Binder Grösswang successful before the Austrian Supreme Court: Referential use of third-party trademarks permissible

Binder Grösswang has successfully defended the market leader for mobile wallets for the management of loyalty cards in a landmark case. Users of the mobile app are thus spared the need to carry numerous plastic cards with them or to install a separate app for each loyalty card on their smartphone.

To distinguish the different loyalty cards in the app and to promote them, the trademarks of the different holders are used. One of the issuers of loyalty cards saw this as an infringement of its trademarks and applied for an interim injunction.

The Supreme Court (OGH) has now dismissed the application (4 Ob 205/20f) and thus overturned the decisions of the lower courts in their entirety. This decision is trend-setting and clarifies under which conditions another's trademark may be used without the owner's consent as a reference to a service or accessory (Section 10(3)(3) Austrian Trademark Protection Act).

According to previous case law, this was limited to cases in which the use of another's trademark was the only means and thus had no alternative. The use of figurative marks (logos) was previously considered excessive. The Supreme Court now confirmed that the requirements had been relaxed with the latest amendment to trademark law in 2018 (implementation of EU Directive 2015/2436). In the case at hand, it could not see any impairment of the interests of the trademark owner and allowed the use of third-party word marks as well as figurative marks.

The Binder Grösswang team consisted of Counsel Michael Horak and Associate Antonia Zaponig (both IP/IT).