Propiedad intelectual Formación en PI Respeto por la PI Divulgación de la PI La PI para... La PI y… La PI en… Información sobre patentes y tecnología Información sobre marcas Información sobre diseños industriales Información sobre las indicaciones geográficas Información sobre las variedades vegetales (UPOV) Leyes, tratados y sentencias de PI Recursos de PI Informes sobre PI Protección por patente Protección de las marcas Protección de diseños industriales Protección de las indicaciones geográficas Protección de las variedades vegetales (UPOV) Solución de controversias en materia de PI Soluciones operativas para las oficinas de PI Pagar por servicios de PI Negociación y toma de decisiones Cooperación para el desarrollo Apoyo a la innovación Colaboraciones público-privadas Herramientas y servicios de IA La Organización Trabajar con la OMPI Rendición de cuentas Patentes Marcas Diseños industriales Indicaciones geográficas Derecho de autor Secretos comerciales Academia de la OMPI Talleres y seminarios Observancia de la PI WIPO ALERT Sensibilizar Día Mundial de la PI Revista de la OMPI Casos prácticos y casos de éxito Novedades sobre la PI Premios de la OMPI Empresas Universidades Pueblos indígenas Judicatura Recursos genéticos, conocimientos tradicionales y expresiones culturales tradicionales Economía Financiación Activos intangibles Igualdad de género Salud mundial Cambio climático Política de competencia Objetivos de Desarrollo Sostenible Tecnologías de vanguardia Aplicaciones móviles Deportes Turismo PATENTSCOPE Análisis de patentes Clasificación Internacional de Patentes ARDI - Investigación para la innovación ASPI - Información especializada sobre patentes Base Mundial de Datos sobre Marcas Madrid Monitor Base de datos Artículo 6ter Express Clasificación de Niza Clasificación de Viena Base Mundial de Datos sobre Dibujos y Modelos Boletín de Dibujos y Modelos Internacionales Base de datos Hague Express Clasificación de Locarno Base de datos Lisbon Express Base Mundial de Datos sobre Marcas para indicaciones geográficas Base de datos de variedades vegetales PLUTO Base de datos GENIE Tratados administrados por la OMPI WIPO Lex: leyes, tratados y sentencias de PI Normas técnicas de la OMPI Estadísticas de PI WIPO Pearl (terminología) Publicaciones de la OMPI Perfiles nacionales sobre PI Centro de Conocimiento de la OMPI Informes de la OMPI sobre tendencias tecnológicas Índice Mundial de Innovación Informe mundial sobre la propiedad intelectual PCT - El sistema internacional de patentes ePCT Budapest - El Sistema internacional de depósito de microorganismos Madrid - El sistema internacional de marcas eMadrid Artículo 6ter (escudos de armas, banderas, emblemas de Estado) La Haya - Sistema internacional de diseños eHague Lisboa - Sistema internacional de indicaciones geográficas eLisbon UPOV PRISMA UPOV e-PVP Administration UPOV e-PVP DUS Exchange Mediación Arbitraje Determinación de expertos Disputas sobre nombres de dominio Acceso centralizado a la búsqueda y el examen (CASE) Servicio de acceso digital (DAS) WIPO Pay Cuenta corriente en la OMPI Asambleas de la OMPI Comités permanentes Calendario de reuniones WIPO Webcast Documentos oficiales de la OMPI Agenda para el Desarrollo Asistencia técnica Instituciones de formación en PI Apoyo para COVID-19 Estrategias nacionales de PI Asesoramiento sobre políticas y legislación Centro de cooperación Centros de apoyo a la tecnología y la innovación (CATI) Transferencia de tecnología Programa de Asistencia a los Inventores (PAI) WIPO GREEN PAT-INFORMED de la OMPI Consorcio de Libros Accesibles Consorcio de la OMPI para los Creadores WIPO Translate Conversión de voz a texto Asistente de clasificación Estados miembros Observadores Director general Actividades por unidad Oficinas en el exterior Ofertas de empleo Adquisiciones Resultados y presupuesto Información financiera Supervisión
Arabic English Spanish French Russian Chinese
Leyes Tratados Sentencias Consultar por jurisdicción

Ley de Marcas (texto consolidado del 1 de mayo de 2004), Estonia

Atrás
Versión obsoleta  Ir a la versión más reciente en WIPO Lex
Detalles Detalles Año de versión 2004 Fechas Adoptado/a: 22 de mayo de 2002 Tipo de texto Principal legislación de PI Materia Marcas, Nombres comerciales, Observancia de las leyes de PI y leyes conexas, Organismo regulador de PI

Documentos disponibles

Textos principales Textos relacionados
Textos principales Textos principales Inglés Trade Marks Act (consolidated text of May 1, 2004)        
 Trade Marks Act, 2004

ESTONIA

Trademark Act

as amended by Act No. RT I 2004, 20, 141 of March 10, 2004

ENTRY INTO FORCE: May 1, 2004

TABLE OF CONTENTS

Chapter 1 General Provisions

§ 1. Scope of application of Act

§ 2. Equality of persons

§ 3. Trade marks

Chapter 2 Legal Protection of Trade Marks

§ 4. Content of legal protection of trade marks

§ 5. Protectable trade marks

§ 6. Representability of protected trade marks

§ 7. Recognition of well-known trade marks

§ 8. Legal protection on basis of registration

§ 9. Absolute circumstances which preclude legal protection

§ 10. Relative circumstances which preclude legal protection

§ 11. Earlier trade mark and other earlier rights

§ 12. Scope of legal protection of trade marks

§ 13. Representative for performing acts related to legal protection of

trade marks

Chapter 3 Rights Conferred by Trade Mark

§ 14. Exclusive right

§ 15. Registered trade mark symbol

§ 16. Limitation of exclusive right

§ 17. Obligation to use trade mark

§ 18. Transfer of trade marks

§ 19. Surrender of trade marks

§ 20. Division of registration

§ 21. Licence

§ 22. Prohibition

§ 23. Compulsory execution and bankruptcy

§ 24. Pledging of trade marks

§ 25. Satisfaction of claim secured by pledge

§ 26. Extinguishment of pledge

§ 27. Rights conferred by application

1

Chapter 4 Registration of Trade Marks

§ 28. Application

§ 29. Priority

§ 30. Request for registration of trade mark

§ 31. Representation of trade mark

§ 32. Authorisation document

§ 33. Documents certifying priority

§ 34. Filing of application

§ 35. Filing date of application

§ 36. Determination of filing date of application and acceptance for

processing

§ 37. Examination of compliance of applications with formal and substantive

requirements

§ 38. Examination of trade marks

§ 39. Decision to register trade mark and decision to refuse registration

of trade mark

§ 40. Publication of decision to register trade mark

§ 41. Adjudication of appeals and revocation applications

§ 42. Renewal of terms

§ 43. Suspension of processing

§ 44. Division and restriction of applications

§ 45. Correction and amendment of applications

§ 46. Conditions for registration

§ 47. Withdrawal of applications, termination and resumption of processing

§ 48. Registration

§ 49. Publication of registration data

§ 49-1. Certificate of registration

§ 50. Renewal of term of legal protection of trade marks

§ 50-1. Application for entry on transfer of trade mark in register

§ 50-2. Application for entry on amendment of registration data in other

cases

§ 50-3. Application for entry on surrender of trade mark in register

§ 50-4. Application for entry on division of registration in register

§ 50-5. Application for entry of licence in register

§ 50-6. Application for entry of pledge in register

§ 50-7. Processing of requests specified in §§ 50 - 50-6

§ 51. Deletion of trade mark from register

§ 51-1. Access to register

2

Chapter 5 Judicial Contestation of Rights and Civil Liability

§ 52. Declaration of invalidity of exclusive right of proprietor of trade

mark

§ 53. Declaration of exclusive right of proprietor of trade mark

extinguished

§ 54. Declaration of invalidity of exclusive right to trade mark containing

geographical indication

§ 55. Consequences of declaration of invalidity of exclusive right and

declaration of exclusive right extinguished

§ 56. Partial declaration of invalidity of exclusive right and partial

declaration of exclusive right extinguished

§ 57. Protection of exclusive right

§ 58. Supplementary protection requirements

§ 59. Counterclaims

§ 60. Specifications of judicial proceedings in matters relating to trade

marks

§ 60-1. Organisation representing proprietors of trade marks

Chapter 6 Specifications of Legal Protection of Collective Marks and

Guarantee Marks

§ 61. Definition of collective mark and guarantee mark

§ 62. Regulations of collective mark or guarantee mark

§ 63. Specifications of legal protection of collective marks and guarantee

marks

§ 64. Additional grounds for declaration of invalidity of exclusive right

of proprietor of collective mark or guarantee mark or declaration of such

exclusive right extinguished

§ 65. Specifications of protection of exclusive right to collective marks

and guarantee marks

Chapter 7 International registration of trade marks

§ 66. International registration of trade marks

§ 67. Application for international registration

§ 68. Processing of international applications

§ 69. Effect of international registration

§ 70. Processing of international registration

§ 71. Invalidity of international registration and conversion thereof

to national application

Chapter 7-1 Community trade mark

§ 71-1. Registration of Community trade mark

3

§ 71-2. Application for Community trade mark

§ 71-3. Conversion of Community trade mark application or Community trade

mark into a national trade mark application

§ 71-4. Retroactive revocation of trade mark deleted from register

§ 71-5. Specifications of judicial proceedings in matters relating to

Community trade marks

§ 71-6. Prohibition on use of Community trade mark

Chapter 8 Implementing Provisions

§ 72. Transitional provisions

§ 73. Repeal of Trade Marks Act

§ 74. Entry into force of Act

4

Chapter 1 General Provisions

§ 1. Scope of application of Act

(1) This Act regulates the legal protection of well-known and registered

trade marks and service marks (hereinafter trade mark) and rights and

obligations related to trade marks and, in the cases provided for in this

Act, rights and obligations related to trade marks registered by the Office

for Harmonization in the Internal Market (hereinafter Community trade

mark) on the basis of Council Regulation (EC) No 40/94 of 20 December

1993 on the Community trade mark (Official Journal L 011, 14/01/1994 P.

