Austria: When is ® used legitimately and illegitimately?

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: When is ® used legitimately and illegitimately?

Sponsored by

sonn-400px.png

An inventor invented a system for drainage of walls. He was managing director for several years of a group of firms (the ATG-Group), the business of which was the application of that system. The plaintiff is the Austrian firm of the ATG-Group.

The inventor worked for the plaintiff, where he trained, foremost, its commercial agents among them the defendant. The inventor also registered several word and device trademarks for the word ATG together with additional wording in a design. The ATG-Group was a licensee for these trademarks but when the inventor had a stroke they stopped paying the licence fee and consequently the licence was cancelled.

Shortly after that, the defendant founded his own company in Austria – a business for drainage of walls using the identical system as taught when he was one of ATG's commercial agents. The inventor had meanwhile transferred his trademarks to his wife who granted an exclusive licence for Austria to the defendant. In advertisements, the defendant used words like "the original ATG® in Austria", "the original ATG® method" or "the original ATG® 10-years-guarantee".

There were several other unfair competition topics in this case but here we are only concerned about the borderline between legitimate and illegitimate use of ® – the sign that indicates that what is marked is a registered trademark and therefore a protected right for its owner.

The question of whether the use of ® is legitimate or not is a question of whether that statement is misleading. To ascertain this, the following three questions must be answered:

  • How will this statement be understood by interested persons?

  • Does this understanding coincide with the facts?

  • Is its use liable to influence commercial decisions?

The Austrian Supreme Court examined the case according to its case law. In one case ® was attached to a descriptive word (ART-DECO) in a combined word and device trademark. Since the protection of a part of a combined mark presupposes its own distinguishing ability, here, the defendant misleads about the breadth of protection in suggesting ART-DECO articles can only be bought from him. In consequence thereof, ® used for a part of a combined mark is not misleading if this part is also protected on its own against unauthorised use as the Supreme Court ruled in a further decision. The question to be answered is whether, in the specific case, the indication of a legal protection could lead to the wrong idea of superior quality of the goods or services.

In the case described above, it is clear that the word mark itself is not registered as a trademark. The defendant uses ® to campaign against the plaintiff by stressing its "original ATG® method" although the plaintiff has used this method very much longer. That shows that here ® is used to indicate an exclusivity of its services which is untrue. The use of ATG® suggests that the defendant is the only authorised seller of that specific method. Such an idea of exclusivity can influence interested persons to consider the offer positively. Hence this sort of use of ® in the described way must be confirmed as misleading and therefore must be forbidden.

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

Deborah Kirk discusses why IP and technology have become central pillars in transactions and explains why clients need practically minded lawyers
IP STARS, Managing IP’s accreditation title, reveals its latest rankings for patent work, including which firms are moving up
Leaders at US law firms explain what attorneys can learn from AI cases involving Meta and Anthropic, and why the outcomes could guide litigation strategies
Attorneys reveal the trademark and copyright trends they’ve noticed within the first half of 2025
Senior leaders at TE Connectivity and Clarivate explain how they see the future of innovation
A new action filed by Nokia against Asus and a landmark ruling on counterfeits by South Africa’s Supreme Court were also among the top talking points
Counsel explain how they’re navigating patent prosecution matters and highlight key takeaways from Federal Circuit cases
A partner who joined Fenwick alongside two others explains what drew her to the firm and her hopes for growth in Boston
The England and Wales High Court has granted Kirkland & Ellis client Samsung interim declaratory relief in its ongoing FRAND dispute with ZTE
A UDRP decision that found in favour of a small business in a domain name dispute could encourage more businesses to take a stand in ‘David v Goliath’ cases
Gift this article