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 2023

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

Austria: Examining registration of foreign language trade marks

Sponsored by


An example of an international trade mark that Austria considered for registration is Access the Inaccessible for goods and services all connected to mountaineering, climbing and work at height. This English language word mark had, among others, a designation for the UK and for Austria. In the UK, the trade mark was finally registered in spite of some difficulties. The Austrian Patent Office and the appellate court did not find it relevant that the mark was approved in the UK. Registration in a foreign country, even in a country where the relevant language is the official language spoken by the whole population, can never be binding for Austria. The reasons behind this are not only formal legal reasons (for example, territoriality), but also that the English authorities examine the trade mark from the viewpoint of English consumers while the Austrian authorities examine the same trade mark from the point of view of Austrian consumers. These perspectives might well be different since the understanding of the meaning of the foreign words might not be identical to that in a foreign country.

Whether a term in a foreign language is distinctive depends on whether it is known in Austria sufficiently so that the circles concerned can understand its meaning in a way that excludes distinctiveness. This can even be the case when the term is unusual in the foreign language. The majority of the Austrian population has a basic knowledge of English. As a result, it cannot be asserted that the words of this trade mark would be considered incomprehensible. On the contrary, people would look for a meaning.

The trade mark owner stressed that the trade mark consists of a contradiction: something which is inaccessible cannot be accessed. The court replied that, in particular, such overstated combinations are widely used in promotional slogans and are therefore not able to form the basis of distinctiveness and therefore to qualify as an indicator of a specific origin of the goods and services. The circles concerned will readily understand the wording of the trade mark in the sense that, with such goods and services, the hitherto inaccessible is now made accessible. To come to that understanding no reflection or varying opinions are needed. Whether the sign could also be understood differently is of no importance. If one form of interpretation is generally complimentary and descriptive, the mark cannot be registered despite other possible interpretations.

Thus English words or a combination of words can be refused as a trade mark by the Austrian authorities, even if accepted as sufficiently distinctive by the authorities in a country where English is an official language.


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

Van Anh Le, assistant professor in IP law at Durham University, assesses the US-Vietnam partnership and the potential implications for Vietnam's IP landscape
Civil society and industry representatives met in Geneva on Thursday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Shira Perlmutter, US Register of Copyrights, discussed the Copyright Office's role in forming generative AI policy during a House of Representatives hearing
The award marks one of the highest-ever damages received by a foreign company in a trademark infringement suit in China
Two orders denying public access to documents have reignited a debate over a lack of transparency at the new court
Rouse’s new chief of operations and the firm’s CEO tell Managing IP why they think private equity backing will help it conquer Europe
Brian Landry, partner at Saul Ewing, reveals how applicants can prosecute patent applications in the wake of the Federal Circuit's In re Cellect ruling