The registration of an Austrian trademark is followed by a three-month term, within which an opposition against the trademark can be filed. The opposition can only be filed by the owner of an earlier trademark which is valid in Austria, such as a national Austrian trademark, an international registration designating Austria, or a European Union trademark. The only ground for opposition is if a likelihood of confusion with the earlier trademark exists.
If, however, the earlier trademark has been registered for more than five years at the time of the publication of the contested trademark, the proprietor of the contested trademark may raise an objection of non-use. In this case, the opponent is requested to provide evidence showing that his trademark has been seriously used in the course of trade within Austria.
An opposition may also be filed against the registration of a European Union trademark. In this case, the 3-month term begins when the contested trademark application is published. Opposition proceedings at the EUIPO may be interrupted by a joint motion for up to 24 months in order to have sufficient time to negotiate an amicable solution (so-called cooling-off period).
It is in fact useful to resolve contradictory opposition proceedings in a consensual (amicable) way, whereby the counterparties set up a delimitation agreement to accept the opposing trademarks, possibly with a somewhat limited list of goods and services and scope of protection.
We regularly file oppositions at the Austrian Patent Office and at the EUIPO and we would be happy to advise you on your success chances. We would also be glad to assist you with the preparation of a delimitation agreement.