0001 - 0036) (hereinafter Community trade mark Regulation).

(2) The Minister of Economic Affairs and Communications shall issue a

regulation for the implementation of this Act in matters where the

competence of a Member State for taking decisions arises from corresponding

legal acts of the European Union or from this Act (hereinafter regulation

on trade marks).

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 2. Equality of persons

The rights and obligations prescribed in this Act and other legal acts

concerning the protection of trade marks apply equally to persons of Estonia

and persons of foreign states taking account of the restrictions provided

for in this Act concerning persons with no residence, seat or commercial

or industrial enterprise operating in Estonia.

§ 3. Trade marks

A trade mark is a sign used to distinguish the goods or services of a

person from other similar types of goods or services of other persons.

5

Chapter 2 Legal Protection of Trade Marks

§ 4. Content of legal protection of trade marks

(1) Legal protection of trade marks means the recognition of and protection

of the rights of the person who holds an exclusive right to a trade mark

(hereinafter proprietor of a trade mark) with legal means.

(2) An exclusive right to a registered trade mark may be exercised only

by the person who is entered in the register of trade and service marks

(hereinafter register) as the proprietor of the trade mark unless otherwise

provided by this Act.

(3) An exclusive right to an international registration valid pursuant

to the Protocol Relating to the Madrid Agreement Concerning the

International Registration of Marks (RT II 1998, 36, 68) (hereinafter

the Madrid Protocol) may be exercised in Estonia only by the person who

is entered in the International Register of the International Bureau of

the World Intellectual Property Organization (hereinafter Bureau) as the

proprietor of the trade mark unless otherwise provided by this Act.

§ 5. Protectable trade marks

(1) Legal protection shall be granted to:

1) trade marks which are well known in Estonia within the meaning of Article

6bis of the Paris Convention for the Protection of Industrial Property

(RT II 1994, 4/5, 19) (hereinafter well-known trade marks);

2) trade marks which are registered in the register (hereinafter registered

trade marks);

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

3) trade marks concerning which a registration valid in Estonia is entered

in the International Register of the Bureau pursuant to the Madrid Protocol.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(2) Legal protection is granted only to well-known trade marks, registered

trade marks or trade marks valid in Estonia pursuant to the Madrid Protocol

the legal protection of which is not precluded on the basis of the provisions

of §§ 9 and 10 of this Act.

§ 6. Representability of protected trade marks

(1) Protected trade marks shall be capable of being represented

graphically.

6

(2) (Repealed - 10.03.2004 entered into force 01.05.2004 - RT I 2004,

20, 141)

§ 7. Recognition of well-known trade marks

(1) A court shall recognise a trade mark as being well known at the request

of the proprietor of the trade mark. A trade mark shall be recognised

as being well known only in connection with an action or appeal concerning

the legal protection of the trade mark.

(2) The Patent Office shall consider a trade mark to be well-known only

in connection with the registration procedure of the trade mark or other

trade marks. The Industrial Property Board of Appeal shall consider a

trade mark to be well-known only in connection with the adjudication of

an appeal against a decision of the Patent Office or an application

concerning contestation of the legal protection of the trade mark.

(3) The following shall be taken into consideration upon recognising a

trade mark as being well known:

1) the degree of knowledge of the trade mark in Estonia in the sector

ofactualandpotentialconsumersofgoodsanalogoustothegoodsorservices

to which the trade mark applies, the sector of persons involved in channels

of distribution of such goods or services or in business circles dealing

with such goods or services;

2) the duration and extent of the use and promotion of the mark and

geographical area of the use of the mark;

3) the registration, use and knowledge of the mark in other countries;

4) the value associated with the mark.

(4) A trade mark shall be recognised as being well known if the trade

mark is known to the majority of persons in at least one of the sectors

specified in clause (3)1) of this section.

(5) The recognition of a trade mark as being well known shall not have

any legal effect in later disputes.

§ 8. Legal protection on basis of registration

(1) A registration concerning a trade mark filed for registration is made

in the register under the conditions and pursuant to the procedure provided

for in Chapter 4 of this Act, taking account of the provisions of the

Principles of Legal Regulation of Industrial Property Act (RT I 2003,

18, 98, 82, 555; 2004, 20, 141).

7

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(2) Legal protection of a registered trade mark is valid as of the filing

date of an application for the registration of the trade mark (hereinafter

application) until ten years as of the date of making the registration.

The term of legal protection of a trade mark may be renewed at the request

of the proprietor of the trade mark for ten years at a time.

§ 9. Absolute circumstances which preclude legal protection

(1) Legal protection shall not be granted to the following signs:

1) signs which do not conform to the provisions of § 6 of this Act;

2) signs which are devoid of any distinctive character, including single

letters in non-stylised form, single numbers in non-stylised form and

single colours;

3) signs which consist exclusively of signs or indications which designate

thekind,quality,quantity,intendedpurpose,valueorgeographicalorigin

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

which describe the goods or services in another manner, or which consist

of the above-mentioned signs or indications which are not considerably

altered;

4) signs which consist exclusively of signs or indications which have

become customary in current language or in good faith business practice;

5) 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;

6) signs which 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;

7) signs which are contrary to public policy or accepted principles of

morality;

8) signs the registration of which must be refused on the basis of Article

6ter of the Paris Convention for the Protection of Industrial Property,

unless the competent authorities or officials give written consent for

the registration;

9) signs which include a flag, coat of arms or another symbol other than

those covered by Article 6ter 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

10) signs the application for the registration of which was filed in bad

faith by the person applying for registration (hereinafter applicant)

or the use of which has commenced in bad faith;

11) signs which contain a registered geographical indication or are

confusingly similar thereto if it may result in unlawful use of the

geographical indication pursuant to the provisions of the Geographical

Indications Protection Act (RT I 1999, 102, 907; 2000, 40, 252; 2001,

27; 151; 56, 332 and 335; 2002, 53, 336; 63, 387; 2003, 88, 594; 2004,

20, 141);

12) signs the use of which is prohibited pursuant to other Acts or an

international agreement.

(2) If, following the use which has been made of it, a trade mark has

acquired a distinctive character by the filing date of an application

and in the case of well-known trade marks, the provisions of clauses (1)2)

- 4) of this section do not apply.

(3) Upon the incorporation of a sign specified in clauses (1)2), 3), 4)

and 5) of this section within a trade mark, such sign constitutes an element

of the trade mark which is not subject to protection.

§ 10. Relative circumstances which preclude legal protection

(1) Legal protection shall not be granted to the following trade marks:

1) trade marks 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) trade marks 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 public,

which includes association of the trade mark with the earlier trade mark;

3) trade marks which are identical or similar to an earlier registered

trade mark or a trade mark which has been filed for registration or to

a trade mark which is known to the majority of the Estonian population

and which has been granted legal protection for different kinds of goods

or services, if the use of the later trade mark without due cause would

take unfair advantage of, or be detrimental to, the distinctive character

or the repute of the earlier trade mark;

4) trade marks which are identical or confusingly similar to a business

name entered in the commercial register prior to the filing date of the

registration application or the priority date if the area of activity

9

in respect of which a notation has been made in the commercial register

includes the goods and services which the trade mark are used to or are

going to be used to designate;

5) trade marks which are identical or confusingly similar to the name

of a proprietary medicinal product registered in Estonia if the goods

which the trade mark is used to or is going to be used to designate belong

to the field of medicine;

6) trade marks the use of which is detrimental to an earlier right to

a name, a right of personal portrayal, a right to the name of an immovable,

the name or image of an architectural site, an object of copyright or

industrial property right or another earlier right;

7) trade marks which are identical or confusingly similar to a trade mark

which is used in another country and was used in that country also on

the date on which the application was filed, if the application is filed

in bad faith.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(2) Circumstances specified in clauses (1)2) - 6) of this section which

preclude legal protection are not taken into account if the proprietor

of the earlier trade mark or another earlier right consents to the

registration of the later trade mark in writing.

§ 11. Earlier trade mark and other earlier rights

(1) “Earlier trade mark” means the following:

1) a trade mark which became well known earlier;

2) a registered trade mark if the filing date of the application or the

date of priority is earlier;

3) a trade mark filed for registration if the filing date of the application

or the date of priority is earlier. A trade mark filed for registration

shall be an earlier trade mark only if it is registered;

4) a trade mark which is valid in Estonia on the basis of the Madrid Protocol

if the date of international registration or date of priority is earlier;

5) a trade mark filed for registration on the basis of the Madrid Protocol

if the date of international registration or date of priority is earlier.

