Protection of Trademark
A trademark is a sign used to distinguish the goods or services of a person from other similar types of goods or services of other persons. [Trade Marks Act (hereinafter TMA) § 3].
Protected trademarks shall be capable of being represented graphically [TMA § 6 Section 1].
A trademark may be expressed in the form of:
- a word or words (e.g. an artificial word, a phrase, a slogan);
- images (e.g. symbols, ornaments, geometric images, stylised forms of objects, animals, people, etc);a word or a combination of words and images;
- a label;
- three-dimensional forms (an original package or the original shape of goods);
- a combination of letters;
- a combination of a number and a letter (letters);
- a trade name, etc.
The scope of legal protection of a trademark is based on the representation of the trademark and a list of goods and services entered in the register.
The scope of legal protection of a well-known trademark is based on the form of the trademark in which it became well known with regard to such goods and services by which the trademark was used to designate when it became well known.
Goods and services are classified in accordance with the international classification of goods and services (it is available on the WIPO homepage using the Internet Explorer web browser) established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (RT II 1996, 4, 14).
[TMA §§ 9 and 10]
Absolute grounds for refusal of registration of trademarks
Legal protection shall not be granted if
- a trademark consists of a mark which is merely descriptive of goods or services.
- a trademark consists of indications which have become customary in current language or in good faith business practice.
- a trademark is of such a nature as to deceive the consumer.
- a trademark is contrary to public policy or accepted principles of morality.
- a trademark consists exclusively of the shape of goods which is necessary to achieve a technical result.
If a trademark contains elements which are not descriptive, such elements of the trademark are not subject to protection. The owner of the protected trademark does not have the exclusive right to use this element of a trademark.
Relative grounds for refusal of registration of trademarks
Legal protection shall not be granted if
- a trademark is identical with an earlier trademark which has been granted legal protection (registered or become well known) with regard to identical goods or services designated by the trademark.
- a trademark is identical or similar to an earlier trademark which has been granted legal protection with regard to identical goods or services or goods or services of a similar kind designated by the trademark (written consent from the owner of the earlier trademark is necessary for the registration).
- a trademark is identical or similar to an earlier registered trademark or a trademark which has been submitted for registration or to a trademark 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 trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark (written consent from the owner of the earlier trademark is necessary for the registration).
- the use of a trademark infringes an earlier right (a right to a name, a right to a business name, a right to the name of an immovable, a right to an object of copyright, etc. Written consent from the owner of the earlier right is necessary for the registration).
- a trademark is identical or confusingly similar to a trademark which has been granted legal protection in another country and which was in use on the date of receipt of the application for registration of a trademark if the application is filed in bad faith.
A trademark shall be registered if no grounds for refusal of registration as specified in §§ 9 or 10 of Trademark Act are revealed during the examination.
A registration application should be filed as soon as possible to acquire the rights to a trademark (legal protection shall start upon registration, but is applied retroactively from the filing date of the registration application). Registration of a trademark is not an obligation but a right. In case of an unregistered trademark, unless it is well known, the user is not entitled to any special rights (it is impossible to prevent the competitors from using the same trademark). The right to a trademark enters into force on the filing date of an application for the registration of a trademark until the expiry of ten years as of the date of making the registration.
There are four possibilities to obtain legal protection for trademarks:
- by registering a trademark in the Register of Trademarks and Service Marks by filing an application with the Estonian Patent Office;
- by registering a trademark with the International Bureau of the World Intellectual Property Organization (WIPO) requesting legal protection in Estonia;
- by making a trademark well known in Estonia;
- by registering a trademark with the Office for Harmonisation in the Internal Market (OHIM) as a Community trademark.
The owner of a registered trademark holds an exclusive right to a trademark. The owner of a trademark has the right to prohibit third parties from using the trademark which is identical or similar with the trademark which is granted legal protection where such mark is used to designate goods or services which are identical or similar with those for which the trademark is protected.
The owner of a trademark has the right to prohibit third parties from using in the course of trade:
- any sign which is identical with the trademark which is granted legal protection in relation to goods or services which are identical with those for which the trademark is protected.
- any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
- any sign which is identical with, or similar to a registered trademark or a trademark 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 trademark 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 trademark.
The rights granted by registration are limited by territory, i.e. a trademark registered in the Republic of Estonia is protected on the territory of the Republic of Estonia
The owner of a trademark is required to actually use a registered trademark to designate goods and services in respect of which it is registered. If the owner of a trademark has failed to use the registered trademark during five consecutive years without good reason, the exclusive right of the owner of a trademark may be declared extinguished.
