How to protect your trade mark?

Legal protection for the invention can be applied for both in Estonia and abroad.

Legal protection in Estonia is suitable for you, if at least in the beginning you are planning to do business only in Estonia.

In order to obtain legal protection in Estonia you have to file an application for registration of a trade mark in Estonian with the Estonian Patent Office. You can file the application via the electronic filing portal or by filling in an application formwhich can be printed and either brought or sent to the reception of the Estonian Patent Office. It is also possible to bring the application to the mailbox which is opened around the clock and the relevant filing date will be determined.

File electronically
electronic filing portal

When paying the state fees, a unique reference number should be used. It will be provided to you by the Estonian Patent Office after you have filed the application. If you have paid the state fees before the Patent Office has provided the unique reference number, the reference number field should be left blank and the data concerning the payment should be submitted to the Patent Office.

Each application may only include one trade mark. Separate applications should be filed, if you need legal protection for different versions of your trade mark.

Procedures relating to the registration of a trade mark can be performed by an applicant or by a patent attorney authorised by the applicant. A person with no residence, seat or commercial or industrial enterprise operating in Estonia must authorise a patent attorney as a representative, except for filing an application.

Before filing the application it is important to thoroughly think through the goods and services for which protection will be required as after acceptance of the application it is not possible to add any goods or services. The application fee depends on the number of classes of the goods or services listed in the application. Assistance for the classification of the goods and services can be found in the database TMclass.

It is very important for the applicant to follow the due dates for making amendments and corrections to the application as well as for the payment of fees. If the applicant fails to respond by the due date the processing of the application will be terminated. Therefore correct contact details should be submitted to the Estonian Patent Office in order to receive the corresponding notices.

In case the application is deemed to be withdrawn an applicant has the right to request the resumption of processing. It should be borne in mind that a request for the resumption of processing may be filed within six months after the due date for the act which was not performed.

A notice concerning the decision to register a trade mark is published in the Estonian Trade Mark Gazette. An interested person may contest the decision to register a trade mark at the Industrial Property Board of Appeal within two months from the publication date. The owners of the earlier rights should monitor the notices concerning the decisions to register trade marks published in the official gazette and contest the decisions, if the Patent Office has decided to register the trade mark that is in conflict with their earlier rights.

If you want to register your trade mark in a foreign country as a national mark, an application for registration of your trade mark should be filed with the trade mark office of a relevant country. Your trade mark will be protected on the territory of this country or union of countries.

This way of registration is complicated due to language barrier, different processing norms of the offices and a requirement to employ a local representative for communication with the national offices of some countries. Consequently, it is sometimes more reasonable to use other ways for obtaining legal protection abroad: the European Union trade mark system or the Madrid system.

On the other hand, sometimes the national registration may be the most rational way for registration, for example if protection is only needed in one neighbouring country, or if there is a need to adjust your trade mark according to the local market. For example, registration of a trade mark in Cyrillic characters may be necessary only in Russia.

The European Union trade mark (EUTM) system offers trademark owners a unitary protection throughout the European Union (EU) with the filing of a single application. Legal protection will be valid also on the territory of Estonia. In case of extension of the EU, legal protection of the trade mark extends automatically to the new member states.

You can file your EUTM application with the European Union Intellectual Property Office (EUIPO) located in Alicante in Spain. E-filing is preferable, because it is cheaper and more convenient than paper application (information concerning the fees).

EUTMs should be in accordance with the same requirements described under the headings Which sign cannot be a trade mark and Earlier rights and searches, i.e. absolute and relative grounds for refusal of trade mark registration, which are provided in Regulation (EU) 2017/1001 of the European Parliament and the Council.

Unitary protection of an EU trade mark means that if the ground for refusal of the trade mark becomes apparent in any member state, the trade mark will not be registered at all. All rights valid earlier in the member states are considered as prior rights, including earlier national trade marks, the owners of which can contest registration of the EUTM. Searches concerning earlier marks can be performed in database TMView, which includes data from the EUIPO database and national databases of the member states of the EU. Besides that, many other countries not belonging to the EU have provided their databases for TMView.

Before filing the application it is important to thoroughly think through the goods and services for which protection will be required as after the acceptance of the application it is not possible to add any goods or services. The application fee depends on the number of classes of goods or services listed in the application. Assistance for the classification of goods and services can be found in the database TMclass.

A person having neither their domicile nor their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area shall be represented before the EUIPO by a professional representative, except for filing an application for registration of a EUTM. The list of representatives is available in the database eSearch plus, where you can make searches for example according to their location (country or town).

Estonia has acceded to the international treaty called Madrid Protocol enabling international registration of a trade mark by a single application in many different countries all over the world. The Madrid system is administered by the World Intellectual Property Organization (WIPO) located in Geneva in Switzerland.

The Madrid system provides an opportunity to protect your trade mark in several countries by filing one application via the office of your country of residence. This office is referred to as the Office of origin. The protection of mark in each of the countries is the same as if the mark had been deposited directly with the office of that country. Later management of the registration is easier, because it is possible to make changes or renew the registration using one procedure in all countries where the mark has acquired legal protection. Protection can be acquired in new countries by their subsequent designation.

The application has to be filed with the WIPO via the Office of origin – Estonian Patent Office or EUIPO. In order to do that it is necessary to have an application or a registration of the same trade mark (the basic application or registration) in the Office of origin. The data of the international application should be in accordance with the data of the basic application or registration:

  • the trade mark has to be identical;
  • the data of the applicant has to be the same;
  • the list of goods and services cannot be broader than in the basic application or registration.

The cost of international registration depends on the countries where protection is applied for, and their number. In order to learn the precise amount that should be paid, you should use a fee calculator. By entering details of the application and designating the countries or regions where you want to protect your trade mark, the amount of fees in Swiss francs will be calculated. Besides that a fee for forwarding the application has to be paid to the Office of origin.

The application filed via the Estonian Patent Office should be presented in English via Madrid eFiling portal or on form MM2. In Madrid system the trade mark has to be represented graphically, so it’s not possible to file an international application for a trade mark that is represented as a sound or video file.

For a period of five years, from the date of its registration, an international registration remains dependent on the basic application or registration. This dependence means that legal protection arising from an international registration will not be valid any more in case the basic application is not registered or the basic registration is not valid.

Pursuant to the Madrid system it is also possible to apply for trade mark protection in Estonia via any other Office of the Contracting Party. It is one of the possibilities for enterprises located or operating abroad to protect their trade mark in Estonia.

An applicant can authorise a representative for communication with the Office of origin and WIPO. The appointment of a representative in the international application gives authority to act before the International Bureau of WIPO. It may subsequently become necessary to appoint one or more further representatives to act before the Offices of designated Contracting Parties, for example, in the event of a refusal of protection issued by such an Office. The appointment of a representative in such a case will be governed by the requirements of the Contracting Party concerned.

Rahvusvahelise registreerimise menetlus on kujutatud menetlusskeemidel.

  


WIPO e-services

Madrid Monitor is a database of trade marks registered and applied for in WIPO

Madrid Portfolio Manager is an on-line service that allows holders of international registrations and their representatives to access their international trade mark portfolios

Madrid Goods & Services Manager (MGS) is a tool that assists trade mark applicants in compiling their lists of goods and services to file international trade mark applications.

WIPO news

Madrid Highlights is a quarterly publication issued by the WIPO focusing on keeping Madrid system’s stakeholders up to date with the latest developments within the Madrid system

  • Jaga

Last updated: 14.07.2022