In the first instance, a trade mark can generally be contested in the Industrial Property Board of Appeal, where mandatory pre-trial proceedings are conducted (subsection 2 of § 38 of the Principles of Legal Regulation of Industrial Property Act). In court, contestation of a trade mark without going through the proceedings of the Board of Appeal in advance is possible only pursuant to the procedure for filing a counterclaim by a person against whom the proprietor of the trade mark has filed an action for the protection of an exclusive right (subsection 1 of § 59 of the Trade Marks Act).
In the Board of Appeal, an interested person can contest the decision of registration of a trade mark (subsection 2 of § 41 of the Trade Marks Act). Notices concerning trade mark registration decisions are disclosed in the Estonian Trade Mark Gazette. A revocation application shall be filed by an interested person within two months of the publication of the notice in the Trade Marks Gazette. A revocation application can be filed if, in the opinion of the person filing the application, there is a circumstance which precludes legal protection with regard to the trade mark and which is specified in § 10 of the Trade Marks Act, e.g. the applicant owns an earlier identical or similar trade mark, business name or another earlier right.
If a trade mark has already been registered, an application for declaration of nullity of the exclusive right against the proprietor of the trade mark can be filed with the Board of Appeal if, in the opinion of the person who filed the application, any of the circumstances specified in §§ 9 or 10 of the Trade Marks Act precluding legal protection exists with regard to the trade mark and such circumstances existed already at the time when the Patent Office made the decision to register the trade mark (subsections 1 and 11 of § 52 of the Trade Marks Act). In the case of circumstances precluding legal protection specified in § 9 of the Trade Marks Act, the Act does not provide for a term for addressing the Board of Appeal, i.e. there is not time frame for filing an application. In the case of a circumstance precluding legal protection specified in § 10 of the Trade Marks Act, an application can be filed with the Board of Appeal within five years after becoming aware of the use of the trade mark or for an unspecified term if the application for registration of the trade mark was filed in bad faith (subsection 2 of § 52 of the Trade Marks Act). In the case of revocation of an exclusive right, registration of a trade mark is deemed to be null and void from the beginning (subsection 1 of § 55 of the Trade Marks Act).
An application for the exclusive right to be extinguished can also be filed with the Board of Appeal against the proprietor of the trade mark if, as a result of the action or failure to act of the proprietor of the trade mark, the trade mark has become a customary sign or misleading or has not been used for five years without good reason (subsection 1 of § 53 of the Trade Marks Act). In the case of declaration of the exclusive right to be extinguished, the registration of the trade mark is deemed to be invalid as of the date of filing the application or as of the date on which the circumstance on which the application is based arised (subsection 2 of § 55 of the Trade Marks Act).
An applicant for a trade mark can file an appeal with the Board of Appeal against a decision of the Patent Office concerning the trade mark, e.g. if, in the opinion of the applicant, the Patent Office has unreasonably refused to register the trade mark applied for under the circumstances precluding legal protection specified in § 9 of the Act. In such case, the appeal must be filed with the Board of Appeal within two months as of the date of making the decision (subsection 1 of § 41 of the Trade Marks Act).
The Board of Appeal does not have jurisdiction over the claims of the proprietor of the trade mark or any other person in terms of infringement of the exclusive right of the proprietor. The corresponding claims must be addressed to the court (see § 57 and in connection with that § 58 of the Trade Marks Act).
Appeals and actions related to the legal protection, validity and unlawful use of a trade mark, applications for securing an action and provisional legal protection and other appeals and actions specified in the Trade Marks Act shall be heard by Harju County Court as the first instance.
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Last updated: 05.02.2024