Procedure
Austria
General infringement proceedings
Types of infringement proceedings:
- Preliminary injunction proceedings: Generally, courts have the competence to issue preliminary injunctions (PIs) to secure claims for injunctive relief or preservation of evidence in trade mark infringement cases.
- Main proceedings: Injunctive relief, destruction of infringing goods, removal of infringing goods from the market, rendering of accounts, provision of information, publication of the judgment and – subsequently – payment (in the form of an adequate licence fee, damages, or reimbursement of the infringer's profit) may be claimed in main proceedings. In Austria, a final decision in PI proceedings causes the main infringement proceedings to move forward, ie a hearing will be set. The initiation of PI proceedings before main proceedings is not mandatory; the infringed party may institute main proceedings straight away instead.
Procedure and appeals
- Warning letter: Before initiating infringement proceedings, the claimant may first send a cease and desist letter to the defendant, requesting a declaration in which the defendant agrees to (a) stop using the conflicting sign immediately and (b) sign an enforceable court settlement which contains a cease and desist obligation. However, it is not mandatory to send such a letter before proceedings are initiated.
- First instance: The Commercial Court of Vienna (Handelsgericht Wien) has exclusive jurisdiction for main actions and PIs regarding claims for trade mark infringement.
- Court of Appeal: A first instance decision may be appealed to the Higher Regional Court of Vienna (Oberlandesgericht Wien) within four weeks of the service of the decision on the parties in the main proceedings. In PI proceedings, the deadline is just two weeks. In specific cases - eg where there is a legal question of considerable importance and the appeal court deviates from the case law of the Austrian Federal Court, or there is no such case law, or it is inconsistent – an appeal against the decision of the Higher Regional Court of Vienna (Revision) to the Austrian Federal Court (Oberster Gerichtshof) is possible within four weeks of service of the appeal decision. In PI proceedings, an appeal to the Austrian Federal Court is not limited to specific cases and the deadline is – again - shorter (two weeks). In PI proceedings, appeals do not have suspensive effect unless the court decides otherwise upon request of the defendant. In main proceedings, an appeal to the Higher Regional Court of Vienna has suspensive effect; an appeal to the Austrian Supreme Court does not, unless specifically granted by the court.
Means of proof and burden of proof
The means of proof in main proceedings are documents (eg contracts, out of court correspondence, pictures), witnesses, visual inspection, expert evidence and party testimony. A general principle for the burden of proof is that the party relying on anything positive for itself bears the burden of proof. In main proceedings, all relevant facts must be fully proved to the satisfaction of the court. In PI proceedings, a less strict standard of proof applies; the applicant must 'make a credible claim' (glaubhaft machen) of either an actual or a threatened infringement and that the IP right in question is valid. The submission of an affidavit suffices (unlike in main proceedings where it would not suffice). In PI proceedings, any evidence must be immediately available to the court, therefore no court expert can be appointed in PI proceedings as an opinion of such court expert would not be immediately available.
(No) discovery
In Austria, there is no discovery in civil proceedings such as in court proceedings in the UK or discovery proceedings in the US.
Time to judgment
- A preliminary injunction is usually granted within a few weeks or even months, and only in very urgent cases within a few days.
- For main proceedings, a judgment can usually be expected within one year after the filing of the statement of claim. Appeal proceedings and proceedings before the Austrian Federal Court will usually also take approximately one year each. However, the duration of proceedings will depend on the individual case and the workload of the responsible court.
(No) discovery
In Austria, there is no discovery in civil proceedings such as in court proceedings in the UK or discovery proceedings in the US.
Time to judgment
- A preliminary injunction is usually granted within a few weeks or even months, and only in very urgent cases within a few days.
- For main proceedings, a judgment can usually be expected within one year after the filing of the statement of claim. Appeal proceedings and proceedings before the Austrian Federal Court will usually also take approximately one year each. However, the duration of proceedings will depend on the individual case and the workload of the responsible court.
Claiming legal costs
- If a PI is granted, the decision on costs is reserved until the outcome of the main proceedings. The winner in the main proceedings gets its costs reimbursed to the extent set out in the Official Fee Tariff. If the PI is denied, the defendant immediately gets reimbursement of its costs of the PI proceedings as set out in the Official Fee Tariff.