Sonn & Partner

Ten years ago the Austrian Supreme Court decided a case concerning Mazda and a tuning company. The tuning company had offered its chip tuning parts for a range of cars. It also named on its website the car types for which it offered these chips. For that it used the cars' word marks and the figurative marks (logos).

The general limitation period for juridical actions in Austria is 30 years. However, particular laws can stipulate shorter or longer limitation periods. For example, for claims in patent infringement cases, the limitation period is generally three years. This period begins from the time when knowledge of the infringement and the infringing person is obtained.

An example of an international trade mark that Austria considered for registration is Access the Inaccessible for goods and services all connected to mountaineering, climbing and work at height. This English language word mark had, among others, a designation for the UK and for Austria. In the UK, the trade mark was finally registered in spite of some difficulties. The Austrian Patent Office and the appellate court did not find it relevant that the mark was approved in the UK. Registration in a foreign country, even in a country where the relevant language is the official language spoken by the whole population, can never be binding for Austria. The reasons behind this are not only formal legal reasons (for example, territoriality), but also that the English authorities examine the trade mark from the viewpoint of English consumers while the Austrian authorities examine the same trade mark from the point of view of Austrian consumers. These perspectives might well be different since the understanding of the meaning of the foreign words might not be identical to that in a foreign country.

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.

The case reported here concerns the application for registration of a word mark GROOVE in relation to "condoms" (class 10).