Trademark developments in Austria

In accordance with the latest EU Directive on trademarks, the trademark legislation in Austria has recently been updated.

In come Certification marks and the ability to divide applications. Out goes a need for notarised documents when recording trademark assignments.

It's all change with respect to renewal fees. Austria applied a unique approach to trademark renewals, more commonly seen with patents, in that the renewal fee increased over time i.e. the renewal for the second term of 10 years was lower than that for the third term of 10 years, which was in turn lower than the fourth term of 10 years.

These fees still apply to registrations falling due for renewal before 1 September 2018, but then a new fee system will come in. This will see a set fee irrespective of whether this is the registration's first renewal, second, third or 10th renewal.

However, it's not all that simple. Registration terms will change to being calculated from the application date. They have until now been calculated from a later registration date - and just for a bit of added complexity, the renewal date would be 'extended' to the last day of that month.

Existing registrations falling due for renewal on or after 1 September 2018 will have their renewal dates shortened so they are calculated from the application date.

Example

Therefore, if you have a case that was applied for on 23 November 2007 and matured to registration on 2 October 2008, it would fall due for renewal on 31 October 2018.

If it is renewed it will then remain in force until 23 November 2027.

To compensate trademark owners, if the term is shortened by one year or more, there is a fee discount available of €70 per year.

Austrian trademarks registered from 1 September 2018 will fall due for renewal 10 years from their application date. Until then, the term will be calculated from its registration date.

We will have nearly one more year where Austrian trademark renewal fees are calculated on a sliding scale and then after this still a number of years where the calculation of Austrian renewal fees will require careful checking.

Information from the Austrian Patent Office regarding renewal/maintenance fees is contained here (see page 5).