Under Austrian law, holders of exclusive trademark licenses used to be allowed to take legal action against infringers by virtue of the exclusive license, i.e. even if the license agreement did not expressly confer such right to the licensee [OGH 4 Ob 178/00f, BOSS-Brillen II]. Only the non-exclusive licensee required an express grant of right to bring suit in order to enforce the trademark [OGH 4 Ob 209/02f, Brühl, ÖBl 2003, 87 (Hiti)].
Since a recent amendment of Section 14 (3) of the Austrian Trademark Protection Act that took place in 2019, each licensee (i.e. also the exclusive licensee) requires the consent of the licensor in order to enforce the licensed trademark against third parties. However, the holder of an exclusive license may bring such proceedings if the proprietor of the trademark, after having been noticed by the licensee, does not himself bring infringement proceedings within an appropriate period.Continue reading