Infringement must be imminent to obtain injunction

The Supreme Court has clarified that an applicant for an injunction to prevent an alleged infringement must show that an infringing act is imminent (Case 17 Ob 9/07 h, July 10 2007).

The Association for Consumer Information is a non-profit organization for the protection of consumers' interests; it is well known under the name VKI. The defendant is a non-profit organization whose aim is to promote the "integration of all Austrians". It owns the registered trademark VKI - VATER KIND INITIATIVE for services in Classes 41 and 42 of the Nice Classification.

In the present case the Austrian Association for Consumer Information sought an injunction preventing the defendant from using the term 'VKI' and the registered trademark VKI - VATER KIND INITIATIVE. The claim was based on the association's rights in the name VKI under Section 9 of the Unfair Competition Act and Section 43 of the Civil Code.

The first and the second instance courts decided in favour of the association. They found that the term 'VKI' is distinctive and protected by the Unfair Competition Act and the Civil Code. Furthermore, the courts found that there was a likelihood of confusion between the word VKI and the mark VKI-VATER KIND INITIATIVE.

On appeal, the Supreme Court held that, in relation to an application for an injunction to prevent infringement, the fact that a third party holds a registration for a mark purportedly similar to that of the applicant does not entitle the applicant to an injunction where no use of the third-party mark has been made or is likely to be made in the near future. As no infringement had occurred or was likely to occur imminently in the case at hand, the Supreme Court dismissed the association's injunction application.

Angela Heffermann, Sattler & Schanda Rechtsanwälte, Vienna