The Estonian legislation on what one may support in exercising his/her trademark rights consists of the Trademark Act as well as the Copyright Act, Act on Unfair Competition, Criminal Code and the Administrative Offences Act. General provisions of civil law can be found in the General Principles of the Civil Code Act and the provisions on compensating the damages caused can be found in the Civil Code, valid from Soviet era. Estonia is a member state of the Berne and Paris Conventions. Also the association treaty with the European Union has been signed obliging the Republic of Estonia to grant the protection level of the trademark owner's rights in the level of standards, applicable in the European Union. Although the joining negotiations have been started, Estonia is not a member state of the WTO yet.
In the nearest future the Industrial Designs Act and the new Act on Unfair Competition are expected. Also the drafts of the new Punishment Code (including provisions concerning both the criminal and administrative offences) and Act on Civil Procedure as well as general and special provisions of the Law of Contracts are being prepared. It is also planned to amend the valid Trademark Act and it will most probably take place in two or three stages (in the first stage the Act will be taken into conformity with the later legal acts, the second stage is connected with joining to the Madrid Protocol and the third stage includes the compiling of a totally new, modern act).
Extensive amendments, expected in almost whole legislation, show that the present legislation does not match with the requirements of everyday life. Indeed, while the process of obtaining protection documents has been started successfully, the trademark owner does not have measures powerful enough to fight against the infringement of his rights. Our company is trying to take an active part in developing the legislation, whereat knowing the problems of our clients and dealing with these problems is of invaluable assistance to us in doing so.
Accordingly to the trademark law, an exclusive right to use these trademarks belongs to the owner of the trademark. Unauthorised usage of the trademark in respect of the same or similar goods or services is considered to be an infringement of the exclusive right of the trademark owner. In case of the infringement of the exclusive right it is possible to choose between civil and/or criminal or administrative proceedings.
II Civil proceedings
In case of the infringement of the exclusive right either the trademark owner, or the licensee under the licence agreement, is entitled to bring an action in the court of law, making one or more of the claims below:
- to stop the activity infringing the rights of the trademark owner or the licensee and to restore the situation prior to infringement;
- to compensate the economic and moral damage incurred by the trademark owner or the licensee, including the profit lost;
- to take measures preventing further infringement of the rights of the trademark owner or the licensee, removing from circulation everything contributing to the infringement of rights.
For calculating the damage, the profit what would have been obtained in the normal use of the trademark is taken as a basis.
We can discuss civil proceedings only in case of larger infringements by bigger companies. It is possible to demand only for compensating the damage caused and not fines or compensations. In civil procedure we usually suggest applying for the seizure of the defendant's property or for the prohibition of certain action or deeds to guarantee that the defendant is able to pay the required compensations.
The state fee in civil proceeding depends on the amount of claim, being about 3 per cent of the sum (amount of claim over 1 000 000 Estonian Kroons = 125 000 DEM). The compensation of lawyer's fees can be asked in the amount of 5% of the satisfied amount of claim. Please note that the increase of state fees is expected from January 1, 1998!
III Criminal and Administrative Proceedings
Criminal Proceedings
Accordingly to the valid Criminal Code, the intentional infringement of the trademark owner's exclusive rights is considered as criminal offence. A fine (up to 900 daily quota's), apprehension (up to 3 months) or deprivation of liberty (up to 2 years) may be imposed.
To initiate the investigation, the respective request shall be filed to the police. In Estonia has been several cases in Copyright matters, but not in Trademark matters yet. In the opinion of police authorities the main problem is in the ascertaining the guilt. We cannot agree with this opinion, but we may predict other problems.
Namely, only the criminal liability of natural person is possible in Estonia. It is not clear, whether the responsible person of the legal person, e.g. a member of the board or the Managing Director may be convicted for this crime.
At the present we have handle several cases in above matter. We hope to get all necessary answers to the above problems soon.
The production, bearing the trademark unlawfully, may be confiscated by the police.
Administrative proceedings
The infringement of the trademark owner's rights without the intent is administrative offence. The fine (up to 200 daily quotas) or the apprehension (up to 2 months) may be imposed by judge.
III Handling of Unfair Competition Cases
Trade with counterfeit goods, the usage of the trademark of the other person or offering "look-a-likes" may be considered as an Unfair Competition in the sense of Unfair Competition Act and Paris Convention.
The request for investigation of the Unfair Competition cases may be filed to the State Board of Supervising of Competition. The latter is entitled to issue prescriptions. In case of non-fulfilment of the prescription, the Board may exact a fine in the amount of 10 per cent of the gross turnover of previous 3 months or claim liquidation of the firm. We have had some court cases in unfair competition matter in Estonia.
IV Investigation of Counterfeiting-cases
Usually the infringers of trademark rights are not famous and big enterprises. So the investigation for clarifying the real producer or importer of counterfeit goods is of the utmost importance. Quite frequently the goods derive from the circuits of organised criminality.
Therefore we have looking for good relationship with the investigation and detective agencies both in Estonia as well as abroad (e.g., in Finland). We are also members of Anti-Counterfeiting Group and Counterfeit Intelligence Bureau (CIB).
This is very general overview of the status quo in enforcement of trademark owner's rights in Estonia. We do hope that the further amendments to the corresponding legislation will give improved means for trademark owners.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.