Austria: The difficulties of establishing two 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 2026

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

Cookies Settings

Austria: The difficulties of establishing two trade marks

Sponsored by

sonn-400px.png

During the time of the Austro-Hungarian Monarchy, a famous hotel existed in Vienna. Its name was Meissl & Schadn and its restaurant was very well-known for its high-end beef dishes.

For some decades now, a well-known chain of restaurants in Vienna that specialises in high-quality beef dishes has existed. Its name is Plachutta.

In 2000 Plachutta registered the trade mark Meissl & Schadn in class 42 for the running of restaurants and cafés. It was for use as a secondary trade mark. In brochures, menus, its cookbooks and other material it purported to continue the tradition of the old Meissl & Schadn and saw itself as its successor.

A short time ago, a new hotel opened on the prestigious Ring with a fashionable old Viennese-style restaurant called Meissl & Schadn. This restaurant also specialises in traditional, high-end Viennese cooking, using beef as the basis of many of its dishes. The existence of the trade mark Meissl & Schadn registered in the name of an established, famous competitor posed too great a danger to the new business. As a result, a cancellation action was started on the basis of non-use.

Plachutta used the trade mark Meissl & Schadn solely in print and that too only in order to point to the tradition of Viennese beef cooking. The trade mark had no specific and concrete connections to certain services which would enable consumers to distinguish these services from those of other enterprises. However, this is the essence and purpose of trademarks. Consumers were not able to distinguish the origin of certain specific services by hearing or reading the trade mark Meissl & Schadn from the same services offered by others. Consequently, a trade mark was not established. The mere use of it as a reference to an old tradition did not suffice. The trade mark Meissl & Schadn was cancelled due to non-use.

Normally, restaurant services are carried out under the name of the restaurant and this is also its trademark. The above case shows the difficulties that arise when trying to establish a second trade mark.

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 wave of office launches and lateral hires reflect the enduring patent disputes market, but booming AI, semiconductor and data centre markets are offering an even bigger IP opportunity
The hire of Frederick Nicolle as a partner continues Pinsent Masons' expansion while reducing Simmons’ patent prosecution offering in London to zero
The expansion into Granada forms part of a national ‘decentralisation’ strategy focused on providing proximity to research and tech businesses away from traditional hubs
Three successive wins have got the firm eyeing additional opportunities as ITC work booms
While many firms remain focused on generative AI, recent hires and practice launches suggest the next battle may be for lawyers who understand how AI is moving into the physical world
The explosion of data centres has prompted patent pool operators to create new licensing opportunities
The court struck out copyright claims brought by Ladbrokes owner Entain, saying that ownership details should have been completed before litigation began
Düsseldorf has overtaken Munich as the UPC's busiest division, while firms including Winston Taylor, Clifford Chance, and Hoyng Rokh Monegier featured in disputes involving Abbott, Essity, Amazon and Hurom
The managing partner gave up an equity partnership track in New York to build a practice in India. More than a decade later, she discusses entrepreneurship, leadership, and why women should not wait before taking the next step
Vice presidents Shinya Jitsuhiro and Hirohisa Suzuki discuss litigation trends in Japan, recruitment challenges and clients’ international expansion
Gift this article