Hands-on commentary on UPC decisions, key developments in IP law, and news from SONN.
Feb 24, 2023
In quite a remarkable decision of 2019, the Cancellation Division of the EUIPO had revoked one of McDonald's best-known trademarks, the BIG MAC, for reasons of non-use. The trademark BIG MAC had previously been…
Read more →Nov 2, 2022
Can the provision of services under a certain trademark outside the European Union constitute genuine use of that trademark within the EU? At first glance, one might think this is an easy question to answer. Outside…
Read more →May 19, 2021
Questions relating to the use of third parties' trade marks in the context of one's own advertising material are not as uncommon as they may seem at first glance: May I display the logo of the manufacturer of the…
Read more →Sep 24, 2020
After a bitter defeat in Lissabon against FC Bayern Munich football player Lionel Messi carried off a glorious victory inLuxembourg. It was already in 2011 that Messi wanted to expand his professional activities to…
Read more →Jul 18, 2019
Will conceptual differences between conflicting signs neutralize acoustic similarities and what does it mean for the injunctive relief if the understanding of the relevant consumers differs throughout the European…
Read more →Feb 11, 2019
A hotel in a skiing area known for its bar featuring scantily-clad dancing girls was found to have an infringing trade mark. The lower courts issued an injunction in a first partial judgment. A further partial judgment…
Read more →As a result of the implementation of some provisions of the European Trade Mark Directive (https://eur-lex.europa.eu/legal-content/DE/TXT/HTML/?uri=CELEX:32015L2436&from=DE), Sec 19 Austrian Trade and Service Marks Law…
Read more →This case is a dispute between two Turkish traders in foodstuffs in Austria. It is a case of trade mark opposition proceedings so that only the registered goods count and not the market fact that these food products are…
Read more →Feb 21, 2017
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…
Read more →Nov 16, 2016
Earth Wind & Fire is the name of a music band founded in 1965 by the drummer Maurice White. Since 1975 that formation has celebrated worldwide successes and earned Grammys and gold- and platinum albums. The band became…
Read more →Oct 18, 2016
In a decision published 5 July 2016 (T-167/15), the General Court of the European Union (GC) confirmed that the sign "Neuschwanstein" was fully protectable as a European Union trade mark. In 2011, the Free State of…
Read more →Aug 3, 2016
The famous Institute of Science and Technology in Maria Gugging requested cancellation of the above “IST”-mark (IM1010802) registered by a Düsseldorf based institute offering educational services in relation to sports,…
Read more →Jul 11, 2016
In a trademark dispute concerning the use of MAGIC MOUNTAIN for tourism services and, in particular, for the arranging and the organization of outdoor events and activity holidays, the Supreme Court now had a final word…
Read more →Feb 1, 2016
Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation has been published in the Official Journal of the European Union. The Amending Regulation will enter…
Read more →Jan 1, 2016
The Kornspitz was invented by the company Backaldrin as a new bakery product several decades ago together with the creation of the German-coined name, since then protected as trade mark in Austria. The name consists of…
Read more →McDonald's opposed the trademark MCBERG for clothing et al. in class 25, for services for education, entertainment et al. and in class 41 and for providing food and drinks, provision of accommodation in class 43.…
Read more →Apr 1, 2015
The basis of this case (OGH 4 Ob 98/14m "Feeling") was that as a defence against the assertion of an infringement of the Community Trade Mark "Feeling" in Austria a counter-action for revocation because of non-use and…
Read more →Feb 1, 2015
According to Austrian law, reasons for trade mark invalidity, such as bad faith, can be raised as defences in an infringement action. Such defences have to be decided as preliminary questions. For deciding on bad faith…
Read more →Nov 1, 2014
Since the reform of IP proceedings 2014, all appeals from the Austrian Patent Office are to be prosecuted before the Upper Provincial Court in Vienna (OLG Wien) with a further appeal to the Austrian Supreme Court (OGH).…
Read more →Sep 1, 2014
Within the EU the attack of a trade mark on the basis of a company name is often problematic with regard to proofs both against national trade marks and EU trade marks. According to the EU Trade Marks Harmonization…
Read more →Jul 1, 2014
This is a registered Community trade mark. Its owner and plaintiff owns a hotel in an Austrian skiing area situated directly at the skiing slope so that one can directly ski to and from the hotel. The defendant owns a…
Read more →Recently two decisions were handed down regarding payments for infringement of IP rights, one in a copyright case concerning use of a databank (4 Ob 133/13g), and one in a trade mark case concerning the mark GRANT's for…
Read more →May 1, 2014
An inventor (plaintiff) has concluded a contract with a firm (defendant) to market together his invented product under his trade mark. The contract was concluded for an unlimited period without clauses for termination.…
Read more →Nov 1, 2013
The assessment of the distinctiveness of trade marks consisting of a slogan remains a difficult issue before patent offices and courts throughout Europe. In a recent case, the Austrian Supreme IP Tribunal had to decide…
Read more →Jul 1, 2013
In a case on trade mark infringement, the Austrian Supreme Court developed its previous case law on the scope of protection of trade marks. The decision also deals with the defence of non-use of the plaintiff's mark in…
Read more →Jun 1, 2013
In a recent decision of the Austrian Supreme IP Tribunal an Austrian auditor company named CONFIDA requested cancellation of three younger trade marks, all including the word CONFIDA and registered i.a. for auditing…