A trade mark filed for registration is an earlier trade mark only if legal

protection for the trade mark is not refused in Estonia;

6) a Community trade mark registered on the basis of the Community Trade

Mark Regulation if the filing date of the application, priority date or

the seniority date granted on the basis of Estonian registration is earlier;

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

7)aCommunitytrademarkfiledforregistrationonthebasisoftheCommunity

10

Trade Mark Regulation if the filing date of the application, priority

date or the seniority date granted on the basis of Estonian registration

is earlier; A trade mark filed for registration shall be an earlier trade

mark only if it is registered.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(2) When determining other earlier rights, the date of acquisition of

the corresponding right in Estonia shall be taken into consideration.

(3) If rights to a trade mark or other rights are created on the same

date, such rights have no priority in relation to each other.

§ 12. Scope of legal protection of trade marks

(1) The scope of legal protection of a trade mark is based on the following:

1) for a well-known trade mark, the form of the trade mark in which it

became well known;

2) the representation of the trade mark entered in the register.

(2) The scope of legal protection of a trade mark with regard to goods

and services is determined:

1) for a well-known trade mark, by such goods and services which the trade

mark was used to designate when it became well known;

2) by a list of goods and services entered in the register or the

International Register of the Bureau.

(3) Goods and services are classified in accordance with the international

classification of goods and services established by the Nice Agreement

Concerning the International Classification of Goods and Services for

the Purposes of the Registration of Marks (hereinafter the Nice

classification) (RT II 1996, 4, 14).

(4) Goods or services may not be considered as being similar or dissimilar

to each other on the ground that they appear in the same class or different

classes of the Nice Classification.

(5) A trade mark may include elements which are not subject to protection

unless this decreases the distinctive character of the trade mark or

violates the rights of other persons.

(6) If, during subsequent use, an element of a trade mark which is not

subject to protection acquires a distinctive character or becomes well

11

known, new registration of the registered trade mark may be applied for

to extend legal protection to the whole mark.

§ 13. Representative for performing acts related to legal protection of

trade marks

(1) Acts related to trade marks shall be performed in the Patent Office

and in the Industrial Property Board of Appeal (hereinafter Board of Appeal)

by interested persons or patent agents who are expressly authorised by

the interested persons and who have been awarded patent agent

qualifications for operation in the area of trade marks pursuant to the

Patent Agents Act (RT I 2001, 27, 151; 93, 565; 2002, 53, 336; 2003, 88,

594). An interested person or patent agent may involve, at own expense,

an interpreter or adviser without the right of representation in oral

proceedings in the Patent Office or in the Board of Appeal.

(2) A person with no residence, seat or commercial or industrial enterprise

operating in Estonia shall authorise a patent agent as the person’s

representative to perform procedures related to trade marks in the Patent

Office and in the Board of Appeal, except the fling of an application.

(3) If several persons jointly perform acts related to trade marks in

the Patent Office and in the Board of Appeal, they may authorise a patent

agent as their representative or choose a representative from among

themselves (hereinafter joint representative) whose residence, seat or

commercial or industrial enterprise is in the Republic of Estonia. A joint

representative has the right to perform all acts related to the processing

of a patent application in the name of the applicants, except transfer

of the patent application.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

12

Chapter 3 Rights Conferred by Trade Mark

§ 14. Exclusive right

(1) 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,

and because of the identity or similarity of the goods or services covered

by the trade mark and the sign there is the likelihood of confusion on

the part of the public, including the likelihood of association between

the sign and the trade mark which is granted legal protection;

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

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 without due cause takes unfair advantage

of, or is detrimental to, the distinctive character or the repute of the

trade mark.

(2) The following acts, inter alia, are prohibited based on the provisions

of subsection (1) of this section:

1) affixing the sign to goods or to the packaging thereof;

2) offering goods for sale, putting them on the market or stocking them

for the purposes of sale under the sign;

3) offering or supplying services under the sign;

4) importing or exporting the goods under the sign;

5) using the sign on business papers, in advertising or instruction manuals

for the goods.

(3) The use of a trade mark on the Internet is considered to be use of

the trade mark in Estonia only if such use has commercial consequence

in Estonia. The following, inter alia, shall be taken into account upon

the establishment of commercial consequence:

1) business activity in Estonia of the person who uses a trade mark on

the Internet, such as actual business relations or relations motivated

by business, the existence of customer services and non-Internet activity

13

in Estonia;

2) the intention of the person who uses the trade mark on the Internet

to offer goods or services to persons in Estonia via the Internet, taking

into consideration the transportation of goods, the currency and

information, the language and Internet links relating to communication

with the provider of goods or services;

3) a condition indicated on the Internet stating that goods or services

shall not be offered to persons in Estonia, and adherence to such condition;

4) taking unfair advantage of, or being detrimental to the distinctive

character or the repute of a trade mark belonging to another person.

(4) Upon the publication of a registered trade mark in a reference book,

manual, textbook, professional journal or other publication, including

electronic publications, the author and publisher shall ensure that the

trade mark has the registered trade mark symbol next to it if the proprietor

of the trade mark so requests. If the publication is already published,

the proprietor of a trade mark may request the use of the registered trade

mark symbol in the next publication.

§ 15. Registered trade mark symbol

The proprietor of a trade mark may use the registered trade mark symbol

or a warning together with the trade mark.

§ 16. Limitation of exclusive right

(1) The proprietor of a trade mark has no right to prohibit other persons

from using the following in the course of trade in accordance with good

business practices:

1) the names and addresses of other persons;

2) any sign which consists 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

which describe the goods or services in another manner, or which consists

of the above-mentioned signs or indications which are not considerably

altered;

3) signs or indications which have become customary in current language

or in good faith business practice;

4) the trade mark if it is necessary to indicate the intended purpose

of a product, in particular as accessories or spare parts, or a service;

5) elements of the trade mark which are not subject to protection.

14

(2) The proprietor of an earlier trade mark has no right to prohibit the

use of a later trade mark or another later right if the proprietor of

the earlier trade mark was aware or should have been aware of the later

trade mark and has acquiesced, for a period of five consecutive years,

in the use of the later trade mark. The limitation does not apply if the

proprietor of the later trade mark commenced use of the trade mark or

filed the application in bad faith or if another later right was acquired

in bad faith. The proprietor of a later trade mark is not entitled to

prohibit the use of an earlier trade mark or another earlier right.

(3) The proprietor of a trade mark is not entitled to prohibit further

commercial exploitation of goods which have been put on the market in

Estonia or in a State party to the Agreement of the European Economic

Area under that trade mark by the proprietor or with the proprietor’s

consent unless the condition of the goods is changed after they have been

put on the market.

§ 17. Obligation to use trade mark

(1) The proprietor of a trade mark is required to actually use a registered

trade mark to designate goods and services in respect of which it is

registered.

(2) The following shall also constitute use of a trade mark by the proprietor

of the trade mark:

1) use of the trade mark in a form differing in elements which do not

alter the distinctive character of the mark in the form in which it was

registered;

2) affixing of the trade mark to goods or to the packaging thereof intended

solely for export purposes;

3) use of the trade mark with the consent of the proprietor of the trade

mark.

§ 18. Transfer of trade marks

(1) A trade mark may be transferred in relation to all or some of the

goods or services.

(2) 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.

(3) The transfer of a registered trade mark enters into force on the date

15

of entry of the corresponding amendment in the register.

§ 19. Surrender of trade marks

(1) The proprietor of a trade mark may surrender a trade mark with regard

to all or some of the goods and services.

(2) The surrender of a registered trade mark enters into force on the

date of entry of the corresponding amendment in the register.

(3) A trade mark cannot be surrendered if the trade mark is encumbered

with a pledge, included in a bankruptcy estate or a licence has been issued

or a prohibition on disposal has been made in relation to the trade mark.

§ 20. Division of registration

The proprietor of a trade mark may divide the registration into two or

more registrations and divide the goods and services between these

registrations. The division of a registration enters into force on the

date of entry of the corresponding amendment in the register.

§ 21. Licence

(1) A licensee may transfer the rights acquired from the proprietor of

a trade mark by way of a licence to third persons only with the permission

of the proprietor of the trade mark.

(2) The transfer of a trade mark or a licence issued later shall not affect

the validity of a licence issued earlier.

(3) An entry shall be made in the register concerning a licence if a party

to the licence agreement so requests.

(4) The term of the validity of a licence expires with the expiry of the

term of the registration.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 22. Prohibition

In order to secure an action, a prohibition on disposal may be made in

relation to a trade mark in the register at the request of the plaintiff.

§ 23. Compulsory execution and bankruptcy

(1) A trade mark may be the object of compulsory execution separately

from an enterprise.

16

(2) If a registered trade mark is included in a bankruptcy estate, a

corresponding notation shall be made in the register at the request of

the trustee in bankruptcy or a court.

§ 24. Pledging of trade marks

(1) A registered trade mark may be encumbered with a pledge such that

the person for whose benefit the pledge is established (hereinafter

pledgee) has the right to satisfaction of the claim secured by the pledge

against the pledged trade mark.

