Trademark registration in Austria

Austria, located in the center of Europe, offers many advantages in terms of geographical and economic location. Austria is located between major countries such as Germany, Italy, Switzerland and the Czech Republic. This facilitated trade and the movement of goods, making Austria an important junction in the European transport system. Austria is also one of the countries with a stable and thriving economy in Europe. With industries such as tourism, technology, and financial services growing, Austria attracts the attention of businesses and investors. Therefore, more and more businesses have requests to expand their business scope here. One of the things to develop a business trademark here is the registration of a trademark. The procedure for registering a trademark in Austria is an important procedure to help protect the rights and reputation of businesses in the European and international markets. Viet An Law Firm will guide customers preliminarily on the procedure for trademark registration in Austria through the article below.

Legal basis

• Trademark Protection Act 1970 (amended by Federal Law published in Federal Law Decree I No. 91/2018 (BGBI. I No. 91/2018));
• Other relevant legal documents.

Definition of trademark in Austria

In Austria, a trademark is defined as any sign that can represent visually and has the ability to distinguish one business’s goods or services from others. This means that trademarks can be words, logos, slogans, symbols, shapes, or even sounds. Here are some of the main characteristics of the trademark in Austria:

• Pictorially representable: This means that they should be able to be described clearly and without causing confusion. For example, a word may be trademark, but sound may not (unless it is accompanied by a visual representation).
• Ability to distinguish one business’s goods or services from others: This means that the trademark must be unique enough that consumers can easily identify it with a particular mark.
• Registration or non-registration: A registered trademark is protected by law, while an unregistered trademark is not. However, unregistered trademarks can still be protected under unfair competition laws.

Conditions for trademark registration in Austria

In addition to the requirements for a full registration document, the applicant’s trademark also needs to meet specific conditions to be eligible for registration in Austria:

Distinguishability: The applicant’s trademark must be inherently distinguishable or already distinguishable through use. This means that it must be unique enough to clearly distinguish the applicant’s goods or services from others. Generic terms, descriptive terms, and symbols that have been commonly used in the applicant’s industry cannot be registered.

Availability: The applicant’s trademark must not be identical or confusing to an existing registered trademark for similar goods or services. The applicant may perform a preliminary trademark search prior to filing the application to check for potential conflicts.

Legality: The applicant’s trademark must not be contrary to public order, morals or applicable laws. Trademarks that are infringing, discriminatory or misleading cannot be registered.

Visual representation: The applicant’s trademark must be able to represent visually. This means that it must be described in a clear and non-confusing manner. Sounds, scents and flavors cannot be registered individually, but they can be protected if accompanied by visual representation.

Non-functionality: The essential characteristics of the product or its packaging cannot be registered as trademarks.

Exclusions: Some types of signs cannot be registered as trademarks in Austria, such as geographical indications, appellations of origin and flags.

Use: Although not a condition for initial registration, the applicant’s trademark must be used within five years after registration to avoid cancellation.

Trademark registration dossier in Austria

To register a trademark in Austria, the applicant needs to prepare a set of documents as required by the Austrian Patent Office (Österreichisches Patentamt – ÖPA). Here are some required documents:

• Application form: Download the official trademark application form from the ÖPA: https://www.patentamt.at/ website and complete the required information on the form, including:
  • Information about the trademark owner (name, address, nationality)
  • Detailed description of the trademark (name, logo, image, written description)
  • List of types of goods or services for which the trademark will be used
• Clear copy or drawing of the mark:  Electronic drawings should be submitted in a format acceptable to the ÖPA. If submitting paper copies, it is necessary to ensure clear image quality, without blur.
• Proof of trademark use (if applicable): If the trademark has been previously used in Austria or abroad, the applicant can provide evidence such as invoices, advertising, product packaging.
• Authorization agreement (if applicable): If the applicant authorizes an intellectual property representative to file an application on his or her behalf, a valid authorization agreement is required.
• Documents paid fee: The fee for trademark registration in Austria depends on the type of trademark, the number of groups of goods/services registered.

Trademark registration fees in Austria

The fee for registering a trademark in Austria depends on a number of factors, including:

• Type of trademark: The fee for registering an individual mark is higher than for a collective mark or certification mark.
• Number of groups of goods/services registered: The fee increases according to the number of groups of goods/services included in the registration. Additional groups have their own fees.
• Application method: Filing online is usually cheaper than filing paper.

Here are some reference fees (as of February 2024):

• Single trademark, 1 group:
  • Apply online: €280
  • Submission: €330
• Single trademark, each additional group: €75
• Collective mark/certification, 1 group: €560
• Collective mark/certification, each additional group: €151

You can use the fee calculator on the Austrian Patent Office website) to estimate the exact cost for your specific case: https://www.patentamt.at/en/patents/apply-for-patents/fees

Also, it should be noted that the above fees only include the initial registration fee. Other fees may be incurred during the application process, such as due diligence fees, counter-fees, or renewal fees.

How to file for trademark registration in Austria

To file for trademark protection in Austria, you can apply using the following filing methods:

• Direct filing: You can come directly to the Austrian Patent Office at 42 rue Dresdner Str. 87 1200 Wien to file your application and related documents.
• By Post: You can send your application and all necessary documents via postal or courier service to the address of the Austrian Patent Office at 42 rue Dresdner Str. 87 1200 Wien
• Submit online via website: https://seeip.patentamt.at/Login/Index?ReturnUrl=%2fDownload When applying online you should pay attention to the payment of the relevant fee according to the instructions of the Austrian Patent Office.

Registration of trademark protection in Austria through the Madrid System

The Madrid system is a convenient and cost-effective solution for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• Austria accessed the Treaty of Madrid on 1 January 1909.
• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Austria accessed the Madrid Protocol on 13 April 1999.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Application consists of the Madrid Single of Vietnamese origin and the Madrid Single with the Vietnamese designation.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or French;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of groups of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service in Austria of Viet An Law Firm

• Carry out the search and notify customers in writing of the results of trademark search in Austria;
• Drafting dossiers and directly submitting and monitoring the status of trademark filings in Austria on behalf of trademark owners;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in Austria;
• Assist in monitoring, representing the resolution of objections and feedback with intellectual property representatives carrying out procedures in Austria.
• Receive dispatches, certificates and hand over to customers (if any).

If you need to apply for trademark registration in Austria, please contact Viet An Law Firm for the most effective support.