Sonn & Partner

The owner of the trademarks "Miss Austria", "Miss Oberösterreich" (Miss Upper Austria) and further Miss-marks granted a licence to the defendant to use these marks for five years. These trademarks – as one can guess – are registered for an organisation handling beauty contests and the elections of the most beautiful women in an area. The contract contains a clause that allows immediate cancellation of the licence if there is violation by the licensee of any contractual duty. It also prohibits competition by the licensee in this field outside the licence and the use of similar trademarks to those licensed.

An inventor invented a system for drainage of walls. He was managing director for several years of a group of firms (the ATG-Group), the business of which was the application of that system. The plaintiff is the Austrian firm of the ATG-Group.

Both parties are owners of registered EU trademarks consisting of the letters MK in different designs, with the additional wording "illumination". The plaintiff, an Austrian company has a business concerned with decorative illuminations in Austria and abroad. The defendant, a Czech company, is selling, lending, delivering and installing decorative illuminations and illuminated commercial signs. The defendant's EU registration is younger than that of the plaintiff.

The opponent in the case discussed in this article has owned the word mark SEVEN since 2009 and the word and design mark 7seven in a fancy script since 2014. He opposed the registration of the word mark ROOM SEVEN. All these marks were registered for identical goods in international Class 18 (bags). Among other reasons, the defendant stated that the word mark SEVEN was not used during the last five years and that he has used the mark ROOM SEVEN since 1995 in several European countries including Austria without problems. This conflict has already led to decisions in several countries. For example, the Cour d'appel de Paris did not see any danger of confusion in its decision of September 26 2017 since ROOM SEVEN will be seen by consumers as a combination in which the word SEVEN has no particular importance.

A hotel in a skiing area known for its bar featuring scantily-clad dancing girls was found to have an infringing trade mark. The lower courts issued an injunction in a first partial judgment. A further partial judgment was made requesting accounts of the turnover earned in connection with the running of the bar and all advertisements made for it. Accounts are the basis for all claims of compensation and damages calculations. In this case, the question was which turnovers should be included. On further appeal to the Austrian Supreme Court, the Court upheld the lower courts' judgments. It ruled on this topic as follows.

Until 2017, it was clear from several decisions of the Austrian Supreme Court that trade marks registered in bad faith were invalid and therefore could be successfully attacked any time and that asserted rights based on them would be rejected as immoral. However, the decisions went further: the mere use of that sign was held to be inadmissible and therefore could be forbidden as such without any other reason.