Introduction:

 

Language: Estonian

Capital: Tallinn

Area: 45,339 km2

Population: 1,317,797(2017)

Currency: Euro

Religion: Christians

Geographical situation: is a country in the Baltic region of Northern Europe. It is bordered to the north by the Gulf of Finland, to the west by the Baltic Sea, to the south by Latvia, and to the east by Lake Peipus and Russia.

 

International treaty membership:

Singapore Treaty on the Law of Trademarks (August 14, 2009)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (November 18, 1998)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (May 27, 1996)

Convention Establishing the World Intellectual Property Organization (February 5, 1994)

 

Legislation:

Trade Marks Act (consolidated text of of January 1, 2012, incorporating amendments up to July 1, 2014)

 

Government Institutions:

Estonian Ministry of Justice, Patent Office.

 

Type of trademark:

All distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, combinations of colours, three-dimensional forms, the three dimensional form of a good or its packaging and any combination of the mentioned signs can be registered as trademarks.

The following trademark types are registrable: trade marks, service marks, collective marks, certification marks, trade names and titles of establishment.

 

Ground for refusal:

Absolute ground for refusal:

1) signs which are devoid of any distinctive character, including single letters in non-stylised form, single numbers in non-stylised form and single colours;

2) signs which consist exclusively of signs or indications which designate the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services,

3) signs which consist exclusively of signs or indications which have become customary in current language or in bona fide business practices;

4) 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; 5) signs which are of such a nature as to mislead 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;

6) signs which are contrary to public order or accepted principles of morality;

7) signs which include a flag, armorial bearings or another symbol other than those covered by Article 6 ter of the Paris Convention for the Protection of Industrial Property the registration of which is contrary to public interest, unless the competent authorities or officials give written consent for the registration;

8) signs the application for the registration of which was filed in bad faith by the person applying for registration or the use of which has commenced in bad faith;

 

Relative ground for refusal:

 

1) trademarks which are identical with an earlier trade mark which has been granted legal protection with regard to identical goods or services designated by the trade mark;

2) trademarks which are identical or similar to an earlier trade mark which has been granted legal protection with regard to identical goods or services or goods or services of a similar kind designated by the trade mark, if there exists a likelihood of confusion on the part of the consumers, which includes association of the trade mark with the earlier trade mark;

 

Application content:

Each trade mark shall have a separate application.

A request for the registration of a trade mark shall contain:

1) a request for the registration of a trade mark;

2) the name, address of the residence or seat of the applicant and, if the applicant so wishes, other details of the applicant;

3) the name of the representative of the applicant, if the applicant has a representative;

4) the address of a commercial or industrial enterprise operating in Estonia and belonging to a person of a foreign state, if such person has no representative;

5) a representation of the trade mark;

6) a list of goods and services classified according to the Nice Classification together with class numbers;

7) a priority claim if priority is claimed;

8) a list of colours, if the representation of the trade mark is in colour;

9) where the mark is a three-dimensional mark, a statement to that effect;

10) the signature of the applicant or the representative of the applicant.

 

Application process:

The date on which at least the following information is submitted to the Patent Office shall be deemed to be the filing date of an application:

1) a request for the registration of a trade mark in Estonian;

2) a representation of the trade mark;

3) a list in Estonian of goods and services for which the registration application is filed;

4) the name of the applicant and information necessary for enabling the Patent Office to communicate with the applicant or a representative of the applicant.

If any information is missing from an application, the applicant shall be notified thereof and a term of two months shall be set for elimination of deficiencies.

The application process includes a formal examination, an examination of distinctiveness and a substantial examination (search for prior trademarks and company names). Signs not deemed distinctive in the examination can be registered if distinctive character has been acquired by use.

Before registration, the trademark application is published in the official Gazette (Eesti Kaubamärgileht). The processing time from first filing to registration is around 11 to 13 months.

The opposition period at the Board of Appeal is 2 months from publication date of the application.

 

Refusal:

The application will be rejected if it meet any absolute or relative ground for refusal.

If it becomes evident in the course of verification of the compliance of an application with the requirements for contents and form the Patent Office shall notify the applicant thereof in writing and set a term of at least two months for the elimination of deficiencies or provision of explanations. If an applicant fails to eliminate deficiencies a decision to reject the application shall be made.

