Overview Of The Trade Marks Act - Trademark

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The Estonian Trade Marks Act entered into force on 1 October 1992. On 18 August 1998, the Republic of Estonia deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Madrid Protocol entered into force, with respect to the Republic of Estonia, on 18 November 1998.

Overview of the Trade Marks Act (full text)

1. Legal régime of trademarks

The scope of protection of a registered trade mark shall be based on a representation of the trade mark. The scope of protection of a registered trade mark in relation to goods and services is determined by a list of such goods and/or services. The list of goods and/or services indicated in the registration may be limited. Extension of the list of goods and services is prohibited.

2. Signs registrable as trademarks

Literal, verbal, numerical, figural, and special signs or their combinations can be registered as trademarks. A trademark can be registered either as a black-and-white, or a coloured sign. Trademarks registered as black-and-white signs are protected in any colour combination while trademarks registered as coloured signs are protected only in the colour combination indicated in the registration application.

3. Absolute grounds (in addition to those stipulated by Paris Convention for the Protection of Industrial Property) for refusal of registration of trade marks

signs that do not conform to the provisions of signs registrable as trademarks (see above);
trademarks that are devoid of any distinctive character;
trademarks that consist exclusively of signs or indications which designate the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services, the time of production of the goods or of rendering of the services, or other characteristics of the goods or services, or that consist of the above-mentioned signs or indications that are not considerably altered;
trademarks that consist exclusively of signs and indications which have become customary in the current language use in relation to such goods or services for which application for registration of a trademark is made, or which have become customary in economic and business activities,
signs which consist exclusively of the shape which results from the nature of the goods, is necessary to obtain a technical result or gives substantial value to the goods;

Notes:

1. The above-specified signs, as elements of trademarks, are not subjects to protection, such signs will be considered disclaimed.

2. The above 5 clauses do not apply if it is proven that by the filing date of an application for registration of a trademark (hereinafter registration application), the trademark has, due to its use, become well known in the Republic of Estonia within the meaning of Article 6 bis of the Pans Convention for the Protection of Industrial Property.

trademarks that are of such a nature as to deceive the consumer as to the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services, the time of production of the goods or of rendering of the services, or other characteristics of the goods or services;
trademarks that are contrary to public policy or to accepted principles of morality.

4. Relative grounds for refusal of registration of trademarks:

The following shall not be registered as a trademark:

a trademark that is identical with an earlier trademark that is registered or filed for registration in the name of another person to designate identical goods or services;
a trademark that is identical with, confusingly similar to, or associated with, an earlier trademark that is registered or filed for registration in the name of another person to designate similar goods or services, unless the other person gives written consent for the registration;
a trademark that is identical with, confusingly similar to, or associated with, an earlier trademark that is registered or filed for registration in the name of another person to designate goods or services of a different type, if, due to confusion on the part of the consumer, this may take advantage of the repute or be detrimental to the distinctive character of another person's trademark, unless the other person gives written consent for the registration;
a trademark or marking of goods that belongs to another person, and at the filing date of the registration application or the date of priority, is well known in the Republic of Estonia within the meaning of Article 6 bis of the Paris Convention for the Protection of Industrial Property, regardless of whether or not it is registered, unless the other person gives written consent for the registration;
a trademark that is identical with, or confusingly similar to, the business name of another person, provided that the business name is entered in the commercial register prior to the filing date of the registration application or the date of priority, and the other person's area of activity, in respect of which a notation has been made in the commercial register, includes the goods and services for which a registration application is filed, unless the other person gives written consent for the registration;
a trademark that includes a portrait of a person, the name of a well-known person, name of a registered immovable, name or representation of an architectural site, if this is detrimental to the rights of the person depicted on the portrait, of the well-known person or the owner of the registered immovable or architectural site, unless the entitled person gives written consent for the registration;
a trademark that includes a protected industrial design;
a trademark that includes a work, or the title thereof, protected by copyright, unless the entitled person gives written consent for the registration,
a trademark that includes the name of an active ingredient of a medicinal product or the name of a medicinal product which belongs and is registered to another person in the Republic of Estonia prior to the filing date of the registration application or the date of priority of the trademark;
a trademark that is identical with a trademark registered and used in another country if the registration application is made in bad faith.

