Trade Marks Act
Passed 22 May 2002
(RT1 I 2002, 49, 308),
entered into force 1 May 2004,
amended by the following Acts:
10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141;
17.12.2003 entered into force 08.01.2004 - RT I 2003, 88, 594;
16.12.2003 entered into force 01.01.2004 - RT I 2003, 82, 555;
21.11.2002 entered into force 01.01.2004 - RT I 2002, 99, 585.
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.
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.
(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 of actual and
potential consumers of goods analogous to the goods or services 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).
(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 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 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 6 ter 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 6 ter of the Paris Convention for the Protection of Industrial Property
the registration of which is contrary to public interest, unless the competent authorities or
officials give written consent for the registration;
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 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) 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) 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) 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) a Community trade mark filed for registration 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; 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 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)
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 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.
(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 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.
(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.
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) In addition, the provisions of Chapter 6 of this Act apply to applications 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.
(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) A representation of a trade mark shall give a clear and complete depiction 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.
§ 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)
§ 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 application and the application number.
(6) The filing date of an application shall not be determined if the applicant 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) The Patent Office shall examine a trade mark with regard to the provisions of
subsection 9 (1) and § 10 of this Act.
(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 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) A notice concerning a decision to register a trade mark shall be published 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)
§ 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 processing of the registration of
the later trade mark until a final decision 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) An applicant may, until a decision to register or refuse the registration 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 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 of 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 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.
§ 491. 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 if 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.
§ 501. 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.
(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)
§ 502. 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)
§ 503. 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)
§ 504. 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)
§ 505. 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)
§ 506. 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 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 pledge 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)
§ 507. Processing of requests specified in §§ 50–506
(1) If a request specified in §§ 50–506 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 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)
§ 511. 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.
(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)
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.
§ 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 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.
(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 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 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)
§ 601. 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)
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 collective mark attached
thereto and the regulations include the conditions 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)
(2) The use of a collective mark or guarantee mark by a 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.
§ 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.
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 mark and same goods and services for which the person has filed
an application or has registered a trade mark in Estonia.
(2) An international application shall comply with the form and content requirements
established in the Madrid Protocol and its Common Regulations. 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, 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 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 511 (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 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.
Chapter 71
(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)
Community trade mark
(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)
§ 711. 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)
§ 712. 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 Article 5 of the Community
Trade Mark Regulation.
(10.03.2004 entered into force 01.05.2004 - RT I 2004, 20, 141)
§ 713. 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)
§ 714. Retroactive revocation of trade mark deleted from register
If seniority of a trade mark valid in Estonia is claimed for a registered 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)
§ 715. 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)
§ 716. 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)
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 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.
(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)
1 RT = Riigi Teataja = State Gazette