Frequently asked questions | Trade marks

Here you can find frequently asked questions about trade marks.

Before filing an application

Examination of trade mark applications is carried out in order of their arrival to the Patent Office. Therefore the duration of examination depends on the amount of applications and the length of the examination queue resulting from that. Applications filed in September 2022 reached examination in November 2022.

An invention can be protected by a patent or as a utility model. Invention is a technical solution, the subject of which may be a device, a process or a material. A trade mark is a sign which can be used to distinguish the goods or services of one person from identical or similar kind of goods or services of the other persons.

See: What is a trademark?

Before filing an application you should have a look at information on our web site. You can find there information about the main requirements for a trade mark and about obstacles, which can prevent the registration of a trade mark. In order to make sure that the earlier right to the trade mark that you are applying for does not belong to anybody else, please consult the trade marks databases on our website and the database of the business names in the Business Register.
See: Earlier rights and searchesBusiness Register

Ideas cannot be protected as trade marks. A trade mark is a sign that can consist of words or of a figurative element, words in combination with a figurative element, a three-dimensional sign, a sound, a pattern, a movement etc.
See: What is a trade mark?

A worldwide database of trade marks does not exist. If you are interested in trade marks of several countries or a particular region, the search should be restricted accordingly and should be carried out in the database containing the data concerning the particular region.
See: Trade marks databasesDirectory of Intellectual Property Offices is available on the WIPO website.

Yes, you should, because e-residence enables a person with no residence in Estonia to use the same Estonian e-services that are available to Estonian citizens who own ID-cards. Pursuant to Subsection 2 of Section 13 of the Trade Marks Act a person with no residence or seat in Estonia should authorise a patent attorney as the person’s representative.

Pursuant to § 13 Subsection 1 of the Trade Marks Act procedures at the Patent Office are performed by interested persons or by authorised patent attorneys. Pursuant to Subsection 2 a person with no residence, seat or commercial or industrial enterprise operating in Estonia should authorise a patent attorney as the person’s representative to perform procedures at the Patent Office. So, if you own a business in Estonia, you do not have to authorise a representative.

Registered trade mark is protected as a whole. The owner of the trade mark has the right to prohibit the use of confusingly similar trade marks. However, the owner of the trade mark does not have the right to prohibit the use of the descriptive words (including the descriptions of type of good or service, quality, geographical origin or other features) contained in the trade mark. For example, in case a combination of words John’s lemonade is protected as a trade mark for soft drinks, the owner does not have the right to prohibit the others to use the word lemonade, as the word indicates the type of the goods, which can be freely used by everyone.

It can happen that all the words on the trade mark are descriptive or non-distinctive. In that case the trade mark can be registered only if there is a figurative element which makes the mark distinctive. This registration provides an exclusive right to the trade mark as a whole, together with particular design, but not to the descriptive text contained in the mark.

Why should a trade mark be protected?

Yes, you can. The trade mark doesn’t have to be registered. Registration of a trade mark is a right of the trade mark owner, not an obligation. It provides a right to prohibit others from using in the course of trade a sign which is identical with or similar to this trade mark for designating identical or similar kind of goods or services. While using an unregistered trade mark its owner should take into consideration that the use of a trade mark would not infringe the rights of others.
See: Why should a trade mark be protected?

If you find that someone has in bad faith filed an application for registration of your trade mark in their own name, it may be in contradiction to the Trade Mark Act (§ 9 (1) 10). In that case, you may turn to the Patent Office and submit documents verifying that the trade mark actually belongs to you and the competitor has acted in bad faith. It can be done within two months after publication of the notice about the decision to register the trade mark in the Estonian Trademark Gazette. If the trade mark is already registered, a request can be filed with the Board of Appeal for the exclusive right of the proprietor of the trade mark to be declared null and void.
See: How to protect your trade mark in Estonia?Industrial Property Board of Appeal

Goods and services

Upon registration of a trademark all goods and services are divided into different classes. The applicant must specify to which class belong the goods or services for which the trademark is used to designate. Goods and services are classified according to the international classification (Nice Classification). The use of TMclass, a classification tool which helps you to find a correct class for your goods and services, is recommended.
See: Nice Classification (Nizza klassifikatsioon), TMclass

Class numbers (1-45) and the specific goods and/or services should be indicated in the list of goods and/or services. There is no need to indicate the six-figured basic number with the indication of good or service.

Sale services belong to class 35 under wording retail and wholesale services for third parties (jae- ja hulgimüügiteenused kolmandatele isikutele) with addition of the list of goods that you sell.
 

Fees

The fee for filing of an application for registration of a trade mark in Estonia in one class is 145 euros, i.e. if all goods or services covered by the trade mark fall into one class (according to the Nice Classification). In case everything does not fall into one class and there is a need to add the other classes into the application, a fee of 45 euros for each additional class should be paid. So it’s 145 euros + 45 euros for each added class. The fee should be paid within 2 months from the filing date of the application for registration of a trade mark.
See: How to protect your trade mark in Estonia?Trade mark fees

The state fee shall not be refunded. Therefore it is recommended that the applicant would learn about the obstacles that may occur at registration before filing an application.
See: Which sign cannot be a trade mark?Earlier rights and searches

In case a due date falls on a public holiday or any other rest day, the due date is deemed to be the first working day following the rest day.

