRiemergasse 14A-1010 Vienna, AustriaTel: +43 1 512 84 05Fax: +43 1 512 98

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