Use of sign: Broadcasting allone is not enough

A ground for refusal of a community trademark can be an elder non-registered trade mark or of another sign used in the course of trade of more than mere local significance. One prerequisite is that the right has come into existence before the priority date of the later community trademark.

These questions were subject of a recent decision of the Austrian Supreme Court (4Ob148/14i of November 18, 2014) upon a provisional injunction based upon the trademark FASHION ONE against the unregistered sign FASHION ONE.

Defendant alleged to have used the sign already before the priority date of the trademark.

But: The broadcasting of a TV (via cable and satellite) and a presence in the internet alone was not enough to convince the courts of an elder right. The Supreme Court expressed doubts about the factual perception of the TV and website by the public.

Since defendant could not provide further evidence, the courts denied an elder right.

Defendants who (by lack of a registered trademark) have to trust in an unregistered elder right are well advised to take care of proper documentation.

Interestingly the Supreme Court had doubt that an English-language .com-Domain was not directed to Austrian users. Whether a website is addressed to domestic users is to be evaluated objectively.