RECENT DEVELOPMENTS IN THE
AUSTRIAN IP LANDSCAPE
An amendment to Austria’s Patent Attorneys’ Act, which
involves slight adjustments to several IP acts, is under
consideration. Its main focus lies on freedom to provide
services of patent attorneys within the EU.
Patents and utility models
A patent infringer was successfully sued in Germany for
discontinuance, elimination, accounting and information
regarding distribution channels of the infringing goods. The
plaintiff realised that its European patent was also infringed
in Austria, where it also launched an infringement suit.
The patent infringer raised the objection that the plaintiff
had already forfeited its right to sue because the interval
between the filing of the first suit in Germany and the follow-up
suit in Austria was longer than three years (the period
of limitation in Austria). However, the Austrian Supreme
Court did not accept this defence and held that according to
the EU directive on IP enforcement, the right to information
is not restricted to the territory of one member state.
As a consequence, the term of prescription in Austria
started no earlier than the receipt of the information
request in Germany, which meant the Austrian suit was
filed in good time.
In the preliminary proceedings of an infringement suit
concerning a utility model, the Vienna Commercial
Court (court of first instance) rejected the request for
discontinuance because the request was regarded as
indefinite for not naming precisely all the features of claim
1 of the infringed utility model; instead, it was merely
directed to enjoin the defendant from infringing “claim 1”
and only cited some of the features as examples.
The Commercial Court followed established legal practice
which is also still in force in Germany. However, upon
appeal by the plaintiff, the Vienna Upper Provincial Court
(VUPC, court of second instance) released a landmark
decision in that it accepted the language of the request. It
held that for the specification of an injunction order it makes
no difference whether the scope of protection is described
by a literal quotation of the respective claim or just by
referring to the respective claim with a further specification
by a demonstrative reference to essential features.
The Court of Justice of the European Union (CJEU)
released a judgment concerning criteria for exclusion of
Community design protection when the appearance of a
product is dictated by its technical function. This judgment
is a landmark in the EU and also applicable for domestic
designs. The key sentences are:
1. In order to determine whether the features of appearance of
a product are exclusively dictated by its technical function,
it must be established that the technical function is the only
factor which determined those features, the existence of
alternative designs not being decisive in that regard.
2. In order to determine whether the relevant features
of the appearance of a product are solely dictated by
its technical function, all the objective circumstances
relevant to each individual case must be taken into
account. In that regard, there is no need to base those
findings on the perception of an ‘objective observer’.
In several decisions, the VUPC denied registrations of
trademarks for pharmaceuticals (eg, ‘Bronchocold’;
‘Bronchakut’; ‘Bronchonight’; ‘Uroprotect’; and
‘ViruProtect’) which consist of two parts, one describing the
type of protection, the other the field of application, because
consumers will merely understand them as descriptive.
The VUPC diverged from established legal practice by holding
that “pharmaceutical preparations” and “medicines” on one
hand and “preparations for destroying vermin, fungicides,
herbicides” on the other hand are not similar. So far, in most of
the cases they were, more or less, regarded as similar because
they are listed in the same international class 5.
The popular Original Salzburger Mozartkugel (a chocolate
ball with nougat, marzipan, etc) was invented in 1890 in
the city of Salzburg and, since then, has been produced
and sold there. The wrapping of the ball (a silver paper
depicting a blue circle logo showing the head of Mozart
28 IP Pages 2019 www.worldipreview.com