If an examination reveals circumstances which preclude the legal protection of a trade mark, the Patent Office shall notify the applicant thereof and set a term of at least two months for the elimination of the said circumstances or provision of explanations. If the applicant fails to respond by the due date, the application is deemed to be withdrawn.

An applicant may file an appeal against a decision of the Patent Office before the Industrial Property Board of Appeal within two months from the date of making the decision.

 

Rights of exploitation and related delay:

The proprietor of a trade mark has the right to prohibit third parties from using in the course of trade:

1) any sign which is identical with the trade mark which is granted legal protection in relation to goods or services which are identical with those for which the trade mark is protected;

2) any sign which is identical with or similar to the trade mark which is granted legal protection in relation to goods or services which are identical with or similar to those for which the trade mark is protected if there is the likelihood of confusion on the part of the consumers, including the likelihood of association between the sign and the trade mark which is granted legal protection;

3) any sign which is identical with, or similar to a registered trade mark or a trade mark which is known to the majority of the Estonian population and which is granted legal protection, where such sign is used to designate goods or services which are not similar to those for which the trade mark is registered, if use of that sign might take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trade mark.

 

The protection of the mark is valid for a period of 10 years, renewable each time for 10 years. During one year prior to expiry of the term of legal protection of a trade mark, the proprietor of the trade mark may request the renewal of the term, with a grace period of six months after the expiry.

 

Transfer and conditions:

A trade mark may be transferred in relation to all or some of the goods or services.

A trade mark transfers to the legal successor of the proprietor of the trade mark.

A trade mark shall not be inherited by the state or a local government.

The transfer of a registered trade mark enters into force as of the date of entry of the corresponding amendment in the register.

 

Certification:

After entry of a trade mark in the register, the Patent Office issues, within twenty working days, a certificate of registration to the proprietor of the trade mark. Only one certificate of registration is issued regardless of the number of proprietors of a trade mark. In case of transfer of a trade mark in relation to some of the goods or services or in case of division of a registration, a certificate of registration is issued to the proprietor of the new registration within twenty working days after entry of the new registration data in the register.

 

Withdrawal and cancellation:

An applicant may withdraw an application until the making of the registration by filing a corresponding written request. An application is deemed to be withdrawn on the date of receipt of the request by the Patent Office.

The owner of the mark can also surrender his right by a written request to the Patent Office.

Within 5 years after becoming aware of the use of the trade mark it is also possible to file an action against the proprietor of a trademark for his exclusive rights to be cancelled if circumstances which preclude legal protection (absolute or relative ground for refusal) exist and existed also at the time when the decision to register the trademark was made.

If the trademark has not been used within 5 years from registration, it may be subject to cancellation. Trademarks cannot be cancelled on the basis of non-use if the proprietor started to use the trademark after a 5 years period and more than 3 months prior to filing of the action.

If a trade mark which is identical or confusingly similar to a trade mark which has been granted legal protection in another country is registered to the name of the representative of the proprietor of the trade mark without the proprietor’s consent, the proprietor of the trade mark used in the other country has the right to file, within five years after becoming aware of the registration of the trade mark to the name of the representative, an action in a claim requesting the transfer of the trade mark to the proprietor

 

Customs protection:

The right holder shall apply for protection before the customs. This application will be filed on the name of the right holder or the exclusive licensee with the power to initiate legal proceeding. This application will allow the right holder to request existing surveillance decisions to also cover new IP rights. Goods which infringe intellectual property shall be seized in first place then shall be destroyed under customs supervision. If the holder of the goods fails to answer when he is notified for the seizure of such goods, the customs will still proceed to the destruction. Customs authorities shall collect the costs of destroying confiscated goods from the person from whom the goods were confiscated. Goods in transit destined to be sold outside of EU market cannot be seized unless there is a substantial likelihood that they will be diverted from their transit into the EU market.

 

Sources:

WIPO.int:

  • Trade Marks Act (consolidated text of of January 1, 2012, incorporating amendments up to July 1, 2014)
  • Customs Act Passed 13.04.2004 RT I 2004, 28, 188 Entry into force 01.05.2004

New regulation 608/2013 adopted by European Parliament and the Council of Ministers.

 

 

Vincent Lagier

創作者介紹

眾律國際法律/專利商標事務所

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