(2) A pledge is created by making an entry concerning the pledge in the

register on the basis of a notarised agreement for establishment of the

pledge between the proprietor of the trade mark and the pledgee.

(3) A pledge shall transfer to the legal successor of the pledgee. An

entry shall be made in the register concerning the transfer of a pledge.

§ 25. Satisfaction of claim secured by pledge

(1) A pledgee may demand the satisfaction of a claim secured by the pledge

after it becomes collectable.

(2) If a claim secured by a pledge is not satisfied, the pledgee is entitled

to satisfy the claim by way of selling the encumbered trade mark at a

compulsory auction.

(3) An agreement whereby the pledgee acquires the encumbered trade mark

for the satisfaction of a claim secured by the pledge is invalid.

§ 26. Extinguishment of pledge

A pledge extinguishes upon termination of the claim secured by the pledge

or if the pledgee waives the pledge.

§ 27. Rights conferred by application

The provisions of §§ 18 - 23 of this Act apply to applications and rights

conferred by applications taking into account the specifications arising

from the legal status of applications.

17

Chapter 4 Registration of Trade Marks

§ 28. Application

(1) Each trade mark shall have a separate application.

(2) An application shall set out:

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

2) an authorisation document or reference to an authorisation document

submitted earlier if the applicant has a representative;

3) documents certifying priority if priority is claimed;

4) information concerning payment of the state fee.

(3)Inaddition,theprovisionsofChapter6ofthisActapplytoapplications

for the registration of collective marks or guarantee marks.

§ 29. Priority

(1) Convention priority means the preferential right of the person who

files the first application to apply for legal protection to a trade mark.

The filing date of the first application is deemed to be the date of priority.

(2) If a first application contains the goods or services indicated in

an application filed with the Patent Office for the registration of the

same trade mark and such application is filed with the Patent Office within

six months as of the filing date of the first application, priority may

be established:

1) on the basis of the filing date of the first application in any State

party to the Paris Convention for the Protection of Industrial Property

or in a contracting state of the World Trade Organisation;

2) on the basis of the filing date of the first application in a state

which is not a State party to the Paris Convention for the Protection

of Industrial Property or in a state which is not member of the World

Trade Organisation if such state guarantees equivalent conditions for

persons who file first applications in the Republic of Estonia.

(3) Exhibition priority means the preferential right of the person who

publicly displays goods or services designated by a trade mark at an

international or officially recognised international exhibition within

the meaning of the Convention on International Exhibitions signed at Paris

in 1928 which takes place in the territory of a state specified in clause

(2)1) or 2) of this section to apply for legal protection of the trade

mark.

18

(4) If goods or services indicated in an application were displayed at

an exhibition specified in subsection (3) of this section, designated

by the same trade mark, and the application is filed with the Patent Office

within six months after the date of display, priority may be established

on the basis of the date of display at the exhibition.

(5) Priority may be established for a trade mark on the basis of several

first applications. If several first applications have been filed earlier,

the six month term provided for in subsection (2) of this section shall

be calculated from the earliest date of priority.

§ 30. Request for registration of trade mark

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 declaration of priority 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.

§ 31. Representation of trade mark

(1)Arepresentationofatrademarkshallgiveaclearandcompletedepiction

of the trade mark.

(2) In the representation of a three-dimensional trade mark, one view

or several views of the trade mark may be presented.

(3) The Patent Office may request the transliteration and translation

of the part of the trade mark consisting of words.

19

§ 32. Authorisation document

An authorisation document shall set out the following:

1) the name and address of the residence or seat of the person represented;

2) the name of the representative;

3) the scope of the authorisation;

4) right to delegate authorisation, if the person represented grants such

right to the representative;

5) the term of validity of the authorisation, if the authorisation is

granted for a specified term;

6) the signature of the person represented;

7) the place and date of issue of the authorisation document.

§ 33. Documents certifying priority

(1) Convention priority is certified by a document which is issued to

the applicant by the agency which received the first application and which

sets out the information in the first application.

(2) Exhibition priority is certified by a document concerning the display

of goods or services designated by the trade mark at an exhibition specified

in subsection 29(3) of this Act issued by the organiser of the exhibition.

§ 34. Filing of application

(1) Applications are filed with the Patent Office.

(2) Information concerning payment of the state fee, a priority claim

and an authorisation document issued to the representative of the applicant

shall be filed within two months as of the filing date of an application.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(3) Documents certifying a priority claim shall be filed within three

months as of the filing date of the application. Documents certifying

priority need not be submitted if priority is claimed on the basis of

a first application filed in Estonia.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(4) The formal and substantive requirements for the application and other

documents to be submitted to the Patent Office shall be established by

the regulation on trade marks.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

20

§ 35. Filing date of application

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;

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

2) a representation of the trade mark;

3) a list in Estonian of goods and services for which the registration

application is filed;

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

4) information necessary for identification of the applicant, or address

of the applicant or the representative of the applicant.

§ 36. Determination of filing date of application and acceptance for

processing

(1) If an application meets the requirements provided for in § 35 of this

Act upon its receipt in the Patent Office, the date of receipt of the

application in the Patent Office shall be deemed to be the filing date

of the application.

(2) If any information specified in § 35 of this Act 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 Patent Office

is not required to give notice if the filed documents do not contain the

name or address of an applicant or the name of the representative of the

applicant.

(3) If the name or address of an applicant or the name of the representative

of the applicant is missing, the applicant may, on own initiative, file

all the application information specified in § 35 of this Act within two

months as of the date of receipt of the initially filed documents in the

Patent Office.

(4) If an applicant files all the missing application information within

a term set pursuant to subsection (2) of this section or, if subsection

(3) applies, within the term provided for therein, the date on which all

the application information specified in § 35 are submitted to the Patent

Office shall be deemed to be the filing date of the application.

(5) An application the filing date of which is determined pursuant to

subsection (1) or (4) of this section shall be accepted for processing.

The Patent Office shall notify the applicant of the filing date of the

21

application and the application number.

(6)Thefilingdateofanapplicationshallnotbedeterminediftheapplicant

fails to submit missing application information to the Patent Office within

the term prescribed in the cases provided for in subsections (2) and (3)

of this section. The Patent Office shall inform the applicant that the

application is deemed to be not filed. The applicant is entitled to a

refund of the state fee paid by the applicant.

§ 37. Examination of compliance of applications with formal and substantive

requirements

(1) If it becomes evident in the course of examination of the compliance

of an application with formal and substantive requirements that a document

specified in § 28 of this Act is missing from the application or documents

do not meet the requirements provided for in §§ 30 - 33 or requirements

established on the basis of subsection 34(4) of this Act, 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.

(2) If an applicant fails to eliminate deficiencies in the applicant’s

response to the notice specified in subsection (1) of this section, a

decision to reject the application shall be made.

(3) If an applicant fails to respond to the notice specified in subsection

(1) of this section by the due date or fails to submit, within the term

provided for in subsection 34(2) of this Act, information concerning

payment of the state fee in the prescribed amount or fails to file an

authorisation document within the prescribed term, the application shall

be deemed to be withdrawn.

(4) If an applicant does not file a priority claim within the term provided

for in subsection 34(2) of this Act or fails to submit documents certifying

priority by the due date or the priority claim does not comply with the

provisions of § 29 or the documents submitted do not certify priority,

the Patent Office shall not take the priority claim into consideration.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 38. Examination of trade marks

(1)ThePatentOfficeshallexamineatrademarkwithregardtotheprovisions

of subsection 9(1) and § 10 of this Act.

22

(2) 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 the provision of explanations. If the applicant

fails to respond by the due date, the application shall be deemed to be

withdrawn.

(3) If an examination reveals that a trade mark contains a sign which

constitutes an element of the trade mark which is not subject to protection

pursuant to subsection 9(3) of this Act and such sign does not cause doubt

as to the extent of the exclusive right, the Patent Office shall not indicate

the element which is not subject to protection in the decision to register

the trade mark.

(4) If an examination reveals that a trade mark contains a sign which

constitutes an element of the trade mark which is not subject to protection

pursuant to subsection 9(3) of this Act and such sign may cause doubt

as to the extent of the exclusive right, the Patent Office shall notify

the applicant thereof and set a term of at least two months to agree to

the element which is not subject to protection or to provide explanations.

If notification of agreement to the element which is not subject to

protection is not given or a relevant explanation is not provided by the

due date, the applicant shall be deemed to have agreed to the element

which is not subject to protection.

§ 39. Decision to register trade mark and decision to refuse registration

of trade mark

(1) The decision to register a trade mark shall be made if examination

reveals none of the circumstances specified in subsection 9(1) and § 10

of this Act which preclude legal protection or if the applicant eliminated

circumstances which were revealed by the examination and which preclude

legal protection.

(2) The decision to refuse to register a trade mark shall be made if

circumstances specified in subsection 9(1) or § 10 of this Act which were

revealed by the examination and which preclude legal protection are not

eliminated by the applicant.

(3) The provisions of subsections (1) and (2) of this section apply to

some of the goods and services if the circumstance which precludes legal

protection is not valid with regard to all goods or services for which

23

the registration application is filed.

