Under Art 1 Section 2 of the Paris Convention both trademarks and trade (or business) names belong to the categories of intellectual property.
To decide on the possibilities of registration of a trademark in Estonia, the trademark applicant has to learn also about trade names of commercial undertakings registered in the Commercial Register. In the same way, while choosing a trade name one has to take into consideration the trade marks entered into the Trade Mark Register.
Kaosaar & Co provides both the trade name and trademark search.
According to the present version of the Trademark Law trade name or its part belonging to another person shall not be registered as a trademark. Classes of the trademark or field of activity of the commercial undertaking have no importance here. Thus, under the present Act a trade name RED DOG is an obstacle to the registration of trademarks RED, DOG and RED DOG in any class. At the same time an earlier trade name DOG is not an obstacle to the registration of a trade name RED DOG. Trademark can be registered with the written consent of the owner of the trade name (i.e. with the consent of the commercial undertaking). Under Art 12 Section 3 of the Estonian Commercial Code a name contained in a trademark protected by law in Estonia shall not be used in a trade name without the consent of the owner of the trademark. Thus, the trademark RED DOG (if there are no disclaimers) should be an obstacle to the registration of business names DOG, RED DOG, RED, BLUE DOG and BIG BROWN DOG.
Under the Art 6bis of the Paris Convention the member states shall grant the legal protection of well-known trademarks. So far it is not clear whether a well-known, but unregistered trademark is an obstacle to the registration of a trade name.
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.
