The first law in the field of intellectual property adopted in the re-established Republic of Estonia was Trademark Law (enforced on 1 October 1992). Art.35.1 of this Law enacted the rules for pre-judicial settlement of trademark disputes prescribing the establishment of a special body - Board of Appeals of Intellectual Property (The Board). The Board acts on the basis of the Statute validated in 1992 and amended in 1993.

The first decisions on the registration of trademarks were published in December 1993 and since then also the Board has been active. According to the present practice the Board has its hearings once in two weeks and about 150 cases have been examined (all together about 200 complaints have been filed) within four years of its practice.

The Minister of Industry has validated the Statute of the Board on 30 September 1992. For harmonisation with the later legal acts a new statute should be prepared in the nearest future.

The Board as well as the Estonian Patent Office (The Office) act in the administrative field of the Ministry of Economics. The Ministry of Economics constitutes the Board for five years. The Head of the Board is a lawyer with higher education and practical experiences. The secretary of the Board is an employee of the Office being also an intermediary between the Office and the Board. The Board has 13 members who are distinguished specialists in the fields of science and technology in Estonia and who, in addition, are skilled in the field of industrial property.

The Board examines the complaints on the decisions of the Office concerning the application and grant of the protection documents on the objects of industrial property, as well as any other complaints which according to the Law fall under the jurisdiction of the Board. Today, in addition to the Trademark Law, also Patent Law and Utility Model Law are in force (enforced in 1994).

Examining the complaints in the Board

To start an appeal procedure a written complaint shall be submitted to the Board indicating the complainant's claim and content of the complaint and the proof. By the consent of the Head of the Board the proof can still be submitted later. The complaint may be submitted also by facsimile, but then the original copy must follow within two weeks.

The complaint accepted for procedure shall be given to a member of the Board for preparation. The Head of the Board shall appoint the time of the examination and the members of the Board examining the complaint (3-5 members). A copy of the complaint with references to the proof will be sent to the opposite party at least two weeks before the examination.

Examination of a complaint takes place without the presence of the parties and only for specifying the circumstances given in the complaint the Board examines the case in attendance of the parties at the open hearing. In practice most of the discussions take place at the open hearings, the parties being informed of the time and place of the examination. Mostly the parties attend the examination but their failure to appear does not prevent the examination of the complaint.

The decision must be made within the period of one month from the date of submitting the complaint. In complicated cases the Board may extend the term. It is also possible to give the parties an "extra" term for presenting additional materials.

Naturally complainant in person may attend the open examination, i.e. a representative of a foreign firm, translator, etc. The expenses of translator shall be borne by the party who needs translating. The attendance of the patent attorney is necessary since the foreign applicant arranges the matters concerning trademarks only through Estonian patent attorney.

The Board shall make a decision after the proof has been checked and the corresponding explanations heard. In practice the parties are notified of the decision orally at the open hearing, the written decision is sent to them within ten days mostly. The Statute prescribes that a copy of the decision shall be sent to the complainant and the Office within seven days.

Under the Trademark Law any person interested may take the decision of the Board to the court of law during the period of three months from the date when the decision was made. Under this interpretation the appeal could be submitted also by the Office or a person who has not been a party at the examination of the case. The Statute prescribes that only the parties of the case can take the decision of the Board to the court of law. Here the provision of the Statute seems to be rather more reasonable than the one provided by the law, although the law should be an act with higher legal power.

Trademark disputes in the Board

The field of activities of the Board is not restricted only to complaints in trademark matter. The Board shall settle all complaints lodged with it contesting decisions of the Office. However, till today only two cases concerning the novelty of utility models were heard. In the first case the complaint was rejected and in the second case the registration of utility model was nullified. So far there have not been any complaints concerning patents.

This article is excerpt from the lecture which will be delivered by Mr Juri Kaosaar at the Second Baltic IPR Conference. The conference will be held in Tallinn on August 27-29, 1997 and is arranged by the Estonian National Group of AIPPI and the Estonian Patent Office. More information available at request!

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.