(4) If an applicant does not agree to consider part of the trade mark

as an element which is not subject to protection but the Patent Office

does not regard the opinion of the applicant as reasoned, the Patent Office

shall make a decision to register the trade mark with a restriction,

indicating the element which is not subject to protection.

§ 40. Publication of decision to register trade mark

(1)Anoticeconcerningadecisiontoregisteratrademarkshallbepublished

in the official gazette of the Patent Office «Eesti Kaubamärgileht»

(hereinafter official gazette of the Patent Office).

(2) The structure and procedure for the publication of the official

publication of the Patent Office shall be established by the regulation

on trade marks.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 41. Adjudication of appeals and revocation applications

(1) An applicant may file an appeal against a decision of the Patent Office

specified in subsection 37(2) and § 39 of this Act with the Industrial

Property Board of Appeal within two months as of the date of making the

decision.

(2) An interested person may contest an applicant’s right to a trade mark

in the Industrial Property Board of Appeal if circumstances specified

in subsection 9(1) or § 10 of this Act which preclude legal protection

exist. The term for the filing of a revocation application is two months

as of the publication of the notice of the decision to register a trade

mark.

(3) In case an appeal or revocation application is allowed in whole or

in part, the Board of Appeal shall annul the decision of the Patent Office

and require the Patent Office to continue proceedings taking into account

the facts set out in the decision of the Board of Appeal.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(4) If an appeal is allowed, the applicant shall have the right to have

the paid state fee refunded.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

24

§ 42. Renewal of terms

(1) The terms provided for in subsections 34(2) and (3) of this Act shall

not be renewed.

(2) The Patent Office shall renew the terms specified in subsection 37(1)

and subsections 38(2) and (4) of this Act at the request of the applicant

for at least two months at a time but not for longer than thirteen months

altogether. The request together with information concerning payment of

the state fee must be filed before the end of the set term.

§ 43. Suspension of processing

(1) If the examination of a trade mark depends on a decision to be made

concerning an earlier trade mark, the Patent Office shall suspend the

processingoftheregistrationofthelatertrademarkuntilafinaldecision

enters into force concerning the earlier trade mark and notify the applicant

thereof.

(2) On the basis of a reasoned request from the applicant, the Patent

Office may suspend processing for up to twelve months.

(3) Suspended processing shall be continued if grounds for suspending

the processing cease to exist or, in the case specified in subsection

(2) of this section, upon expiry of the term.

§ 44. Division and restriction of applications

(1)Anapplicantmay,untiladecisiontoregisterorrefusetheregistration

of a trade mark is made or during proceedings concerning an appeal filed

with regard to a decision to register a trade mark, divide the application

into two or more applications by distributing among the latter the goods

and services. A corresponding request shall be submitted together with

information concerning payment of the state fee.

(2) Applications which are the result of a division shall preserve the

filing date and priority of the initial application.

(3) An applicant may restrict the list of goods and services set out in

an application. A restriction shall enter into force on the date of receipt

of the request at the Patent Office.

§ 45. Correction and amendment of applications

An applicant may, until a decision to register or refuse the registration

25

of a trade mark is made, make corrections and amendments to the application

provided that such corrections and amendments do not alter the

representation of the trade mark set out in the application on its filing

date or extend the list of goods or services.

§ 46. Conditions for registration

(1) A registration shall be made if:

1) the decision to register a trade mark has not been appealed against

or the applicant’s right to the published trade mark has not been contested,

and information concerning payment of the state fee for the registration

has been submitted within four months as of the publication of the notice

of registration of the trade mark, or

2) a decision to register a trade mark and the applicant’s right to the

trade mark remain in force regardless of appeal or contestation, and

information concerning payment of the state fee for the registration is

submitted within two months as of the date of entry into force of the

final decision.

(2) If information concerning payment of the state fee for the registration

is not submitted by the due date, the application shall be deemed to be

withdrawn.

§ 47. Withdrawal of applications, termination and resumption of processing

(1) 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 at the

Patent Office.

(2) If an application is withdrawn in the manner specified in subsection

(1) of this section or deemed to be withdrawn in the cases specified in

§§ 37, 38 or 46 of this Act, processing shall be terminated. If processing

is terminated, the application documents shall not be returned and the

state fee shall not be refunded.

(3) An applicant may request that processing be resumed if the Patent

Office terminated processing having deemed the application to be withdrawn

pursuant to §§ 37, 38 or 46 of this Act and if the applicant failed to

perform the acts due to force majeure or some other impediment independent

of the applicant or the representative of the applicant.

(4) The Patent Office shall resume the processing if the applicant proves

26

the existence of an impediment and performs the prescribed acts within

two months after the impediment ceases to exist, and submits information

concerning payment of the state fee.

(5) A request for the resumption of the processing may be filed within

six months after the due date for the act which was not performed.

(6) The provisions of subsections (3) - (5) of this section also apply

upon the restoration of priority.

§ 48. Registration

(1) A registration shall be made on the basis of a decision to register

a trade mark.

(2) Registration data are:

1) the registration number;

2) the date of making the registration;

3) a representation of the trade mark;

4) a list of goods and services classified according to the Nice

Classification together with class numbers;

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

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

7) the element of the trade mark which is not subject to protection if

such element is indicated in the registration decision;

8) the name and address of the residence or seat of the proprietor of

the trade mark;

9) where the trade mark is a collective mark or a guarantee mark, a statement

to that effect;

10) the name of the representative of the applicant, if the applicant

has a representative;

11) 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;

12) the date of expiry of the registration;

13) application number;

14) the filing date of the application;

15) priority data, if a priority claim is satisfied.

§ 49. Publication of registration data

Registration data and amendments or corrections to registration data shall

be published in the official gazette of the Patent Office.

27

§ 49-1. Certificate of registration

(1) 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.

(2) Only one certificate of registration is issued regardless of the number

of proprietors of a trade mark.

(3) 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 shall be issued to the proprietor of the new registration

within twenty working as of entry of the data in the register.

(4) A duplicate of a certificate of registration may be issued on the

basis of a request from the proprietor of the trade mark. The duplicate

is issued within twenty working days as of the submission of the request

and information concerning payment of the state fee.

(5) The formal requirements and the procedure for the completion of

certificate forms shall be established by the regulation on trade marks.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 50. Renewal of term of legal protection of trade marks

(1) 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. A corresponding request shall be submitted together with

information concerning payment of the state fee.

(2) The proprietor of a trade mark may request restoration of the term

for renewal of the legal protection of the trade mark within six months

after expiry of the term of legal protection of the trade mark. A

corresponding request shall be submitted together with information

concerning payment of the state fee and additional state fee.

(3) Renewal of the term of legal protection of a trade mark enters into

force on the date of expiry of the term.

§ 50-1. Application for entry on transfer of trade mark in register

(1) A written request of the applicant, proprietor of the trade mark or

another entitled person shall be the basis for making an entry on transfer

of a trade mark in the register.

28

(2) Information concerning payment of the state fee shall be appended

to the request.

(3) If the request is submitted by the new proprietor of the trade mark

or the person to whom the rights conferred by the trade mark transfer,

a document certifying the surrender or the transfer of the rights, or

a transcript of the document officially certified by the Patent Office

shall be appended to the request.

(4) In case of transfer of a trade mark encumbered with a registered security

over movables, the written consent of the pledgee shall be appended to

the request.

(5) In case of transfer of a trade mark in relation to some of the goods

or services, a list of the goods and services to be transferred and a

list of the goods and services which remain in the registration data shall

be appended to the request.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 50-2. Application for entry on amendment of registration data in other

cases

(1) A written request of the proprietor of the trade mark shall be the

basis for making an entry on the amendment of registration data.

(2) An entry on the amendment of registration data shall not alter the

trade mark or extend the scope of legal protection thereof, except in

the case specified in subsection 19(1) of this Act.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 50-3. Application for entry on surrender of trade mark in register

A written request of the proprietor of the trade mark shall be the basis

for making an entry on the surrender of the trade mark.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 50-4. Application for entry on division of registration in register

(1) A written request of the proprietor of the trade mark shall be the

basis for making an entry on the division of the registration.

(2) Information concerning payment of the state fee shall be appended

to the request.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

29

§ 50-5. Application for entry of licence in register

(1) A written request of the licensor or the licensee shall be the basis

for an entry concerning a licence in the register.

(2) The licence agreement or a transcript of the agreement officially

certified by the Patent Office and information concerning payment of the

state fee shall be appended to a request for entry concerning a licence

in the register. Instead of the licence agreement or a certified transcript

thereof, an officially certified extract of the licence agreement

containing data concerning the licensee and the nature, scope and term

of the licence which are necessary for making an entry may be filed.

(3) An entry concerning a licence agreement shall be deleted at the end

of the term of the licence or at the request of the person who filed the

application for entry concerning the licence in the register.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 50-6. Application for entry of pledge in register

(1) A written request of the proprietor of the trade mark or the pledgee

shall be the basis for an entry concerning a pledge in the register.

(2) A notarised agreement for the establishment of the pledge and

information concerning payment of the state fee shall be appended to the

request.

(3) In order to have the conditions of an agreement for the establishment

of the pledge amended, a request together with a notarised annex to the

agreement for the establishment of the pledge, a court judgment or another

document certifying the amendment and information concerning payment of

the state fee shall be filed.