Read more →May 1, 2013
In a recent judgment the Austrian Supreme IP Tribunal had to decide on a dispute between the legal successors of a company. The sign KASTNER had been used since the 16th century for a confectionary in a small town in…
Read more →Mar 1, 2013
In a recent judgment the Austrian Supreme IP Tribunal had to decide on the likelihood of confusion between the older figurative mark "e@sybank" and the younger Austrian figurative mark "e@syCredit". Whether "e@sybank"…
Read more →Feb 1, 2013
As already reported some time ago (news April 2011) RED BULL's trade mark "FLÜGERL" (meaning "small wings" in the German language) had been cancelled as the Austrian Supreme Court found the sign was only used in a…
Read more →Dec 1, 2012
The Austrian Supreme IP Tribunal recently sent some questions to the Court of Justice of the EU (CJEU) Luxemburg to clarify certain aspects concerning the requirements under which a trade mark becomes generic. In the…
Read more →Nov 1, 2012
At first sight one might think of music and not of liquor in connection with "Mozart". However, the Austrian Supreme IP Tribunal recently ruled descriptiveness of "Mozart" for liquor as being notorious. The owner of the…
Read more →The famous Austrian manufacturer of energy drinks Red Bull recently successfully enforced CTM 2534774, a trade mark consisting of blue and silver, whereas these two colours make up half of the mark each. Red Bull sued…
Read more →Jul 1, 2012
In Austria there is a producer for sweet products famous for its foamy sweets in the form of a bomb. The outer form of those sweets was denied trade mark protection back in 1976 since their bomb-form is technically the…
Read more →In one of its recent judgments, the Austrian Supreme Court had to decide on the likelihood of confusion between the word mark "Sinupret" registered i.a. for pharmaceutical products and the sign "Sinuvex" used for…
Read more →Apr 1, 2012
Lindt's golden bunny has - as is generally known - already hopped its way to Luxembourg in order to clarify under what conditions a trade mark application has been filed in bad faith (C-529/07). In a recent decision by…
Read more →Feb 1, 2012
In a recent decision the Austrian Supreme Court had decided a dispute between the trade mark owners of "ORAL B"® and "Dr. Best"®. Both companies produce toothbrushes. The dispute particularly focused on the construction…
Read more →Jan 1, 2012
This war concerns the use of the sign BUD and was fought between the famous brewery in České Budějovice distributing its in Austria famous "Budweiser Bier" and an Austrian importer of "American Bud" and "BUD light" of…
Read more →Some of the more vinophile IP enthusiasts might have heard of young Austrian wine called "Junker" coming from southern Styria. Already in 1986 some wineries from Styria joined together to the sell young white wine from…
Read more →Oct 1, 2011
In a recent decision the Austrian Supreme Court changed its case law with respect to merchandising articles. In the present case the defendant sold souvenir plates showing one of the famous Lipizzaner white horses of…
Read more →Sep 1, 2011
A merchant (not related to the firm Puma) in the perfume market sued a competitor for infringement of Puma's trade mark Puma's trade mark has been used for perfumes on the Austrian market through sales by means of its…
Read more →We can report an interesting decision of the Austrian Supreme Court (Oberster Gerichtshof (OGH)), applying the decisions of the European Court of Justice (ECJ) under C-532/06 on 02 Holdings Limited and C-487/07 L'Oreal…
Read more →Apr 1, 2011
Everybody who has ever been to Austria for skiing holidays, is very likely to have come across the famous mixed drink "FLÜGERL"; a "FLÜGERL" is a shot-like drink consisting of a RED BULL® and red or white vodka and is…
Read more →On the basis of its RED BULL- and BULL-marks for alcoholic and non-alcoholic drinks and class 3 goods like perfumes, the firm behind RED BULL has requested cancellation of the word mark PITBULL and the device mark…
Read more →Aug 1, 2010
In the Austrian legal system a concept or defence based on acquiescence or past tolerance of behaviour is unknown - only the statute of limitation exists. Acquiescence has been implanted into it as alien element only in…
Read more →The Austrian Patent Office offers as of July 1, 2010 the possibility of an opposition proceeding. Oppositions can be brought in against Austrian marks and the Austrian part of international marks, this after the…
Read more →May 1, 2010
End of December 2009, the Austrian Parliament enacted a significant Amendment to the Patent and Trade Mark Acts. The "Innovation Protection Amendment 2010" provided abolishment of annuities for the first five years for…
Read more →Oct 1, 2009
The uncertainties in the jurisprudence about the possibility to cancel domain names formed by using the names of others has now been clarified. In two decisions regarding domain names for websites criticizing the…
Read more →Jul 1, 2009
The "Postkantoor"-decision of the European Court of Justice (ECJ case C-363/99 "Postkantoor") has ruled among other points in point 6 "Directive 89/104 prevents a trade mark registration authority from registering a…
Read more →Jun 1, 2009
The world known carmaker MAZDA has among many others registered trade marks for the word MAZDA and for its logo, which both are famous trade marks, also in Austria. A firm in the province of Lower Austria offers chip…
Read more →Apr 1, 2009
The Office for Harmonization in the Internal Market (OHIM) will decrease its fees considerably as of May 1, 2009. In view of this reduction of OHIM fees, we will decrease our attorneys fees accordingly, resulting in a…
Read more →Apr 1, 2009
Within a very short period of time, the ECJ had to answer two questions from the Austrian Oberster Patent- und Markensenat for a preliminary ruling. Both questions concerned Art. 12 of the Trade Mark Directive, i.e. the…
Read more →
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