Filing an application in Estonia

Yes, it will. Trade mark protection is territorial. Protection is valid in the country or a union of countries, where the mark is registered. If an application for registration of a trade mark is filed with the Estonian Patent Office, in case of registration, the trade mark will be valid in Estonia.
See: Scope of legal protection

A patent attorney is a person who can be authorised by an applicant to carry out all the necessary procedures in the patent or trademark offices.
See: Patent attorneys

Convention priority means the preferential right of the person who files the first application to apply for legal protection to a trade mark (e.g. the first application may be filed in another country). 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. The date of filing of the first application or the date of the exhibition is the date of priority.
See: Earlier rights and searches

Country code or code of the state is a two-letter code (e.g. EE) or a three-letter code (e.g. EST) by the International Organization for Standardization (ISO). We use the two-letter country code.
See: Recommended Standard on two-letter codes for the representation of states, other entities and intergovernmental organization

It does not have to be a collective mark. A collective mark is a trade mark registered in the name of a business association (a union, a community), whose statutes prescribes the conditions and the right to use the trade mark.

Can a law firm file an applications for registration of a trade mark and requests for making amendments in the application or registration with the Patent Office on the basis of a relevant letter of authorisation? Does it matter whether the applicant is an Estonian enterprise or a foreign enterprise?

Acts related to trade marks shall be performed at the Patent Office by interested persons or by authorised patent attorneys who have been awarded patent attorney qualifications for operation in the area of trade marks pursuant to Patent Attorneys Act. A person with no residence, seat or commercial or industrial enterprise operating in Estonia shall authorise a patent attorney as the person’s representative to perform procedures related to trade marks at the Patent Office and at the Board of Appeal, except for filing an application.

Basis: Trade Marks Act § 13

Filing application abroad

In short, there are three possibilities: a) to file an application for registration of a trademark in a particular foreign country; b) to apply for international registration of a trademark under the Madrid Protocol; c) to protect the trade mark as a European Union trade mark, whereas legal protection is obtained on the whole territory of the EU in case of registration.
See: How to protect your trade mark via the other national officesvia the European Union trade mark systemvia the Madrid system of international registration?

This question should be evaluated on the basis of particular trade mark and the needs of the applicant. The price depends on the countries, where the protection is needed, on the number of those countries and on the number of classes of goods and services.
See: How to protect your trade mark via the other national officesvia the European Union trade mark systemvia the Madrid system of international registration?

When trade mark is registered

The Patent Office does not supervise the rightful use of the trade marks. If you have a registered trade mark and you discover that someone is infringing your rights in any way, you are entitled to turn to the court.
See: Trade Marks Act

Amendments in the register are made upon application filed by the proprietor of the trade mark or by the patent attorney representing the proprietor. The applicant has to sign the application either by hand or digitally. If the proprietor of the trade mark is a company, the position of the person representing it has to be added to the application which means that the right to do transactions on behalf of the company must be indicated to the Patent Office. The application can be filed through e-services portal, attached to the e-mail [email protected], digitally signed, or on paper.

The fee for the transfer of the trade mark shall be paid on the basis of a unique reference number. The Patent Office shall send the unique reference number to the applicant's e-mail address after the application for the operation has been submitted. There is no state fee to be paid in order to change the name or the address of proprietor of the trade mark. After making amendments in the register, the Patent Office issues a written notification on the matter to the applicant.

See: Managing the application or registration

Pursuant to subsection 50² (2) of the Trade Marks Act it is not possible to alter a trade mark, i.e. a logo, in the register. In case you are using a new trade mark you would like to protect, you have a possibility to file a new application for registration of a trade mark with the Patent Office.

Where rights to a trade mark are transferred from one enterprise to another, it is called a transfer registry entry. Amendments in the register are made upon application filed by the proprietor of the trade mark or by the patent attorney representing the proprietor. The applicant has to sign the application either by hand or digitally. If the proprietor of the trade mark is a company, the position of the person representing it has to be added to the application which means that the right to do transactions on behalf of the company must be indicated to the Patent Office. The application can be filed through e-services portal, attached to the e-mail [email protected], digitally signed, or on paper.

The fee for the transfer of the trade mark shall be paid on the basis of a unique reference number. The Patent Office shall send the unique reference number to the applicant's e-mail address after the application for the operation has been submitted. After making amendments in the register, the Patent Office issues a written notification on the matter to the applicant.

See: Managing the application or registration

Additional info

It is possible to register a trade mark, whereas it is possible to patent an invention. In order to obtain legal protection an application for registration of a trade mark has to be filed with the Reception of the Estonian Patent Office.
See: How to protect your trade mark?

© - protected by copyright or publishing right;
® - registered trade mark;
TM - unregistered trade mark.

It means that the trade mark is not valid. The applicant has either withdrawn the application or has not performed the procedures required by the Patent Office. Therefore the Patent Office has terminated the processing of this trade mark.

The Patent Office deals with legal protection of industrial property, whereas the Estonian Internet Foundation handles the registration of domain names.

No, you cannot. The database is informative and does not have legal effect. Please turn to the Reception of the Patent Office to get written certified information, certified copies or printouts from the register of trade marks.
See: Access to the register and releasing information

Patent specifications and registered trade marks published from 1919 to 1940 can be seen in the reading room of Estonian National Archive in Tallinn, Madara 24.

  • Jaga

Last updated: 04.11.2022