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Easter Bunny News: The Austrian company Hauswirth finally has to give in against Lindt in the Easter bunny litigation (Austrian Supreme Court decisions of 17.1.2012, case 17 Ob 30/11b and 28.2.2012, case 4 Ob 14/12f).

The Swiss "chocolateur" Lindt Sprüngli and the Austrian family enterprise Hauswirth have been litigating about chocolate easter bunnies for years. Recent decisions of the Austrian Supreme Court ("OGH") of January and February 2012 have put an end to the dispute: In a nutshell, the Austrian Supreme Court (and the lower courts) consider Hauswirth's easter bunny to be confusingly similar with Lindt's "Goldhase" (gold bunny), which is protected, inter alia, by a 3D-Community trade mark. This assessment is neither altered by the differences in Hauswirth's bunny, which has no inscription on it and no bell around its neck, nor the fact that the General Court of the European Union (Decision of 17　December　2010,　Case T-336/08, under appeal C-98/11P) held another 3D CTM of Lindt for an almost identical bunny, but without the inscription "Lindt Goldhase",　to lack distinctiveness.

According to the OGH (17 Ob 30/11b), the lack of an inscription and of a bell cannot exclude likelihood of confusion, as consumers would only notice this in a direct comparison, and as this difference did not mean that the chocolate bunny had a different producer. In this context, it is interesting to note that the OGH also reasoned, that both differences were with the limits that could also occur in products of one and the same company, and, as far as the missing word element of the 3D mark is concerned, this was not unusual in case of distribution of a product through food retailers (at normal prices) and food discount retail stores at the same time.

So now we have to accept that both bunnies are confusingly similar (for Austrian consumers) as found by the OGH. However, the reasoning of the OGH cited above (in Italics) does not convince me: It is true that trademark owners of food brands often distribute their products also via food discount stores. However, they often do so with a different packaging, and / or the product is distributed under the house brand of a discount retail store. If a trade mark owner distributes its product without the (well-known) word mark or company name (which is not the case with the Lindt bunny, to my knowledge), it eventually also renounces the function of indicating origin which the brand name has. In such a case it may be that the product is no longer associated with the brand owner, while on the other hand justifying a higher price of the branded product as sold through brand retail stores. In case the discount product is not perceived as the brand product, it cannot be associated with the brand owner and thus, other products cannot be confused with it.

If you wish to know "how similar" your product (get-up) may be to that of a competitor, please do not hesitate to contact us via email or phone!

New team member at schmid-ip

On 1 October 2011, Ms. Bernadette Wolfslehner (she has acquired both a law degree and a history of arts degree) has joined the team of schmid-ip as a paralegal. A very warm welcome to Bernadette!

Save renewal fees for 2nd and 3rd renewals due in 2012!

In 2011, renewal fees for Austrian trade mark registrations increased from EUR 500 to EUR 650 for the first renewal term of ten years (years 11 to 20). As of 1 January 2012, the second renewal will cost EUR 750 (years 21 to 30) and every renewal from the third (from year 31) will cost EUR 850. If your Austrian trade mark registration is due for the second or a further renewal prior to 31 December 2012, you can save up to EUR 200 by renewing already in 2011, as renewal payments can be made up to one year in advance. Contact me to check if you can save on your renewals! I would be happy to assist you in managing your trade mark portfolio (also of CTMs and IRs)!

schmid-ip at the INTA Annual Meeting in San Francisco, 14 to 18 May 2011

Katharina Schmid was a speaker at the concurrent session "Regional Update - OHIM / Europe: What's New in the World of Trademarks and Domains?". She discussed recent decisions of the ECJ / General Court regarding likelihood of confusion, keyword advertising and the Austrian opposition proceedings.

Place and time: 17 May 2011, 10:15 bis 11:30 am, Moscone Convention Center West, Level 2, Rooms 2003 - 2007. Moderator: Mette M. Andersen, LEGO Juris A/S (Denmark), Co-Speakers: Stephen R. James, R.G.C. Jenkins & Co. (United Kingdom), David Taylor, Hogan Lovells International LLP (France). Free for annual meeting attendees.

Austrian Patent Office Fees increased as of 1. January 2011

In order to consolidate the Austrian Budget, along with the "Budgetbegleitgesetz 2011" (BGBl I 111) of 30. December 2010, some fees of the Austrian Patent Office have been considerably raised. Information on the new fees for all industrial property rights is available on the website of the Austrian Patent Office on www.patentamt.at (in German).

