Patents, utility models, trademarks and designs may be declared invalid after grant or registration upon request at the patent office in an official procedure.
The most important grounds of nullity for patents and utility models are the lack of novelty and inventive step. The grounds of nullity must be substantiated by the applicant by means of evidence such as written prior art or witness testimony.
There are a multitude of nullity grounds for trademarks. A registered trademark may, in particular, be cancelled if there is a likelihood of confusion with an earlier trademark – which is the fact if both the signs and the claimed goods are similar. A lack of distinctive character is a further ground for annulment, which is the case when the registered trademark is not capable of distinguishing the goods and services of a corporation from those of other corporations.
A further nullity ground, which is quite important in practice, is the ground of non-use: when a trademark has not been used seriously in Austria over a period of five years post registration, it can be cancelled on request. Proof of serious use is quite strictly assessed by the Austrian Patent Office examiners.
Nullity proceedings are heard in first instance before the Nullity Division of the Austrian Patent Office. The parties are given the opportunity to present their position in one or more writs. The procedure ends with a decision which is usually issued in writing several weeks after the final oral hearing at the Nullity Division. The winning party is entitled to compensation of their costs.
The decision of the Nullity Division may be challenged in second instance by an appeal to the Higher Regional Court of Vienna. The appeal procedure is only in writing and the parties have only the possibility to file a single writ.
Finally, the decision of the Higher Regional Court of Vienna can be appealed by a revision to the Supreme Court (OGH).
We routinely conduct nullity proceedings in patent, utility model, trademark and design matters at the Austrian Patent Office. We would be glad to advise you about your possibilities!
