Trademark Registration
Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 6 months, if no objections or oppositions arise.
If I register my trademark in Austria, do I have protection in other territories?
No. Protection for the registered mark is limited only in Austria.
Do I need to sign a Power of Attorney?
Yes, a simple Power of Attorney is required.
Are there any benefits from using my trademark before filing an application?
Yes. Pre-filing benefits include:
- Show the mark’s distinctiveness;
- Defeat challenges on the grounds of non-distinctiveness.
Will there be problems if I don’t use my trademark after registration?
Yes. Your mark will be vulnerable to cancellation of registration on the ground of non-use.
What are the types of trademark that can be registered in Austria?
Any mark that can be represented graphically and can differentiate a product/service from others is acceptable for registration, including:
- Names
- Position marks
- Words
- Holograms
- Devices (with 2 dimensions)
- Sounds
- Shapes (with 3 dimensions)
- Colours
- Slogans
- Trade dress
What are the application phases after a trademark has been filed in Austria?
The sequence of trademark application in Austria in as follows: examination, registration, publication.
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Examination – Once the application was submitted to the trademark office, authorities will examine several factors to see if the mark is registrable. To avoid refusals, make sure that your mark is compliant with respect to morality, formalities, classifications, clarity, descriptiveness, etc.
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Registration – If the mark passed the examination stage, registration will be granted. Note that at this point, the trademark authorities have not yet checked if there are existing similar registered marks.
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Publication – The following details will be made available to the public: mark, name and address of applicant, number and date of application, goods/services, priority claim, representation and representative. Online publication will give a chance to third-parties to appeal and oppose.
What type of trademark is non-registrable?
The following marks are non-registrable:
- Marks that go against moral standards and public policy
- Words that have a general meaning (generic terms)
- Marks that consist of flags, symbols or names of regions, nations, states and international organization
- Marks that lack distinctiveness
- Marks that serve primarily as surnames
- Marks that serve primarily as name geographic locations
Does Austria use the "Nice Classification" system?
No. The Nice Classification system is not effective in Austria.
Is a European Union Trademark effective in Austria?
Yes. A European Union Trademark registration is effective in Austria.
Is there any possibility to claim priority in Austria?
Yes. The filing date in your home country can be claimed as the filing date in Austria if:
- Your home country is a member of the Paris Convention
- The filing date in your home country does not exceed 6 months at the time of your application in Austria
- Your home country is a member of the WTO (World Trade Organization)
What do I need to do to satisfy the use requirement?
You must use the mark within 5 years from the date the registration was granted. This jurisdiction mandates owners to use the mark for commercial or business purposes and the transactions must occur in Austria.
Once my trademark has been registered, for how many years will be valid?
A registered trademark in Austria is initially valid for 10 years. The computation will start on the date of registration.
What will be the renewal date of my trademark?
The first trademark renewal must be made 10 years from the date the registration was granted (at the last day of that month).
Is it legal to use my trademark even if it is not yet registered?
Yes. Unregistered marks can be used legally for goods or services.
Does having a registered trademark in Austria give me any right?
It is mandatory to register a mark in order to secure rights; this is the “first to file” rule.
What is the website of the national trademark office?
Is there any need to use my trademark before I apply for registration?
Actual use and intent to use are not required for registration.
What are the grounds for a Trademark Application to be opposed?
Violation of proprietary rights is a ground for the application to be opposed.
Who can contest my trademark registration?
Owners of an earlier registered mark can challenge the registration.
Is it possible to cancel a registration?
Yes. Registration of trademark can be cancelled on the following grounds:
- Issues of morality
- Proprietary rights
- Use of protected emblems or badges
- Bad faith
- Generic or broad meaning
- Conflict with famous and notorious marks
- Use of protected armorial bearings or flags
- Registration under agent’s name
- Rights under Article 8 of Paris Convention
- Mark is functional, misleading, descriptive, non-distinctive
- Use of geographical indication
- Rights in personal name
Are there any rights established by having a registered trademark?
Yes. Owners of a registered mark in Austria secure the following rights:
- Exclusive rights to use and make profits from the mark
- Rights to challenge later conflicting applications
- Rights to appeal for the cancellation of later conflicting registrations
- Rights to file an infringement case against third parties that use confusingly similar marks
- Rights to authorize other persons to use the mark
- Rights to appeal for the confiscation of counterfeit imported goods
- Rights to receive damages for infringement
How long is the opposition period?
The opposition period will start on the date the mark was published. For national registration, it will end three months after the mark was published. For international registration, it will end three months after the publication period.
Is Austria a member of the Madrid System?
Yes. Austria is a member of the Madrid Protocol and Madrid Agreement.
Do I need to present periodic statements of use?
No. Periodic statements or other filings that will prove the use of mark are not required.
When should I renew my trademark?
Trademark renewals must be done every 10 years.
What will be the renewal date of my trademark?
The first trademark renewal must be made 10 years from the date the registration was granted (at the last day of that month).
Is there any documentation that should be presented when renewing a trademark?
No documentation is necessary for renewing a trademark.
If my trademark expires, do I have a grace period?
Yes. A grace period of 6 months after the expiration date is available.
Basic Concepts
What is a trademark?
A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
Trademark Search
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. The other company may object to you using the trademark and legally prohibit you from doing so.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.