In its decision 4Ob54/23d, the Supreme Court recently once again dealt with the issue of bad faith on the part of the trademark applicant. What is particularly interesting here is that the applications, word mark and word/figurative mark LIPPIZANER, were filed more than 20 years ago and the bad faith of the applicant has now been established. The applicants argued that the term "Lipizzaner" has been long associated with the Spanish Riding School and is perceived as its product and trademark. The reputation and appreciation of the Lipizzaners had always been used commercially by the second applicant, for example through the sale of souvenir articles. The defendant had no connection whatsover to the term "Lipizzaner". It was therefore obvious that it had registered its trade marks solely for unfair motives. The clear intention to obstruct can also be deduced from the large number of classes of goods and services. The defendant argued that he had contacted all relevant trademark proprietors when applying for the trademark and that he was not concerned with obstructing third parties.

The Cancellation Division of the Patent Office cancelled the contested trademarks at the time of their registration due to an application filed in bad faith, i.e. it considered the requirements of Section 34 MSchG to be fulfilled. The defendant had no connection to horses or Lipizzaners. His application had not been filed in the interest of using the trademarks for the goods and services claimed, but only in order to prevent others from using the term "Lipizzaner" as extensively as possible.

The Court of Appeal upheld this decision.

The Supreme Court, to which the defendant appealed, confirmed the decisions of the Cancellation Division and the Higher Regional Court. In 1995, claims for injunctive relief against the sale of porcelain horses labelled "Spanish Riding School" and "Vienna" were denied on the grounds that there was no use as a trademark because the relevant public (at that time) did not assume that the porcelain figure came from the business of the trademark owner or an affiliated company, but that the public would merely assume that a horse from the Spanish Riding School was being depicted.

However, in a decision issued in the meantime, namely in 2011, it was stated that the perception of the public has changed insofar as it is generally known that even institutions that are outsourced from the direct administration of the public sector and are therefore economically independent, such as museums or the Spanish Riding School, must endeavour to generate additional income through the sale of various goods and services that are labelled with the institution's well-known trademark(s) as part of merchandising. Accordingly, the public now assumes that goods labelled accordingly originate from the business of the trademark proprietor or a company associated with it. This decision therefore marks a departure from previous case law, which is why the use of the trademarks by the defendant constitutes a use of the trademarks that is detrimental to the applicant's trademarks.

The registered trademarks would therefore enable the defendant to prohibit the Spanish Riding School from exploiting the trademark via merchandising, which it is entitled to do in view of the 2011 decision. According to established case law, bad faith is to be assumed if the trademark proprietor was aware at the time of application that competitors were using signs for similar or identical goods that are confusingly similar to the sign applied for as a trademark. Apparently, the Supreme Court now also considers this to be the case if the competitor is not yet using the sign at the time of application, but it is clear from the economic development that the use of the sign for these goods would be desirable or is economically necessary.

The Supreme Court thus seems to recognise bad faith a posteriori, i.e. arising only from a development after the filing date, which in my opinion is remarkable and at the same time conclusive, especially since the owner entitled to use the trademark for these goods, in this case the Spanish Riding School, would otherwise have no possibility to take action against the trademarks and to exploit the sign in the now authorised manner through merchandising.

Public availability in consequence of insufficiently observed confidentiality requirements regularly constitutes a point of attack in a patent enforcement.

In particular, before filing a patent application, protection of cross-company information flows and internal awareness of confidentiality are of particular relevance. This is underlined once again by the following decisions.

OLG Vienna, 33R42/20v:

(translated; original in German language)

Machine supplied by W. GmbH to G. GmbH:

[…] First of all, it is essential that the machine was set up at the manufacturer (W. GmbH) for trial operation and a subsequent rebuild phase only. This time obviously served the ongoing development and testing of the machine based on the needs of the customer (G. GmbH) with a corresponding exchange of information between the parties involved.

[…] In this phase, there was a mutual operational interest in not letting the resulting knowledge leak out, so that the public availability of the knowledge gained is to be denied for this reason alone.

[…] However, public availability in connection with the installation of the machine at G. GmbH was established by the fact that further visitors of G. GmbH (such as business partners, service technicians, potential customers) could have recognized and understood the process used for the machine.