The following shall also constitute the use of a trademark:
- use of the trademark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it has been registered;
- affixing of the trademark to goods or to the packaging thereof intended solely for export purposes;
- use of the trademark with the consent of the owner of the trademark.
The owner of a trademark has no right to prohibit other persons from using the following in the course of trade in accordance with good business practices:
- the names and addresses of other persons;
- signs or indications which characterize goods or services;
- signs or indications which have become customary in current language or in good faith business practice;
- the trademark if it is necessary to indicate the intended purpose of a product, in particular as accessories or spare parts, or a service;
- elements of the trademark which are not subject to protection;
- further commercial exploitation of goods which are designated with the trademark by the owner or with the owner's consent and put on the market in the Republic of Estonia or in a State party to the Agreement of the European Economic Area (exhaustion of rights).
A registration application must be filed with the Patent Office to obtain protection for a trademark.
An applicant may file a registration application with the Patent Office in person, by post, or by fax; whereas, in case the application is sent by fax, the original documents should be filed later. A registration application can be electronically filed via the portal of electronic filing.
Registration documents must be filed in typewritten form (typed on a computer or typewriter).
Each application may include only one trademark.
A person who applies for a trademark registration may perform procedures relating to the registration of a trademark either by himself or through Estonian patent attorneys.
A person with no residence, seat, or commercial or industrial enterprise operating in Estonia must authorise a patent attorney to perform acts related to the legal protection of a trademark.
Registration applications must be filed in Estonian.
State fees must be paid pursuant to the State Fees Act (RT I 2001, 55, 331;...;2004, 20, 141) by bank transfer direct to the Ministry of Finance of the Republic of Estonia Account:
- SEB - IBAN EE 89 1010 2200 3479 6011 ; BIC / SWIFT code – EEUHEE2X ; Tornimäe 2, Tallinn
- Swedbank - IBAN EE93 2200 2210 2377 8606 ; BIC / SWIFT code – HABAEE2X ; Liivalaia 8, Tallinn
- Danske Bank - IBAN EE 40 3300 3334 1611 0002 ; BIC / SWIFT code – FOREEE2X ; Narva str 11, Tallinn
- Nordea Bank Finland PLC - IBAN EE 701 7000 1700 1577 198 ; BIC / SWIFT code – NDEAEE2X ; Liivalaia 45, Tallinn
Reference number of the Estonian Patent Office 2900082362, reference number of the Board of Appeal 2900074422.
Registration application forms are available at the Estonian Patent Office or can be printed out at the application forms web page.
Registration Application comprises of the following documents:
- a request for the registration of a trademark;
- the reproduction of a trademark (five additional cut-out reproductions which are fit to archive and are in size 80x80 must be added if a trademark is in colour);
- an authorisation document or reference to an authorisation document submitted earlier if the applicant has a representative;
- documents certifying priority if priority is claimed;
- information concerning payment of the state fee;
- the regulations of collective marks or guarantee marks if the application is filed for the registration of a collective mark or guarantee mark.
Before filing an application it is recommended that you check if similar trademarks or trademark registration applications filed earlier exist. Official information from the register and databases is available through the Bureau of Registers and Protection Documents and the Receiving Department. Searches may also be performed on the Internet using the trademarks database of the Estonian Patent Office.
There are three possibilities to register a trademark in a foreign country:
- by filing a registration application with the appropriate national patent office (protection will be obtained in this country);
- by filing a registration application under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (protection will be obtained in the member states acceded to the Madrid Protocol designated in the application);
- by filing a European Community trademark application (an application is filed with the Office for Harmonisation in the Internal Market (OHIM) in Alicante, Spain), protection will be obtained in all European Community member states. European Community trademarks are registered under Council regulation No 40/94.
To register a trademark in a foreign country:
- an applicant must employ a patent attorney or have a postal address in the corresponding country;
- it is recommended that you check to see whether any similar trademarks have been registered;
- it is recommended that you check to see whether a trademark is registered by filing an application under the filing system or examination system.
Information about the Madrid System for the international registration of trademarks - http://www.wipo.int/
ROMARIN database - includes all international registrations (detailed information) - www.wipo.int/romarin
Madrid Express database - includes all international applications and registrations (basic information) - www.wipo.int/ipdl/en/search/madrid/search-struct.jsp