(4) In order to have the person of the pledgee changed, a request together

with a notarised document certifying the change and information concerning

payment of the state fee shall be filed.

(5) In order to have the ranking of a registered security over movables

changed, a request together with the agreement between the persons the

ranking of whose rights is changed and information concerning payment

of the state fee shall be filed.

(6) An entry concerning a registered security over movables shall be deleted

30

from the register upon termination of the claim secured by the pledge

or waiver of the pledge.

(7) In case of waiver of the pledge, the pledgee shall file a request

together with a notarised request for waiver of the pledge.

(8) For amendment or deletion of an entry concerning a registered security

over movables at the request of the proprietor of the trade mark, the

consent of the persons whose right, entered in the register, is prejudiced

by the amendment or deletion of the entry is required.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 50-7. Processing of requests specified in §§ 50 - 50-6

(1) If a request specified in §§ 50 - 50-6 is filed by an authorised

representative, an authorisation document shall be added to the request.

The authorisation document need not be added if an authorisation document

filed with the Patent Office earlier for the performance of the act is

valid.

(2) The applicant shall be given notice of the making of an entry not

later than on the twentieth working day as of the date of receipt of a

valid request and the necessary documents.

(3) A notice concerning the making of an entry shall be published in the

official gazette of the Patent Office.

(4) If some of the information or documents necessary for the making of

an entry are missing, the applicant shall be notified thereof not later

than on the fifteenth working day as of the receipt of a defective request

in the Patent Office and a term of two months shall be set for the elimination

of deficiencies. If it is not possible to make the entry by the specified

term on the basis of the documents submitted, the request is deemed to

be not filed.

(5) If it is not possible to make an entry for any other reason provided

in law, the applicant shall be notified thereof not later than on the

fifteenth working day as of the receipt of the request in the Patent Office.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 51. Deletion of trade mark from register

(1) A trade mark is deleted from the register six months after expiry

31

of its term of validity unless renewal of the term of validity of the

trade mark has been requested. The deletion enters into force retroactively

on the date of expiry of the term of validity.

(2) A trade mark shall be deleted from the register before the prescribed

time if a corresponding court judgment which has entered into force is

submitted to the Patent Office or if the proprietor of the trade mark

surrenders the trade mark.

(3) A trade mark shall be deleted from the register at the request of

an interested person, if during one year as of the deletion of the company

from the commercial register no request is filed for the making of an

entry in the register on the transfer of the trade mark.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 51-1. Access to register

(1) Prior to the publication of the notice of the decision concerning

registration, it is permitted to release the following information from

the register: 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.

(2) Prior to the publication of the notice of the decision concerning

registration, access to a registry file is granted to the applicant and

a person who has written consent of the applicant, or a person who proves

that applicant, after the registration of the trade mark, intends to blame

the person of infringement of the applicant’s exclusive right of the

proprietor of trade mark.

(3) After the publication of the notice of the decision concerning

registration of the trade mark, the register shall be public. Everyone

shall have access to the registry file and data entered in a record.

(4) In order to have access to a registry file or to be issued copies

or printouts from the register, a written request together with information

concerning payment of the state fee for each file, copy or printout of

a document shall be submitted. Applicants and proprietors of trade marks

have access to the registry files concerning their trade marks free of

charge.

32

(5) In order to be issued a document certifying priority, which consists

of the confirmation by the Patent Office and a copy of the application,

the applicant or proprietor of the trade mark shall submit a written request

together with information concerning payment of the state fee.

(6) The procedure for access to the register and release of information

from the register shall be established by the regulation on trade marks.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

33

Chapter 5 Judicial Contestation of Rights and Civil Liability

§ 52. Declaration of invalidity of exclusive right of proprietor of trade

mark

(1) An interested person may file an action against the proprietor of

a trade mark for the exclusive right of the proprietor of the trade mark

to be declared invalid if circumstances specified in §§ 9 or 10 of this

Act which preclude legal protection exist and grounds for the action also

existed at the time of making the registration.

(2) An action provided for in subsection (1) of this section shall not

be filed:

1) if the proprietor of the earlier trade mark or the proprietor of another

earlier right filing the action has not contested the later trade mark

within five years after becoming aware of the later trade mark. These

grounds do not apply if the application of the later trade mark was filed

in bad faith;

2) on the basis of clause 10(1)3) of this Act, if the earlier trade mark

had not acquired a distinctive character by the filing date or priority

date of the registration application of the later trade mark.

(3) 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 an action in a claim

requesting the transfer of the trade mark to the proprietor. These grounds

do not apply if the representative proves the legality of the

representative’s activities.

(4) The proprietor of a trade mark does not have the right to request

that the exclusive right of the proprietor of another trade mark be declared

invalid if the proprietor of the trade mark has failed to use the registered

trade mark within the meaning of § 17 of this Act during five consecutive

years without good reason.

(5) Actions specified in subsection (1) of this section may be filed within

five years as of the date of making the registration. This restriction

does not apply if the contested application was filed in bad faith.

34

§ 53. Declaration of exclusive right of proprietor of trade mark

extinguished

(1) An interested person may file an action against the proprietor of

a trade mark for the exclusive right of the proprietor of the trade mark

to be declared extinguished if:

1) the trade mark has, as a result of acts or failure to act on the part

of the proprietor of the trade mark, become a customary sign in relation

to the goods or services with regard to which it is registered;

2) the trade mark has, as a result of an act or failure to act by the

proprietor of the trade mark, become such 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;

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

3) the registered trade mark has not been used within the meaning of §

17 of this Act during five consecutive years after the making of the

registration, without good reason;

4) a trade mark concerning which a registration valid in Estonia is entered

in the International Register of the Bureau pursuant to the Madrid Protocol

has not been used within the meaning of § 17 of this Act during five

consecutive years after grant of legal protection to the trade mark in

Estonia.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(2) An action specified in subsection (1) of this section cannot be filed

on the basis of clause (1)3) of this section if the registered trade mark

is used within the meaning of § 17 of this Act after five years of non-use

commences prior to filing of the action.

(3) The provisions of subsection (2) of this section do not apply if use

of the trade mark within the meaning of § 17 of this Act commences after

the end of the period of five years and within three months prior to filing

of the action and if the proprietor of the trade mark commenced preparations

for the use of the trade mark only after the proprietor became aware of

the intention of filing the action.

§ 54. Declaration of invalidity of exclusive right to trade mark containing

geographical indication

(1) An interested person may file an action against the proprietor of

a trade mark for the declaration of invalidity of exclusive right to the

35

trade mark filed for registration in bad faith if:

1) the trade mark contains a registered geographical indication or a sign

confusingly similar thereto,

2) goods or services designated with the trade mark and a registered

geographical indication are identical or of similar type, and

3) the trade mark is filed for registration after the geographical

indication becomes subject of legal protection in its country of origin.

(2) If a trade mark specified in subsection (1) of this section contains

the name of a geographical area in Estonia, the condition specified in

clause (1)3) of this section does not apply upon the declaration of

invalidity of the exclusive right to use the trade mark.

(3) For the purposes of this Act, a trade mark is filed for registration

in bad faith if the person who filed for registration knew or should have

known that the sign indicates that goods or services originate from a

certain geographical area and a certain characteristic, reputation or

other characteristic feature of the goods or services can be related to

the geographical origin to a considerable extent.

(4) An interested person may file an action against the proprietor of

a trade mark for the declaration of invalidity of the exclusive right

to a trade mark registered prior to 10 January 2000 to designate an alcoholic

beverage if the trade mark contains a registered geographical indication

or is confusingly similar thereto and the alcoholic beverage designated

by the trade mark does not originate from the geographical area specified

by the geographical indication.

(5) The provisions of this section also apply to the declaration of

invalidity of exclusive right to trade marks containing geographical

indications which were filed for registration or registered prior to 10

January 2000.

(6) If an action is satisfied, exclusive right to a trade mark shall be

declared invalid as of 10 January 2000.

§ 55. Consequences of declaration of invalidity of exclusive right and

declaration of exclusive right extinguished

(1) If an exclusive right is declared invalid, the registration shall

be deemed to be null and void from inception.

36

(2) If an exclusive right is declared extinguished, the registration shall

be deemed to be invalid as of the date of filing of the action. The plaintiff

may request that an exclusive right be declared extinguished as of the

date of creation of the grounds for the action.

(3) The declaration of invalidity of an exclusive right or declaration

of an exclusive right extinguished is not the basis for the revocation

of a court judgment concerning the protection of exclusive right which

entered into force and was executed prior to the making of the court judgment

declaring the exclusive right invalid or extinguished or for the revocation

of an act performed earlier.

§ 56. Partial declaration of invalidity of exclusive right and partial

declaration of exclusive right extinguished

If grounds for the declaration of invalidity of an exclusive right or

declaration of an exclusive right extinguished apply only to some of the

goods or services designated with the trade mark, the exclusive right

shall be declared invalid or extinguished with regard to such goods or

services.

§ 57. Protection of exclusive right

(1) The proprietor of a trade mark may file an action against a person

infringing the exclusive right, including a licensee who violated the

terms of the licence agreement:

1) for termination of the offence;

2) for compensation for patrimonial damage caused intentionally or due

to negligence, including loss of profit and moral damage.

