Introduction of Opposition Proceedings in Austria
- On 18 November 2009, the Austrian Parliament adopted an amendment to Trademark Protection Act 1970 (MSchG), introducing opposition proceedings. Sections 29a to 29c MSchG, which constitute the core provisions of this new relative registration obstacle, will enter into force on 1 July 2010.
- Within 3 months from publication in the Austrian trade mark bulletin (Markenanzeiger), the owner of any prior registered and used trade mark may oppose the registration. It is to be noted in this context is that only owners of earlier marks or trade marks applications may file an opposition according to Sec. 29a(1) MSchG, but not owners of other rights (such as, e.g., company names, personal names, designs etc.). In case of an international registration extended to Austria, the deadline starts on the first day of that month which follows the publication by WIPO.
- The filing of an opposition will trigger a fee of EUR 150 (Sec. 23 Patent Office Fees Act). The opposition has to be received by the Patent Office – contrary to most other procedural deadlines in Austria – not later than on the last day of the deadline.
- No restitutio in integrum shall be admissible against the failure to observe the deadline for filing the opposition and for paying the opposition fee. The cause may lay in the fact that even after expiration of an opposition’s deadline, a request for declaration of invalidity may be filed.
- The owner of the opposed trade mark may file his observations within an adequate and extendable time period set by the opposition division. He may also allege the failure to genuinely use the opposing trade mark, if it is older than 5 years. In this case, the opposition proceedings shall be suspended until the decision on the revocation action against the opposing trade mark will become final and unappealable.
- The procedures of the opposition proceedings are almost identical with those of the cancellation proceedings. By order of the Office or upon the request of one party, an oral hearing may be scheduled. After collection of evidence, that member of the relevant division (that is the national legal division or the international legal division) who handles the case shall render his decision. Each party shall bear its own costs of the opposition proceedings.
- Against the decision in the opposition proceedings, an appeal lies to the Board of Appeal. The decision of the Board of Appeal may be contested before the Supreme Patent and Trade Mark Board.