Trademarks are signs that make goods and services of different providers distinguishable from each other. Trademarks are also called brands, logos, trademarks or labels.
The proprietor of a registered trade mark shall have the right to prevent any third party from using in the course of trade, without his consent, a sign which is identical with, or similar to, the trade mark in relation to goods or services. The acquisition of the trademark right requires the registration of the trademark in the trademark register. Here the “principle of priority” applies in general – the earlier right takes precedence over the younger right. The filing date is therefore particularly decisive in trademark law, because “first come, first served”.
The most common marks are word marks, figurative marks (logos) and word and design marks (logo combined with word component). There are also a number of other types of trademarks.
Here is an overview of the types of trademarks:
A word mark consists exclusively of words or letters, numerals, other typographical characters or a combination thereof which may be typed.
This is a trade mark where non-standardised characters, stylisation or a particular sign layout or graphic feature or colour are used. This includes trade marks consisting exclusively of figurative elements.
Figurative mark with word elements (word and figurative mark)
A figurative mark consisting of a combination of word and figurative elements
Shape mark (“3D mark”)
A shape mark consists of or extends to a three-dimensional shape. It may include containers, packaging, the product itself or its design.
Shape mark with word elements
A shape mark containing word elements.
A position mark consists of the special placement or application of the mark on the product.
A design mark consists exclusively of a series of elements which are repeated regularly.
Colour mark (of a single colour)
A color mark is what the name says – a mark that consists exclusively of a single color (without outlines).
Colour mark (colour combination)
A trade mark consisting exclusively of a combination of colours (without outlines).
A sound mark consists exclusively of a sound or a combination of sounds. Movement mark A mark consisting of, or extending to, a movement or a change in position of the elements of the mark.
A multimedia brand consists of or extends to the combination of image and sound.
Hologram marks consist of elements with holographic features.
A patent protects a new technical invention. Patents are usually registered by technically trained patent attorneys.
A trademark, on the other hand, is a company symbol and in most cases a wording or logo.
To illustrate the difference: If a company invents a new welding technology and the company gives this technology an effective name for advertising purposes, a patent must be applied for the new technology and a trademark must be applied for the name of the technology.
The goods and services for which the trade mark is intended to be used in business must be listed in a register (list of goods and services) classified according to the Nice Classification. For cost reasons and in view of the obligation to use trademarks, it is recommended that only goods and services for which the use of the trademark by the applicant or with the applicant’s consent by third parties (e.g. licensees and franchisees) is actually intended within 5 years of registration are included in the list.
In principle, the trademark should also be applied for in the form in which it is used in business life. This is the only way to ensure secure protection. If a trademark is subsequently amended, a new application for the amended trademark is recommended in order to guarantee the full scope of protection.
Trademark protection only applies to the countries in which the trademark was registered. The trademark rights therefore only apply territorially to the country of registration. It makes sense, for example, to register your trademark nationally in Austria first if the entrepreneurial activity starts in Austria. In general, it can also be said that national applications are generally less complicated than supra- or international applications.
If the entrepreneurial activity is then extended to other countries, trademark protection should also be extended. An EU trademark application is a good option here. It grants protection in all EU member states, but is correspondingly more complex and time-consuming.
The fees for a trademark application depend on the country in which trademark protection is sought and on the number of classes of goods and services. The following fees are payable at the Austrian, German and European Trademark Office:
Austrian Patent Office (ÖPA): 280€ including 3 classes; 75€ extra for each class from the 4th class
German Patent and Trademark Office (DPMA): 300€ including 3 classes; 100€ extra for each class from the 4th class
European Union Intellectual Property Office (EUIPO): 850€ including 1 class; 50€ for the 2nd class and 150€ for each class from the 3rd class on
The status of the fees is April 2020. In addition to these fees, costs for legal advice and registration of the trademark must be added.
After an application has been filed, the trademark does not have to be used immediately – the law grants a certain transitional period. However, any person may request cancellation of a registered trade mark provided that it has not been put to serious distinctive use in relation to the goods or services for which it is registered, either by the proprietor of the trade mark or, with his consent, by a third party, within the five years preceding the date of filing of the application.
The trademark rights come into existence on the day of succesful registration in the trademark register. The term of protection ends ten years after the filing date. However, it can be renewed again and again for ten years by timely renewal (simply by paying the renewal fee).
The Registered Trademark symbol ® originates from the Anglo-American legal area, but is used worldwide. The ® may only be used if a registered trademark exists. It must also be noted that the reference is only used for the actually registered trademark and not for symbols or terms that cannot be protected.
For a clear identification of the sign as a registered trademark, the reference ® is highly recommended. In individual cases, however, the application should be legally examined. We will be happy to assist you in this assessment.
The protection of the brand should be constantly monitored so that imitators do not use the reputation of the brand unlawfully. Our firm therefore offers regular trademark monitoring for a flat fee of 29€/month (excl. VAT). The fee must be paid in advance for one year. At the end of the year, the client can decide whether the trademark monitoring is to be carried out for another year.
As part of trademark monitoring, the relevant trademark registers are monitored monthly for identical new applications. Should such a trademark be found, we will inform and advise you on the possible legal steps. It is also possible to have the trademark applications of a specific owner, e.g. a competitor, monitored.
Amazon Brand Registry makes it easy to find trademark infringements in a variety of Amazon stores worldwide. In addition, Amazon uses an algorithm to automatically monitor the stores for any trademark infringements using the brand details you enter.
The prerequisite is that your trademark has already been registered together with its registration number. Once your trademark has been registered, we will be happy to assist you with the registration of your Amazon trademark.
Increasingly, companies send “offers” or payment requests to trademark owners. The data for these companies is taken from the trademark register. In case of doubt, do not pay such payment requests, as they are often misleading invoices.
The Austrian Patent Office warns against this:
These companies use official-sounding designations which are intended to tempt property right holders to have their patent, trademark or design entered in unofficial registers or publications. For this purpose, registration offers are sent, accompanied by payment requests for large amounts that in no way correspond to the announced consideration. These providers have no connection whatsoever with the Austrian Patent Office. These companies probably obtain name and address data from our online services or official publications (Österreichisches Patent- oder Gebrauchsmusterblatt, Marken- bzw. Musteranzeiger), which can also be found via search engines. This data can be accessed legally by any person. Payment requests which do not originate from the Austrian Patent Office are irrelevant and have no effect on the registration at the Austrian Patent Office.