Not every trademark infringement requires a likelihood of confusion: The Austrian Supreme Court (OGH) had to address the question of how far the protection of a well-known shape mark extends. Particularly with well-known trademarks, the mere mental association with a more recent mark can suffice if this unfairly exploits or impairs the distinctive character or reputation of the earlier mark.
The proceedings centered on continuous blood glucose monitoring systems. The first plaintiff held an Austrian colored shape trademark relating to a body-worn blood glucose meter. The plaintiffs argued that the meter's distinctive round, white design had achieved considerable recognition through years of market presence and intensive advertising. The defendants subsequently launched a competing product that was visually very similar. The plaintiffs considered this an infringement of their trademark rights and also invoked unfair competition law. In their view, the competing product was exploiting the recognition of their own design. They argued, in particular, that the trademark was being exploited for reputational and public attention, and that the well-known shape mark was potentially being diluted.
The lower courts based their assessment on the fact that the provisional proceedings had not established a sufficient likelihood of confusion between the two products. However, the Supreme Court clarified that this approach is insufficient for well-known trademarks. The protection afforded by Section 10(2) of the Trademark Act goes beyond the classic protection against confusion. A likelihood of confusion is therefore not strictly necessary; a mental association can be sufficient. If this is the case, the use of the later mark can be inadmissible even if the products are not confused with one another. A key requirement is that the distinctive character or reputation of the well-known mark is unfairly exploited or impaired without justification. Thus, a well-known mark can afford its owner significantly broader protection than an ordinary mark. This also generally applies to shape marks, provided their recognition and the other requirements can be proven. In the specific case, however, the Supreme Court found that these issues had not yet been sufficiently clarified. In particular, it was necessary to examine more closely whether the alleged recognition of the shape mark actually existed and what legal consequences this had for the use of the competing product. The Supreme Court therefore overturned the decisions of the lower courts and remanded the case for further proceedings.
The ruling demonstrates that trademark protection for well-known brands is not limited to cases where customers actually confuse two products. Well-known brands enjoy extended protection against reputational exploitation and dilution. This is particularly important for product designs. Not only names and logos, but also characteristic product shapes, packaging, or design elements can be protected under trademark law and, with sufficient recognition, achieve a considerable scope of protection. Conversely, for companies, this means that a new product can cause trademark issues even if it differs sufficiently from a competitor's product to preclude direct confusion. The decisive factor can be whether the public, based on the design, makes a mental connection to a well-known brand and whether this unfairly exploits its reputation or distinctive character.
Supreme Court 12.05.2026, 4 Ob 102/25s