Introduction

A trademark not only protects products or services from companies – it is a real competitive advantage. However, before a trademark is registered with the Austrian Patent Office (ÖPA), the office checks whether certain grounds for refusal of registration exist. Other grounds are only examined by the ÖPA in the event of an opposition.

Absolute grounds for refusal – what the Patent Office examines on its own

If a trademark application is formally correct, the ÖPA checks whether absolute grounds for refusal of registration exist. These are reasons why a trademark cannot be registered at all – regardless of whether identical or similar brands already exist. The ÖPA and also the EUIPO examine them automatically with every application. Some of these obstacles can be overcome, others cannot.

The most important absolute registration obstacles in practice are:

Lack of distinctiveness
The trademark must be suitable to distinguish the products of a company from such of others. This obstacle often occurs with, e.g., color marks, shape marks, purely promotional slogans, or very simple graphic elements.

Exclusively descriptive signs
If the trademark exclusively describes the characteristics of the goods or services for which protection is sought, this registration obstacle exists.

Example: "Wet Farts" for joke items, because:

"The relevant consumers would perceive the sign as providing information that the novelty prank stink spray, namely, novelty toys in the nature of placebo sprays for playing jokes are practical joke devices that imitate/reproduce the smell of wet farts. Therefore, the sign describes the kind, and intended purpose, of the goods."

“Generic terms”
Generic terms must also not be monopolized.

Examples: "Computer" for computers; "Apple" for fruit (but not for computers).

These three grounds for refusal of registration can be overcome by proving that the mark has acquired distinctiveness through use, thus being regarded as an indication of origin.

In addition to the aforementioned registration obstacles, there are several others, such as:

·       Deceptiveness

·       Violation of public order or good morals

·       Exclusively technically conditioned trademarks (especially for shape marks)

·       Official signs and emblems

Relative grounds for refusal – what the Patent Office does not examine on its own

Unlike in some other countries, the ÖPA and the EUIPO do not automatically consider prior rights. Such relative grounds for refusal concern earlier rights of other companies. The ÖPA only examines these if the owner of the earlier mark files an opposition against the registration of the trademark or initiates cancellation proceedings.

For EU-Trademarks, an opposition can be filed BEFORE registration, potentially delaying the registration significantly. For an Austrian trademark, the opposition occurs AFTER registration – thus, one can more quickly obtain an Austrian trademark, on basis of which one can assert claims, in particular to request an injunction.

TIP

Before filing a trademark application, it should be checked whether absolute or relative registration obstacles exist. Nothing is more frustrating than registering a trademark and establishing it in the market only to receive a cease-and-desist request years later.

ZEMANN IP supports your company with the registration and enforcement of your trademarks.