News and Insights

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

National trademark, EU trademark - what is the difference?

National trademarks and EU trademarks, apart from the respective area of protection, basically offer similar protection. However, differences may arise in practice.
Mag. Sebastian Feurstein
13. October 2021
In addition to purely national trademarks, European trademarks (EU trademarks) can also be applied for in the EU. Apart from the respective area of protection, both trademarks basically offer similar protection. In individual cases, however, differences may arise in practice.

Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection.
With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.
However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks.
The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice. In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage.
However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned.
The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice. The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO.
Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Mag. Sebastian Feurstein

Problem serial marks - partial copy allowed?

Protected trademarks are often used together with other signs. A recent decision of the Austrian Supreme Court gives reason to deal with so-called serial marks.
Dr. Gerald Mair
8. September 2021
Protected trademarks are often used together with other signs. Recently, the Austrian Supreme Court confirmed that trademarks, that are completely included into another trademark, are regularly considered to be confusingly similar. This is often justified by the fact that consumers could assume that it is a variation of the product that was originally marked with the copied part - i.e. it is a serial mark.

Specifically, the OGH decision 4 Ob 32/21s of 21.5.2021 dealt, inter alia, with the question whether the following Austrian trademark No. 293.410:

should be considered as similar to international trademark No. 777429, which is also extended to Austria:

In this case, an opposition against the younger trademark would be successful.

In addition to the question of genuine use, the Supreme Court also dealt with the question of whether the figurative element of the mark is sufficiently secondary to the word element to exclude any likelihood of confusion.
The Supreme Court answered in the negative: There was a likelihood of confusion between the opposing mark (figurative mark) and the opposed mark because the figurative element in the latter was not sufficiently relegated to the background, but because from the viewer's perspective it would be assumed with a certain degree of probability that the combination of numbers and letters as well as the smaller word "IMMOGROUP" were an additional specification of a product or a service originating from that company which could already be identified by the pictured bar chart. Moreover, the Court finds that signs which are not registered in color, such as the marks cited in opposition, are, as a rule, capable of being confused with similar signs in all colors.

We agree with this assessment, in particular with the argument that many companies use their signs as main and secondary marks - often as serial signs. This is particularly popular among manufacturers of motor vehicles, where the company's trademark and the trademark of the specific vehicle line are used in combination.

However, this interpretation of the law is not always followed so clearly; one of the reasons for this is that there are legal weaknesses here. In the current trademark system, there is no way to protect serial marks in a legally secure and cost-effective manner. First of all, this is due to the "compulsory use": a trademark must always be used as it is registered in order not to run the risk of being cancelled from five years after registration. Continuous use that deviates from the registered use can therefore lead to cancellation of the trademark. If serial signs are used - i.e. main and secondary signs together - it cannot be clearly stated whether this is seen as the use of two individual marks; or only one combination mark.

The boundaries are difficult to draw here, which is why, as a rule, all combinations and all single marks must always be registered. On the other hand, it may be possible to take action against a foreign sign that is similar in itself only if the main and secondary marks have been protected in combination. If the foreign sign is not considered similar to the main or secondary mark by the relevant public, it is possible that a trademark infringement is only affirmed if both individual marks are protected together - i.e. as a combination. In order to obtain ideal protection, one would therefore have to protect all individual secondary marks as well as all combinations between the main mark and the secondary mark.

The case mentioned above shows the problem in particular with regard to the serious use. There, the "Three Stripes" mark was always used only in combination with the word element OVB:

The other side argued that such use was not serious, since the three stripes were not used on their own. The problem was apparently "solved" by the fact that both the Regional Court Vienna and the Supreme Court consider the graphic element (three stripes) to be seriously used, even if the sign was apparently not used in a stand-alone position. Up to now, a sign has generally only been considered to be seriously used if the distinctive character is not affected by the different uses (cf. Section 33a(4)(1) Trademark Act).