(2) If an exclusive right is infringed by an employee or representative

of an undertaking, the action specified in subsection (1) of this section

may be filed against the undertaking.

(3) A licensee has the right to file an action for the protection of an

exclusive right only with the permission of the proprietor of the trade

mark. A licensee may file an action without permission after sending a

notice of an infringement of the exclusive right to the proprietor of

the trade mark if the proprietor of the trade mark fails to file an action

within a reasonable period of time.

(4) A licensee has the right to enter, as a third party, judicial proceedings

in a claim for compensation for damage caused to the proprietor of a trade

37

mark initiated on the basis of an action filed by the proprietor of the

trade mark.

§ 58. Supplementary protection requirements

(1) If the proprietor of a trade mark files an action for the protection

of an exclusive right specified in § 57 of this Act, the proprietor may

request the destruction of unlawfully designated goods and objects solely

or almost solely used or intended to commit the offence which are in the

ownership or possession of the offender if it is not possible or expedient

to eliminate the unlawful nature of the goods or objects in another manner.

(2) If the proprietor of a trade mark has filed an action for the protection

of an exclusive right, the proprietor may request from the person infringing

the exclusive right, through the court, information concerning the origin,

the manner and channels of distribution and the amount of unlawfully

designated goods, including the names and addresses of the manufacturer,

supplier, previous proprietors and resellers of such goods.

§ 59. Counterclaims

(1) A person against whom the proprietor of a well-known or registered

trade mark has filed an action for the protection of the exclusive right

or against whom infringement proceedings have been initiated may contest

the exclusive right of the proprietor of the trade mark.

(2) The infringement proceedings shall be suspended for the period of

the proceedings conducted concerning the counteraction specified in

subsection (1) of this section.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 60. Specifications of judicial proceedings in matters relating to trade

marks

(1) Appeals and actions related to the legal protection of trade marks

fall within the jurisdiction of the court in the jurisdiction of which

the Patent Office is located.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(2) Implementation of provisional measures referred to in Article 50 of

the Agreement on Trade-Related Aspects of Intellectual Property Rights

in Annex 1C to the WTO Agreement (RT II 1999, 22, 123) falls within the

competence of the county or city court in the jurisdiction of which the

offence occurred. An application for the securing of an action shall be

38

immediately reviewed.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(3) A court shall send a copy of the decision made in a dispute related

to a trade mark to the Patent Office for its information even if the Patent

Office has not participated in the proceedings.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 60-1. Organisation representing proprietors of trade marks

In the protection of their rights, proprietors of trade marks may be

represented by organisations with passive legal capacity representing

proprietors of trade marks.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

39

Chapter 6 Specifications of Legal Protection of Collective Marks and

Guarantee Marks

§ 61. Definition of collective mark and guarantee mark

(1) A collective mark is a trade mark which belongs to an association

of persons with active legal capacity and which is used by members of

the association to designate their goods and services under the conditions

and pursuant to the procedure provided for in the regulations of the

collective mark.

(2) A guarantee mark is a trade mark used to designate the goods and services

of different persons in order to guarantee a common quality, common

geographic origin or method of production or another common feature of

such goods and services.

§ 62. Regulations of collective mark or guarantee mark

(1) An application for the registration of a collective mark or guarantee

mark shall include the regulations of the collective mark or guarantee

mark (hereinafter regulations).

(2) A collective mark or guarantee mark shall be registered if there are

no circumstances which preclude legal protection and:

1) the regulations are not contrary to public policy or accepted principles

of morality;

2) in the case of a guarantee mark, the regulations include a list of

the required common features of goods and services designated with the

guarantee mark which can be used as the basis for quality control;

3) in the case of a collective mark, the regulations have a list of members

of the association whose goods and services are designated with the

collectivemarkattachedtheretoandtheregulationsincludetheconditions

of and procedure for becoming a member of the association.

(3) An amendment of regulations is effective as of the entry of the amendment

in the register. An amendment shall be entered in the register only if

the regulations do not conflict with the requirements provided for in

subsection (2) of this section.

§ 63. Specifications of legal protection of collective marks and guarantee

marks

(1) (Repealed - 10.03.2004 entered into force 01.05.2004 - RT I 2004,

20, 141)

40

(2) The use of a collective mark or guarantee mark by an unauthorised

person is prohibited.

(3) A guarantee mark may be used by any person whose goods or services

have features provided for in the regulations provided that such person

pays a fee to the proprietor of the guarantee mark.

(4) A guarantee mark may indicate the geographical origin of the goods

or services designated with the guarantee mark.

(5) The use of a collective mark by at least one member of the association

which is the proprietor of the collective mark and the use of a guarantee

mark, with the permission of the proprietor of the guarantee mark, by

at least one person whose goods or services have features provided for

in the regulations constitute use of a trade mark within the meaning of

§ 17 of this Act.

§ 64. Additional grounds for declaration of invalidity of exclusive right

of proprietor of collective mark or guarantee mark or declaration of such

exclusive right extinguished

(1) If regulations cannot be applied and the proprietor of the trade mark

fails to eliminate deficiencies in the regulations during the term set

by a court on the basis of an action filed by an interested person, the

exclusive right of the proprietor of the collective mark or guarantee

mark shall be declared invalid.

(2) If regulations cannot be applied due to amendments made thereto or

changed circumstances and the proprietor of the trade mark fails to

eliminate deficiencies in the regulations during the term set by a court

on the basis of an action filed by an interested person, the exclusive

right of the proprietor of the collective mark or guarantee mark shall

be declared extinguished.

(3) If the proprietor of a collective mark or guarantee mark allows use

of the collective mark or guarantee mark in conflict with law or the

regulations and fails to eliminate deficiencies during the term set by

a court, exclusive right of the proprietor of the collective mark or

guarantee mark shall be declared extinguished based on the action of an

interested person.

41

§ 65. Specifications of protection of exclusive right to collective marks

and guarantee marks

(1) The user of a collective mark or guarantee mark may file an action

for the protection of trade mark rights only with the permission of the

proprietor of the trade mark. The user of a collective mark or a guarantee

mark may file an action without the permission of the proprietor of the

trade mark after giving notice of an infringement of the exclusive right

to the proprietor of the trade mark if the proprietor of the trade mark

fails to file an action within a reasonable period of time.

(2) The user of a collective mark or guarantee mark is entitled to enter

a proceeding initiated on the basis of an action filed by the proprietor

of the trade mark in order to claim compensation for damage suffered.

42

Chapter 7 International registration of trade marks

§ 66. International registration of trade marks

(1) International registration of a trade mark means the registration

of the trade mark in the International Register of the Bureau pursuant

to the Madrid Protocol.

(2) The Patent Office is the Office of Origin and the Office of the

Contracting Party within the meaning of the Protocol.

(3) Applications for licences to be entered in the International Register

of the Bureau shall be filed directly with the Bureau.

§ 67. Application for international registration

(1) An Estonian citizen or a person whose residence or seat is located

in Estonia or who has a commercial or industrial enterprise operating

in Estonia may file an application for international registration

(hereinafter international application) with regard to the same trade

markandsamegoodsandservicesforwhichthepersonhasfiledanapplication

or has registered a trade mark in Estonia.

(2) An international application shall comply with the form and content

requirementsestablishedintheMadridProtocolanditsCommonRegulations.

The procedure for filing international applications with the Patent Office

shall be established by the regulation on trade marks.

(17.12.2003 entered into force 08.01.2004 - RT I 2003, 88, 594; 10.03.2004

entered into force 01.05.2004 - RT I 2004, 20, 141)

(3) International application documents shall be submitted in English.

(4) An international application shall not be forwarded to the Bureau

if the state fee for the filing of the international application is not

paid.

(5) International fees pursuant to paragraphs 2 - 7 of Article 8 of the

Madrid Protocol shall be paid directly to the Bureau.

§ 68. Processing of international applications

(1) The Patent Office shall verify the compliance of information in an

international application with the information in the application or in

the registration data which is the basis for the international application,

43

confirm the correctness of information in the international application

and forward the international application to the Bureau.

(2) The date and number of the international registration of an

internationally registered trade mark (hereinafter international

registration) shall be entered in the register if the international

application is made on the basis of a registration, or a corresponding

notation shall be made in the application which is being processed if

the international application is made on the basis of such application.

§ 69. Effect of international registration

(1) Legal protection arising from an international registration valid

in Estonia is equal to legal protection arising from a national registration

and the rights and obligations arising from an internationally registered

trade mark are equal to those arising from a nationally registered trade

mark.

(2) An international registration shall not be valid in Estonia if the

grant of legal protection is refused as a result of processing the

international registration.

(3) If a nationally registered trade mark is also registered

internationally with regard to the same goods and services, a notation

shall be made in the register concerning the replacement of the national

registration at the request of the proprietor of the trade mark, unless

the international application is filed on the basis of subsection 67(1)

of this Act.

§ 70. Processing of international registration

(1) The Patent Office shall perform an expert examination of international

registrations in which Estonia is indicated to be a Contracting Party.

(2) The Patent Office shall perform expert examinations and process

international registrations pursuant to the provisions of this Act, taking

account of the specifications arising from the Madrid Protocol and its

Common Regulations.

(3) The grant of legal protection shall be refused if circumstances which

preclude legal protection exist.