[…] Due to the general accessibility of the machine to visitors of the management, there was a general possibility that other professionals would become aware of its technology.

[…] With a visitor to the management, a "business relationship" does not (yet) necessarily have to exist. Unspecified " confidentiality conditions" do not mean that the visitors have made a specific commitment to keep the technology of the machine confidential.

The contested patent was declared invalid.

OLG Vienna, 133R84/19d:

(translated; original in German language)

[…] Among the documents submitted in writing, on forms there is the pre-printed text:

(“This document must not be copied without our written permission, and the contents thereof must not be imparted to a third party nor be used for any unauthorized purpose. Contravention will be prosecuted.“)

[…] This standard wording on certain forms does not imply any obligation to keep the inductor supplied in the case in question confidential from third parties. This declaration only refers to the document itself.

[…] However, a tacit agreement cannot be presumed from the outset. The particular circumstances of the case must be taken into account, considering the relationship between the contracting parties and the subject matter of the use. It is significant whether there was an objectively recognizable interest in confidentiality on the side of a person involved in the contract. Such an tacit agreement could be indicated by the relationship between parent company and subsidiary, a joint venture or the supply of prototypes for testing purposes. An ordinary commercial transaction, on the other hand, and the sale of parts for series production generally do not provide any indications of such an agreement.

[…] The mere fact that it is a custom-made product does not constitute such a special business relationship from which a confidentiality obligation would have to be derived.

In decision G 1/21, the Enlarged Board of Appeal answers the recently raised question whether the holding of oral proceedings in the form of a video conference complies with the right to oral proceedings, even if not all parties involved have given their consent to the holding of oral proceedings as a video conference.

The Enlarged Board of Appeal concludes that if it is not possible for a party to attend oral proceedings in person during a general emergency, holding oral proceedings before the Boards of Appeal by videoconference would be in accordance with the EPC, even if not all parties involved in the proceedings have consented to the holding of oral proceedings by videoconference.

In the reasoning, the Enlarged Board of Appeal states that holding oral proceedings on site is seen as the gold standard. Accordingly, there must be weighty reasons to deviate from this gold standard against the will of the parties. One of these reasons is the general emergency situation, which can be seen in particular in the still ongoing pandemic and the general travel restrictions associated with it. However, no explicit statement was made on how to proceed after the current emergency situation has ceased to exist.

Furthermore, the decision of the Enlarged Board of Appeal only refers to proceedings before the Boards of Appeal and does not make any statements on how to proceed in similar cases before the Examination and Opposition Divisions.

With this decision, the Enlarged Board of Appeal takes the position in the current pandemic situation that oral proceedings before the Boards of Appeal can be held by video conference even against the will of the parties, but leaves open how to proceed after the pandemic situation has ceased to exist.

It was a great pleasure for us to welcome the numerous clients and business partners at the opening ceremony.

A gigantic mountain made of iron, huge mud ponds, the largest heavy-duty trucks in the world, abandoned tunnel systems and lunar landscapes. Erzberg Dirtrun - our teambuilding 2022!

A trademark can also be registered for a shape mark. Here in particular, distinctiveness is often a hurdle that is difficult to overcome. The EuGH has recognized that shape marks or 3D marks can only be registered if the relevant public perceives the shape of the mark as deviating from a shape that is customary in the industry to such an extent that they recognize an indication of a company in the shape. In this context, the EuGH also stated that the public does not normally infer the origin of a product from its shape or the shape of its packaging if graphic or word elements are missing. Even a simple deviation from the norm or customary practice in the industry is not sufficient; this deviation must be significant.

These principles now also led to the cancellation of the represented EU trademark no. 010168441 registered at the EUIPO. Thus, the EuGH ruled that the shape of the contested trademark corresponds to the usual shape of ski boots, which generally consist of a high upper, often made of lightweight synthetic material, with soles and laces. In particular, it upheld the Boards of Appeal's view that the position of the laces and the parallel stripes on the upper of the boot, as well as the height of the upper of the boot, are not unusual and are merely a variant of the shapes commonly used in the field of after-ski boots.