In my opinion, however, that is the case here: the use together with the distinctive word part OVB is sufficient to affect the distinctive character of the sign when viewed as a whole. In this respect, previous case law has often been very strict (cf. for example OPMS of 28.11.2007, Om10/07 - Rothmans). However, it could be argued that no combination sign is used here, but two independent signs are involved from the point of view of the public. However, this is not clear from the Supreme Court decision.

Even if the result of the decision is welcome, this does not solve the problem of serial signs. A clarification in the law would be desirable.
Dr. Gerald Mair

Copyright - new decision on photos

In everyday business life, copyright issues are comparatively rarely discussed. A new decision of the Austrian Supreme court shows what needs to be discussed in such cases.
Mag. Sebastian Feurstein
25. August 2021
COPYRIGHT: PHOTO DECISION EASES HANDLING IN EVERYDAY BUSINESS LIFE

Photos, texts, presentations - copyright issues frequently arise in everyday business life. However, the granting of rights to such works is comparatively rarely discussed or recorded in writing. This can lead to unpleasant surprises. The Supreme Court recently ruled in favour of the client in such a case.

In the specific case, a professional photographer had taken photos for a company for more than 15 years. The photos were used by the company almost without restriction for various purposes and usually without any copyright notice. There was no explicit agreement on permissible use. When an attempt was made in 2017 to put the lived business relationship in writing, the contract negotiations failed. The photographer went to court: The company should only be allowed to use the photos in a limited way and had to name him as the author.

The defendants successfully defended themselves against this at first and second instance. Now the Supreme Court has confirmed the dismissing judgements (OGH of 20.04.2021, 4 Ob 215/20a).

As a matter of principle in civil law, contractual relationships with rights and obligations can also arise without an explicit agreement ("tacit" or "implied"). The content of the contract is then primarily determined by what was intended (but not expressed) by both sides. If both sides had no idea at all of what they wanted with regard to individual (ancillary) points, or if these ideas differ from each other, legal standard rules can be applied in some cases. If these do not exist, what counts is usually what average, reasonable contracting parties would have agreed.

In copyright law, there are two important special rules for cases where the scope of the grant of rights has not been expressly agreed: On the one hand, as the Supreme Court emphasised once again in its decision, a grant of rights is in principle limited to the purpose for which the work was originally granted. On the other hand, according to the law, in some cases (e.g. edits) it must be assumed in case of doubt that the author granted or intended to grant fewer rather than more rights.

In practice, this leads to a situation where, in the case of such copyright contracts that are not expressly regulated, an entrepreneur must suddenly realise that he does not have the necessary rights for a desired use. This can be the case in particular if he originally acquired the respective work for a specific purpose (e.g. internal company use) and now wants to use it for a different purpose (e.g. use in marketing documents).

However, in the above case, the company was able to convince the courts that there was a sufficient implied agreement between the photographer and the company for the use. In doing so, the court considered the following points to be essential:

- from the outset, the company made it clear that the photos would also be made available to third parties;
- the photographer had never objected to the publication of his photos,
- the photographer also complied with the requirement that the photos he produced should only be made available to third parties with the company's consent;
- the photographer also almost never expressed a wish to be named;
- the photographer's invoice contained the note "Copyrights-use right unrestricted except posters", and a use for posters, trade fair walls, roll-up city lights etc. did not actually take place.

The Supreme Court thus saw a sufficient basis for the legal assessment of the lower instances that the company has an almost unrestricted right to use the photos. This decision is welcome, as it creates more certainty for companies that regularly work in the copyright context without a special agreement. At the same time, however, it also clarifies that even small points such as the note on the invoice or the clear communication that a work is used without restriction can help to prevent the risk of a subsequent restriction of use.
Mag. Sebastian Feurstein

3D-trademark or design right?

