International Trademarks

I’d like to register a trademark. How does it work?

Basically it depends on what you want to protect as a trademark. For example, so-called word marks can be protected a company name, a logo or a figurative mark. It makes a difference whether you want to protect an EU trademark, an IR trademark (internationally registered) or a national trademark. 

In Austria the trademark ist registered with the Austrian Patent Office (Österreichisches Patentamt). 

After a brief initial consultation, we will be happy to prepare the application to the Austrian Patent Office for you. 

During the initial consultation, we will tell you which documents we need for the registration of your trademark. This includes images, descriptions, the assignment to possible classes of goods and services of the trademark to be registered.

What happens next?

After a formal examination of our application (trademark images, power of attorney, etc.), a similarity search (this is a list of identical or possibly confusable similar trademarks already registered and serves as a basis for deciding whether you wish to maintain or withdraw the application for your trademark) will be sent to you, if this has been ordered in the application.

This is followed by the legality audit. In the course of this, the protectability of the trademark is examined and it is checked whether there are any obstacles to registration, such as lack of distinctive character, exclusively descriptive indications, etc. The most important obstacles to registration are listed in Section 4 of the Trademark Protection Act 1970 (Markenschutzgesetz 1970). These are, for example, signs consisting exclusively of national coats of arms, national flags, other national emblems, official test or certification marks, signs of international organizations, etc. 

It is also important to know that signs or indications used in the course of trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or to designate other characteristics are not registrable as trademarks.

If something goes wrong during the legality examination, it is possible to speak out against the concerns expressed by the Patent Office about the registration of the trademark within a certain period of time and prevent a rejection. 

If the trademark finally meets all registration requirements, it will be entered into the trademark register under a consecutive registration number and we will receive a confirmation of registration. In addition, the trademark will be published in the Austrian Trademark Gazette (Österreichischer Markenanzeiger). 

However, our work is not done at this point. We will remind you of the expiration of your protection period and will continue to serve you when it comes to renewals, new registrations or changes to the registered trademark.

National (Austrian) Trademarks

The trademark right comes into existence on the date of registration in the trademark register. With this date, you also acquire the right of priority, which means that you can enforce your trademark right against other confusable rights of third parties that arise later. Its legal effect extends to the entire territory of the Republic of Austria. The term of protection ends ten years after the filing date. It may be renewed again and again for ten years by timely renewal.

In addition, a list of goods and services must be prepared. The goods and services which the trademark is intended to identify in business life must be listed in a directory arranged according to the class division of the Nice Classification. This list must already be filled out in the application when filing the trademark and makes a difference in terms of costs.

Costs and fees vary 

depending on the type, application and classes chosen and may vary depending on the mark to be applied for and the procedure chosen. In principle, an application fee of EUR 300.00 (EUR 280.00 for online applications) is due for an individual trademark. The class fee for each class from the 4th class onwards is EUR 75.00. The search fee for the similarity search (if requested) is EUR 40.00. The trademark similarity search for five classes amounts to approximately EUR 105.00 and for each additional ten classes or part thereof an additional EUR 25.00.

The domestic fee for an application for international registration (Madrid trademark system) is EUR 141.00 (CHF 141.00 for an online application).

The following fees are payable to the EUIPO for the registration of an EU trademark: EUR 850.00 for one class, EUR 50 for the second class, EUR 150.00 additional for the third class and EUR 150.00 for the fourth and each additional class.

An application for registration of a geographical indication or designation of origin costs about EUR 605.00 in fees.

In addition to these registration fees mentioned above, which vary greatly depending on the case, there are also procedural fees.

Annual and renewal fees vary significantly depending on the type of IP right. 

For trademarks registered before 01.09.2018, the basic fee for a single trademark (11th-20th year) is approximately EUR 678.00. The further renewal fee from the 21st to the 30th year is EUR 783.00 and from the 31st year EUR 887.00.

For trademarks registered after 01.09.2018, the renewal fee is EUR 700.00 for a single trademark. Here again it has to be differentiated which term of protection follows. Depending on the term of protection, the renewal fee for these trademarks is also reduced.

The renewal fee for a single sample is again EUR 130.00.

What your lawyer needs to help you file correctly

Basically, this is based on the size and any complications with the application/registration. For the simple case of registration, lump sums (from EUR 500.00) are possible (depending on the total effort), which are to be agreed between client an lawyer in advance. However, the fee is generally based on the lawyer’s tariff.