Austria: The difficulties of establishing two trade marks

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Austria: The difficulties of establishing two trade marks

Sponsored by

sonn-400px.png

During the time of the Austro-Hungarian Monarchy, a famous hotel existed in Vienna. Its name was Meissl & Schadn and its restaurant was very well-known for its high-end beef dishes.

For some decades now, a well-known chain of restaurants in Vienna that specialises in high-quality beef dishes has existed. Its name is Plachutta.

In 2000 Plachutta registered the trade mark Meissl & Schadn in class 42 for the running of restaurants and cafés. It was for use as a secondary trade mark. In brochures, menus, its cookbooks and other material it purported to continue the tradition of the old Meissl & Schadn and saw itself as its successor.

A short time ago, a new hotel opened on the prestigious Ring with a fashionable old Viennese-style restaurant called Meissl & Schadn. This restaurant also specialises in traditional, high-end Viennese cooking, using beef as the basis of many of its dishes. The existence of the trade mark Meissl & Schadn registered in the name of an established, famous competitor posed too great a danger to the new business. As a result, a cancellation action was started on the basis of non-use.

Plachutta used the trade mark Meissl & Schadn solely in print and that too only in order to point to the tradition of Viennese beef cooking. The trade mark had no specific and concrete connections to certain services which would enable consumers to distinguish these services from those of other enterprises. However, this is the essence and purpose of trademarks. Consumers were not able to distinguish the origin of certain specific services by hearing or reading the trade mark Meissl & Schadn from the same services offered by others. Consequently, a trade mark was not established. The mere use of it as a reference to an old tradition did not suffice. The trade mark Meissl & Schadn was cancelled due to non-use.

Normally, restaurant services are carried out under the name of the restaurant and this is also its trademark. The above case shows the difficulties that arise when trying to establish a second trade mark.

sonn.jpg

Helmut Sonn



SONN & PARTNER Patentanwälte

Riemergasse 14

A-1010 Vienna, Austria

Tel: +43 1 512 84 05

Fax: +43 1 512 98 05

office@sonn.at

www.sonn.at

more from across site and ros bottom lb

More from across our site

Lawyers at Finnegan and Fross Zelnick explain why privacy formed a natural extension of their firms’ IP practices and share expansion plans
The news that USPTO director Kathi Vidal is to step down early and WIPO’s aims for a design law treaty were among the biggest IP talking points this week
The firm, which celebrates its 10th anniversary this weekend, has appointed a new head of trademarks and is planning further expansion
Practitioners say they’re receiving more correspondence from opposing parties that could be AI-generated
Sapna Palla, who joins the firm from A&O Shearman, said she was impressed by its work with major life sciences businesses
The court’s decision will have brands and their advisers ‘desperately reviewing’ portfolios and filing strategies, sources predict
Simona Lavagnini discusses the Greek classics, Rudyard Kipling's 'If', and how she dreams of beautiful words
Herbert Smith Freehills and Kramer Levin’s merger won’t be the last transatlantic tie-up if recent history is anything to go by
Betty Chen reveals litigation opportunities and provides an update on plans to double the firm's headcount in San Francisco
David Parrish expects AI to be among the major talking points for a newly formed committee aimed at protecting the interests of London-based IP practitioners, firms, and their clients
Gift this article