5. Access to and release of information from database of registration applications and their proceeding.

The database of applications and information on the processing of applications is a structured body of data concerning processed application documents and information on the processing thereof. Information on an application and the processing thereof is maintained until the end of processing.
It is permitted to release the following information from the database: representations of trade marks, numbers of registration applications, filing dates of registration applications, information on priority, names of applicants, names of representatives of applicants, lists of goods and services, and class numbers of the international classification.
A fee is charged for the release of information from the database of registration applications and information on the processing of applications. A state fee is charged for the release of information.

6. Trade mark registration application

Natural or legal persons of other countries shall arrange matters in connection with registration and maintaining of trademarks through patent attorneys domiciled in, and citizens of, the Republic of Estonia. The power of attorney, simply signed, mentioning the name and position of the signatory, shall be filed on the date of filing the application or within two months of that date.

Each trademark registration application shall be filed for one trademark. An application shall contain:

a request to register a sign as a trademark, which indicates the name of the applicant (applicants) and the applicant's (applicants') seat or residence;
a representation of the trademark;
the list of goods and/or services, classified in accordance with the international classification of goods and services in respect of which registration of the trademark is applied for, and the class numbers of the classification;
a document certifying payment of the state fee or a copy thereof,
a document certifying the authority of the patent agent or a copy thereof, if the registration application is filed via a patent agent;
the regulations of the collective mark, if the registration application concerns a collective mark.

A document certifying the authority of a patent agent or a copy thereof may be filed within two months after the filing date of the application. The regulations of a collective mark may be filed within two months after the filing date of the application. Application documents shall be filed in the Estonian language.

7. Priority of trademarks

The priority of a trademark is determined based on the filing date of the application with the Patent Office.
The priority of a trade mark is determined based on the filing date of the first application for registration of the trade mark in a state party to the Pans Convention for the Protection of Industrial Property (Convention priority) if the registration application is filed with the Patent Office within six months after the filing date of the first application.
The date of priority of a trade mark in respect of an exhibit which is displayed at an international or officially recognised international exhibition in the territory of a state party to the Paris Convention for the Protection of Industrial Property (exhibition priority) is the date of public display of the exhibit at such exhibition if the registration application is filed with the Patent Office within six months after the date of display. The requirements for international exhibitions are provided for in the Convention on International Exhibitions of 22 November 1928 and its later revisions.
An applicant who wishes to claim convention or exhibition priority shall indicate such claim in the application for registration of a trade mark and provide documents substantiating the claim together with the application or within three months after the filing date of the application with the Patent Office.

8. Priority of trademarks

The priority of a trademark shall commence from the date of filing the application with the Patent office. If the application is filed with the Patent Office within 6 months from the date of filing the primary application for registration of the trademark in a member state of the Paris Convention, the priority shall commence from that date.

9. Examination of trademark

If all the requirements are fulfilled, the application is directed to examination. In the course of the examination, the Patent Office may demand from the applicant specifications or corrections to his application within a certain term. The applicant is entitled to an extension if he pays an additional official fee.

Based on the examination results, the Patent Office either registers or rejects the trademark. If the Patent Office passes a decision to register the sign as a trademark, the sign shall be published in the Estonian Trade Mark Gazette.

10. Contesting the decision

The applicant is entitled to contest the decision of the Patent Office in the Appeal Board within two months from passing the decision. Any interested party is entitled to contest the decision of the Patent Office in the Appeal Board within two months from the publication of the trademark in the Estonian Trade Mark Gazette.

11. State Register of Trade and Service Marks

Trademarks shall be entered into the State Register of Trade and Service Marks of the Republic of Estonia following the payment of the fee and the Patent Office issues a trademark certificate to the owner. The trademarks entered into the Register shall be published in the Estonian Trade Mark Gazette.

12. Duration of a trademark

A trademark right shall commence from the date of filing the application and continue for a period of 10 years from the date of its entry into the Register.

The trademark right can be extended, based upon the owner's application, for 10 years each time if the owner submits the corresponding application within 1 year before expiry of the registration period. After the expiry of the registration period, the Patent Office may grant the owner of the trademark a 6-months term to submit the application for renewal.

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.

Estonia: Overview Of The Trade Marks Act