The changes to trade mark fees in short: While the filing fees for a trademark in three classes remain unchanged at EUR 359 (word or figurative marks), the class fees from the 4th class have risen to EUR 72 per class. Also, renewal fees for trade marks have increased from EUR 500 to EUR 650 for the first renewal of ten years (years 11 to 20), and late renewal is now EUR 780. In addition, with effect of 1. January 2012, the second renewal will cost EUR 750 (years 21 to 30) and every renewal from the third (from year 31) will cost EUR 850.

The good news is that schmid-ip's trademark filing fees remain unchanged since 2010. If you wish to check whether and how you could save on the renewal fees for 2012, or have any further questions, please do not hesitate to contact me!

ECJ: General prohibition on sales with bonuses as foreseen in section 9a of the Austrian Unfair Competition Act is contrary to Community Law

In its judgement in case C-540/08 of 9 November 2010, answering a reference for preliminary ruling of the Austrian High Court (Oberster Gerichtshof) concerning a dispute between two Austrian newspaper publishers, Mediaprint Zeitungs- und Zeitschriftenverlag GmbH & Co. KG (‘Mediaprint’) and ‘Österreich’-Zeitungsverlag GmbH, concerning the lawfulness or otherwise of a sale with bonuses organised by the defendant in the main proceedings, the ECJ ruled as follows:

1. Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and Regulation (EC) No 2006/2004 of the European Parliament and of the Council (‘the Unfair Commercial Practices Directive’) must be interpreted as precluding a national provision, such as that at issue in the main proceedings, which lays down a general prohibition on sales with bonuses and is not only designed to protect consumers but also pursues other objectives;

2. The possibility of participating in a prize competition, linked to the purchase of a newspaper, does not constitute an unfair commercial practice within the meaning of Article 5(2) of Directive 2005/29, simply on the ground that, for at least some of the consumers concerned, that possibility of participating in a competition represents the factor which determines them to buy that newspaper.

The full judgement is available online at the Curia Website. Full text of the ECJ decision.

October 2010: Update on trade mark opposition proceedings in Austria: Now implemented!

With the latest amendment of the Austrian Trademark Law Act, trademark opposition proceedings were introduced into the Austrian trademark registration system. Owners of prior trademarks and trademark applications are now able to file an opposition against the registration of confusingly similar Austrian trademarks and territorial extensions of international registrations published on or after July 1, 2010 at the Austrian Patent (and Trademark) Office. The opposition has to be filed within 3 months from publication.  For international registrations, the 3 months deadline starts on the first day of the month following publication in the WIPO-Gazette (http://www.wipo.int/madridgazette/en). Owners of prior trademark filings may also file oppositions as long as their filing proceeds to registration.  The opposition fees will be a total of EUR 200,00 (EUR 150,00 opposition fee, EUR 50,00 document filing fee). There is no reimbursement of costs, each party has to bear its own costs.

schmid-ip NEWSThe first opposition deadlines in Austria will expire on 20 October 2010! Let schmid-ip help you file in time!

 

Accordingly, the first decisions in Austrian opposition proceedings will be handed down by the end of 2010 or the beginning of 2011. The final implementation of opposition proceedings in Austria is welcomed by professionals and should become an interesting tool for trademark owners seeking to protect their rights in Austria. In case of clear cases of likelihood of confusion, opposition proceedings should indeed become the swifter and cheaper alternative to cancellation proceedings. However, the possibility of filing a cancellation action before the Austrian Patent Office remains unaffected, also following trademark opposition proceedings. For the owners of non-registered rights such as company and trade names and titles, starting a cancellation proceeding remains the only possibility to have a confusingly similar registration cancelled from the Austrian register.

Changes to Austrian trademark filing fees:

The fees for trademark filings were changed as well: Since January 1st, 2010, it is obligatory to pay the total fees at the beginning of the registration proceedings. The total fee for filing a trademark application in three classes in Austria is now EUR 359,00 (including EUR 30,00 'document filing fees'), each additional class from the 4th class is EUR 40.00.

 

For any further questions on opposition proceedings, costs and trademark watching services offered in Austria, please do not hesitate to contact us.

 

For any further questions, please do not hesitate to contact me.