Product forms can be registered as trademarks and (also) as designs. However, some differences have to be considered.
Mag. Valeria Miozzo
11. August 2021
As discussed in our previous article by senior partner Rudolf Pendl, recently the General Court of the European Union stated that the shape of Guerlain’s lipstick case is entitled to trademark protection. However, in certain cases the shape of a product may (also) be protectable as a design.

Both trademark and design protection are registered rights which can help to secure the intellectual property of a company. However, there are some key differences to both kinds of rights:

The main function of a trademark is to enable consumers to distinguish the goods or services of one undertaking from those of other undertakings. One of the main requirements for their registrability is, therefore, their distinctiveness. This applies not only to “traditional” trademarks consisting of names or figurative elements, but also to trademarks consisting of a certain shape or packaging of a product. Such shapes and packaging are protectable in case they enable the customers to associate the goods or services with individual undertakings.

Designs, however, do not have to be distinctive, but must rather be new and have an individual character, i.e., they must not be identical to previous designs and produce a different overall impression from designs previously made available to the public.

These different requirements for the protectability of trademarks and designs are based on the respective aim of legal protection. Whereas the purpose of a trademark is, among other things, to enable customers to identify the origin of a product or service from a company, the focus of the design is primarily on the protection of the company’s investment for the development of a new shape.

In addition, both IP rights have different terms of protection. While trademarks are registered for 10 years and can be renewed indefinitely, designs can be registered for 5 years, renewable up to a maximum of 25 years. However, despite the limited protection in time, the design right offers several advantages over three-dimensional trademarks.

Firstly, it can be difficult to get a three-dimensional trademark registered. In contrast, the registration procedure for design rights is relatively fast. Therefore, design rights are particularly suited to protect product lines that vary quickly in time and have a limited life cycle (e.g., fashion products that are produced and marketed only for the time of a season). In addition, EU legislation also provides protection for unregistered Community design rights, which protect an unregistered design to a limited extent (against copying only) for a maximum period of three years from the moment it is first made available to the public in the EU. Unregistered trademarks are usually only protected when they are sufficiently known among the relevant public which is generally rather the exception.
Unregistered Community design right can even be transformed in a registered design right if the application for registration is made within 12 months after the product incorporating the design was first made available to the public in the EU. Therefore, they are particularly useful for companies to evaluate the performance of the product in the market before deciding whether or not to proceed with registration.
Trademarks and designs, therefore, meet different needs and are granted on the basis of different requirements. Thus, if the registration of a three-dimensional trademark is refused, this does not mean that the shape of the product cannot be protected as a design right. In contrast to trademark applications, the competent authority does not automatically check whether the design is new or has individual character when a design application is filed, but only at the request of a third party. This means that a design right offers faster protection, but also more legal uncertainty if a competitor takes action against the design.
In the case of Guerlain’s lipstick, the shape of the product had already been protected as a Community design right since 2008 which helped to prevent competitors to mimic the unique design. In the trademark proceedings ten years later, the application was initially rejected, but in the end the lipstick case was deemed distinctive by the General Court of the European Union and approved as a trademark.
This shows that the clever use of design and trademark protection can help to protect the investments made by a company to create products with an innovative appearance. Since both forms of protection are cumulative (one does not exclude the other), both IP rights should always be considered for products with a particularly innovative or distinctive shape which could prove to be valuable assets for the owner.
Mag. Valeria Miozzo

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos

THE NEW PENDL MAIR WEBSITE

Starting May 2022 PENDL MAIR will be represented by a new website. This is a big step for PENDL MAIR Attorneys at Law. Who will visit it? Who will not visit it? There is a lot to talk about. Lets review it in this Article.
Andor Sipos
12.04.2022
Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection. With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.

However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks. The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice.

In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage. However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned. The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice.

The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO. Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.
Andor Sipos
PENDL MAIR Attorneys at Law

Annagasse 8-10
1010 Vienna, Austria

T: +4315129448
F: +431512944833

office@pm-law.at