AUSTRIA: An Introduction to Intellectual Property

Background

The current economic situation is very challenging for the Austrian industry. On the one hand, inflation and higher labour and energy costs are slowing down growth. On the other hand, there is a big need for transformation that drives innovation in SME companies. A lot of the new patent applications originating from Austria include green tech and computer-implemented inventions. As many companies are closely tied to German automakers, they must find new fields of activity. Battery technology, hydrogen conversion and storage are worth highlighting here.

Patents

The year 2024 was marked by the increased use of the unitary patent and the first case law of the Unified Patent Court (UPC) (Vienna also has a local chamber). A first case in a preliminary injunction proceeding was already heard in September 2023. In summer 2024, a local division had to deal with questions of the public accessibility of case documents, as well as with issues concerning joinder of parties. Collaboration with judges from other countries within the UPC brings in new perspectives.

As the UPC has had to deal with the question of secrecy of evidence (as mentioned above), a short look at national Austrian practice seems appropriate here. In general, a plaintiff must produce all evidence to prove that the defendant has infringed a patent. However, there is often only one way to access relevant evidence regarding the question of infringement at defendants’ or third parties’ premises. There is the possibility of requesting a preliminary injunction for preservation of evidence. As such, cases have occurred where machines at customers of the defendant were inspected by a bailiff and a court-appointed expert, who collected the evidence and provided a protocol for the onsite inspection.

As the general rules for the requesting of preliminary injunctions in Austria were not designed for the preservation of evidence, this newer possibility is not particularly well implemented, and case law is not yet well established. Nonetheless, use of the preliminary injunction for preservation of evidence is important and helpful, especially in view of evidence collection for indirect patent infringement proceedings. For specified documents only accessible to the defendant, the plaintiff in a running infringement proceeding may request that such documents be produced by the defendant. It is worth noting that in Austria patent infringement in a commercial way is not only a question of civil law but also of criminal law. Patent infringement is an offence entailing private prosecution in Austria, and is only prosecuted upon the request of the injured party. Such a criminal proceeding offers more possibilities for accessing evidence at the patent infringer or third parties.

If a patent litigation proceeding is pending, a party to the proceeding can request the production of a document by the other party, or can request the production of physical objects for inspection by the opponent.

Designs

In terms of design protection, change is in the air. The EU’s design law reform will bring changes to procedural rules as well as to substantive law. Of relevance for Austria are regulation changes for the spare parts market, 3D printing and transit. Regarding multiple applications, the removal of the one-class requirement will certainly make things easier for applicants. For Austria, not all areas of change will require implementing measures.

Trade Marks

A look towards trade marks shows that Austrian brands are very active in terms of trade mark protection, especially before the European Union Intellectual Property Office (EUIPO). However, national trade mark applications are slowing down following a COVID-19-related upturn.

Some insight into the trade mark prosecution procedure in Austria is worth highlighting. If the applicant is neither domiciled nor has a place of business in Austria, said applicant must be represented in the application procedure (either by a professional or a non-professional representative). If the applicant’s domicile or place of business is in the EEA or in Switzerland, an Austrian power of attorney for service is sufficient in any case. If the applicant does not have their place of residence or a branch office in Austria, a professional representative (duly authorised) is necessary.

The trade mark examination procedure essentially consists of two procedural steps: a formality check and a legal check. If the trade mark meets the registration requirements, it will be entered in the trade mark register under a serial number of registration, and the applicant will receive a registration certificate. In addition, the trade mark will be published in the Austrian Trade Mark Gazette.

For trade marks with graphic elements (words with upper- and lower-case letters, special fonts, figurative elements, colours, etc), trade mark images must be submitted.

Also of potential interest is the possibility of protection of geographical indications in Austria. Different protection options are available depending on the type of geographical indication:

• only for qualified geographical indications and certain product groups;
• protection throughout the EU by means of entry in a register maintained and operated by the European Commission, according to Regulation (EU) No 1151/2012 and the relevant implementing rules;
• generally, for all other types of geographical indication and all products/services;
• protection as a collective trade mark of an exceptional nature (geographical collective trade mark according to Section 62(4) MSchG; and
• protection according to the rules of the Austrian Federal Law Against Unfair Competition (UWG).

Regarding trade mark litigation, in a recent interesting decision relevant to luxury brands, the Austrian High Court ruled that anyone who uses another’s trade mark and invokes exhaustion as a defence must prove the necessary facts, unless this would enable the trade mark owner to foreclose the market; in such case, the trade mark owner’s opponent would again have to prove this.

Finally, it is worth mentioning that the Austrian Patent and Trade Mark Office has celebrated its 125th anniversary. The Office has been quite involved since its foundation in terms of international collaboration in the IP field, with key basic arrangements being negotiated in Vienna (prior to the Paris Convention). The Austrian Office is still active as a Patent Cooperation Treaty (PCT) search office for various countries.