(4) The Patent Office shall notify the Bureau of a refusal to grant legal

44

protection within eighteen months as of the date of notice of the

international registration of the trade mark.

(5) In the case and under the conditions provided for in Article 5(2)(c)

of the Madrid Protocol, the Patent Office may give notice of refusal to

grant legal protection after the expiry of eighteen months as of the date

of notice of the international registration of the trade mark.

(6) If there are no circumstances which preclude legal protection, a notice

concerning the international registration shall be published in the

official gazette of the Patent Office.

(7) Decisions on international registrations made by the Patent Office

and the rights of applicants shall be contested pursuant to the provisions

of this Act, taking account of the specifications arising from the Madrid

Protocol and its Common Regulations. The Bureau shall be notified of a

contestation and the decision made in the matter.

(8) The Patent Office shall establish and maintain the database of national

processing of international registrations in which the Republic of Estonia

is a Contracting Party.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(9) Information specified in subsection 51 - 1(1) of this Act shall be

released from the database of national processing of international

registrations.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

(10) A state fee shall be paid for the release of information from the

database of national processing of international registrations.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 71. Invalidity of international registration and conversion thereof

to national application

(1) If an international registration becomes invalid, the international

registration in Estonia becomes invalid on the same date.

(2) If the international registration of a trade mark is cancelled pursuant

to Article 6(4) of the Madrid Protocol, this trade mark may be registered

as a national trade mark with regard to the goods and services included

in the international registration if the proprietor of the trade mark

45

files an application with the Patent Office within three months as of

the date of cancellation of the international registration. The date of

international registration of the trade mark shall be deemed to be the

filing date of such application.

(3) An application specified in subsection (2) of this section must meet

the requirements provided for in Chapter 4 of this Act.

46

Chapter 7-1 Community trade mark

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 71-1. Registration of Community trade mark

(1) The registration of Community trade mark shall mean the registration

of a trade mark with the Office for Harmonization in the Internal Market

on the basis of the Community trade mark Regulation.

(2) The Patent Office is the central office in the field of legal protection

of industrial property within the meaning of the Community Trade Mark

Regulation.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 71-2. Application for Community trade mark

(1) An application for a Community trade mark may be filed with the Patent

Office which shall forward the application to the Office for Harmonisation

in the Internal Market within two weeks as of the filing of the application,

and shall issue a corresponding notice to the applicant. Upon filing an

application for a Community trade mark with the Patent Office, a state

fee for the forwarding of the application to the Office for Harmonisation

in the Internal Market shall be paid.

(2) An application for a Community trade mark shall be in conformity with

the requirements for the content and formal requirements specified in

the Community Trade Mark Regulation and in the Commission Regulation

2868/95/EC concerning the enforcement of the Council Regulation on the

Community trade mark (Official Journal L 303, 15/12/1995 P. 0001 - 0032).

The application fee specified in Article 26(2) of the Community Trade

Mark Regulation shall be paid directly to the Office for Harmonisation

in the Internal Market.

(3) The procedure for filing an application for a Community trade mark

with the Patent Office shall be established by the Minister of Economic

Affairs and Communications by the regulation on trade marks.

(4) The Patent Office does not accept or forward any other documents or

letters to be submitted to the Office for Harmonisation in the Internal

Market.

(5) Estonian citizens and legal persons whose seat is in the Republic

of Estonia are deemed to be the persons specified in paragraph 1(a) of

47

Article 5 of the Community Trade Mark Regulation.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 71-3. Conversion of Community trade mark application or Community trade

mark into a national trade mark application

(1) Upon conversion of Community trade mark application or Community trade

mark into a national trade mark application pursuant to the provisions

of Section 3 of the Community Trade Mark Regulation, the date of Community

filing or the date of priority of that application or trade mark or the

seniority date shall be the date of national filing.

(2) The seniority date shall be the date of filing only where the basis

for the seniority of a Community trade mark is a national trade mark

registered in Estonia or a trade mark valid in Estonia pursuant to the

Madrid Protocol.

(3) Upon conversion of Community trade mark application or Community trade

mark into a national trade mark application pursuant to the provisions

of Article 108 of Community Trade Mark Regulation, the person requesting

conversion shall file the following documents within two months as of

the date on which a corresponding request from the Office for Harmonisation

in the Internal Market is received in the Patent Office:

1) the request for conversion and the Estonian translation of the

accompanying documents;

2) the address of a commercial or industrial enterprise operating in Estonia

and belonging to a person of a foreign state or the authorisation document

of an authorised patent agent;

3) a representation of the trade mark;

4) information concerning payment of the state fee.

(4) The acts of the Patent Office in the processing of a request for

conversion shall be established by the regulation on trade marks.

(5) The Patent Office shall perform expert examinations and process

requests for conversion pursuant to the provisions of Chapter 4 of this

Act, taking into account the specific provisions arising from the Community

Trade Mark Regulation.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 71-4. Retroactive revocation of trade mark deleted from register

If seniority of a trade mark valid in Estonia is claimed for a registered

48

Community trade mark or a Community trade mark which has been filed for

registration on the basis of an earlier registered trade mark or the Madrid

Protocol pursuant to Articles 34 and 35 of the Community Trade Mark

Regulation, an action may be filed for the exclusive right of the proprietor

of the trade mark to be declared invalid pursuant to § 52 of this Act

or action against the proprietor of a trade mark for the exclusive right

of the proprietor of the trade mark to be declared extinguished pursuant

to § 53 of this Act even if the earlier trade mark has been deleted from

the register due to refusal to renew the term or is surrendered by the

proprietor.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 71-5. Specifications of judicial proceedings in matters relating to

Community trade marks

(1) Matters relating to legal protection and validity of Community trade

marks are heard by Tallinn City Court as the Community trade mark court

of first instance.

(2) Appeals against the judgments of the Community trade mark court of

first instance shall be reviewed by Tallinn Circuit Court as the Community

trade mark court of second instance.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 71-6. Prohibition on use of Community trade mark

(1) A proprietor of an earlier trade mark or another earlier right specified

in Article 142(a) of the Community Trade Mark Regulation may file an action

against a proprietor of the Community trade mark for the protection of

an exclusive right pursuant to subsection 57(1) of this Act for the

prohibition on the use of the trade mark in Estonia.

(2) If the proprietor of an earlier trade mark or another earlier right

has filed an action for the protection of an exclusive right on the basis

of subsection (1) of this section, the proprietor may request the

application of supplementary protection requirements specified in § 58

of this Act only in respect of goods located in Estonia.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

49

Chapter 8 Implementing Provisions

§ 72. Transitional provisions

(1) This Act applies to earlier rights and obligations relating to trade

marks unless otherwise provided in this Act.

(2) The exclusive right of proprietor of trade mark shall not be declared

extinguished on the basis of clause 53(1)3) of this Act if the period

of five years specified in the clause commenced before 1 May 2004 and

the trade mark was used during the period between the commencement of

the period of five years and 1 May 2004 pursuant to an Act regulating

trade marks which was in force at the time of the trade mark was used.

(3) This Act applies to applications processed by the Patent Office

concerning which no decision has been made before 1 May 2004 to register

or refuse to register the trade marks.

(4) Clauses 11(1)6) and 7) do not apply to applications the filing date

or the date of priority of which is earlier than May 1 2004.

(5) In appeal proceedings against a decision of the Patent Office made

before 1 May 2002 and in making a new decision, the bases for refusal

to register a trade mark valid at the time of the making of the decision

and the procedural provisions in force at the time of the new proceedings

in the matter apply.

(6) In appeal proceedings against a decision made by the Board of Appeal

before 1 May 2004 and in making a new decision, the Act regulating trade

marks which was in force at the time of the making of the decision of

the Board of Appeal applies.

(7) The terms specified in subsection 42(2) and 43(2) of this Act with

respect to applications being processed by the Patent Office on 1 May

2004 shall be calculated as of the date of entry into force of this Act.

(8) More favourable provisions apply to persons who committed offences

prior to 1 May 2004.

(9) If the limitation period valid before 1 May 2004 has not expired by

the date of entry into force of this Act and a different limitation period

is provided for in this Act, the longer limitation period applies.

50

(10) The provisions of this Act governing Community trade marks enter

into force upon Estonia’s accession to the European Union.

(11) The legal acts established on the basis of the Trade Marks Act (RT

1992, 35, 459; RT I 1998, 15, 231; 1999, 93, 834; 102, 907; 2001, 27,

151; 56, 332 and 335; 2002, 49, 308; 63, 387) shall be valid after the

entry into force of this Act in so far as they are not contrary to this

Act, until either repeal thereof or until they are brought into conformity

with this Act.

(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)

§ 73. Repeal of Trade Marks Act

The Trade Marks Act (RT 1992, 35, 459; RT I 1998, 15, 231; 1999, 93, 834;

102, 907; 2001, 27, 151; 56, 332 and 335) is repealed as of entry into

force of this Act.

§ 74. Entry into force of Act

This Act enters into force on 1 May 2004.

(16.12.2003 entered into force 01.01.2004 - RT I 2003, 82, 555)

51


Legislación Es reemplazado por (5 texto(s)) Es reemplazado por (5 texto(s))
Datos no disponibles.

N° WIPO Lex EE069