refers implicitly but necessarily to the product in question,
namely in a specific way and manner.
This decision concerning the product Nepafenac, Vienna
Upper Provincial Court, 10.02.2016, 34 R 138/15m,
was released in connection with a SPC application for a
product whose active ingredient was not mentioned and
defined in the specification and claims of the basic patent.
An SPC application was rejected by the Austrian Patent
Office, the VUPC and Austrian Supreme Court because
it concerned a product containing a combination of three
active ingredients, whereas in the basic patent only two
active ingredients were specifically mentioned. It was
held that an SPC can be granted only for a product that
is covered by the scope of protection of an upright basic
patent. An active ingredient which is just mentioned
as “other therapeutic constituent, if applicable” is not
disclosed by the basic patent.
In the course of an infringement dispute of a Community
design the Supreme Court had again the opportunity to
emphasise some criteria, namely:
• The matter of design protection is not the product per
se, but its appearance (therefore an infringement can
occur even if the products are completely different).
• An infringement is given if an “informed” user gains the
same overall impression (an “informed” user has more
knowledge than an “average consumer” without being,
however, an “expert of the art”).
• A comparison between the design supporting the
plea and the infringing product has to be performed
mentally on the same level of perception (eg, if the
design is registered as a line drawing then the product
has to be brought into the same level of abstraction
before performing the comparison).
Exhaustion of trademark right
A foreign group distributing its branded goods in the
European Economic Area (EEA) by way of a selective
distribution system detected that an Austrian company,
which is not a member of this system, offers and sells
branded goods which, however, were not intended for the
The group sued the Austrian company for discontinuance
and at the same time requested a temporary injunction
because, according to its view, the trademark right was not
The Austrian company objected in that it had obtained the
branded goods from a trader in the EEA but cannot prove
it without revealing its source of supply, which then would
dry up. This was accepted by the court of first instance
(Vienna Commercial Court), which assumed a reversal of
the burden of proof to the plaintiff.
As the plaintiff did not prove that its trademark-right was
not yet exhausted the request for temporary injunction was
The recourse court (VUPC) released, however, the
temporary injunction which was also approved by the
Supreme Court. It held that a selective distribution system
must not necessarily lead to a market segregation which
could result in different selling prices in different countries.
The burden of proof that such a segregation took place did
lie, however, with the defendant because the prerequisites
for a reversal of burden of proof to the plaintiff were not
given. As the defendant did not prove the exhaustion of the
trademark right of the plaintiff the latter had to succeed.
Similarity of goods
The VUPC departed in a recent decision from the legal
practice of the Nullity Department of the Austrian Patent
Office as well as the EU Intellectual Property Office.
It declared on one hand “cacao” and on the other hand
“coffee and tea” as well as on one hand “sauces, mustard,
vinegar and other condiments” and on the other hand
“preserved and dried vegetables” as not similar.
In the course of a discontinuance suit the Austrian Supreme
Court came to the following conclusion with regard to the
scope of protection of a piece of art with a technical effect.
The question of whether technique and art are combined
in a piece of work and represent a piece of art in the sense
of the Austrian Copyright Act (Urheberrechtsgesetz) can be
solved only by investigation of how much the used figurative
elements are determined technically and how much they
were merely chosen because of their configuration and
for reasons of taste, beauty and aesthetics. The question is
therefore whether the configuration is to be attributed to
the technician or the artist.
The legal definition as a piece of art does not depend on
the mere subjective ideas or considerations of the creator,
his/her inspiration and his/her act of creation, nor from
opinions and impressions of design experts or other third
persons, but from the objective shape of the piece of work. n
Peter Israiloff is an attorney at Barger Piso & Partner. He
can be contacted at: email@example.com
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