Austria is also a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.
Austria is a “first-to-file” jurisdiction, which means that except in some specific cases, the rights to a trademark are granted to the first person to file it, not the first person to use it. Use of the trademark before registration is not necessary and will not help overcome objections raised on grounds of lack of distinctiveness.
Although it is not necessary to use the trademark for it to register, it must be used within a period of five (5) years since the last use, otherwise it will become vulnerable to cancellation for non-use. The amount of use in Austria must be on a commercial scale.
The Austrian trademarks office (ÖPA) will examine the application to check whether the trademark complies with the requirements for registration. Once the application is accepted for registration, the grant of registration will be published, marking the beginning of a three-month period during which third parties can file an opposition against it.
Austrian trademarks are valid for ten (10) years from the application date. The renewal can be applied as early as one year before the expiry date until the last day of the month of the renewal date. There is a grace period of 6 (six) months after the expiry date when the trademark can still be renewed provided a late renewal fee is paid.
If you register a combined trademark (which includes both word elements and figurative elements) in Austria, the exclusive right to use the trademark is limited to a use of the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.