Managing applications or registrations

The register of trade marks and service marks contains information on the procedure for the legal protection of a trade mark from the filing of the application until the registration. The register also records the activities related to the managing the application or registration.

The management of the registration includes:

  •  renewal of the registration;
  • changes in applicant’s or owner’s details;
  • transfer of a trade mark;
  • registering a license;
  •  registering a pledge;
  • dividing the trade mark registration;
  • releasing information from the register;
  • issue of certified priority document or a duplicate letter.

 The operations in the register of trade marks and service marks must be performed on the basis of an application by an interested party (applicant or owner of the industrial design) or by a patent attorney representing them. If the owner or the applicant is a company, the application must be signed by the person entitled to represent the company.

An application for the renewal of the term may be submitted to the Estonian Patent Office through the e-services portal, to the e-mail address [email protected] (digitally signed as an attachment) or in free-form on paper.

The applicant or the owner may be represented by a patent attorney who is established in the national register of patent attorneys and who can act in the field of trade marks. The list of patent attorneys operating in Estonia can be found on the Estonian Patent Office’s website. A person who does not have a place of residence, seat or commercial or industrial enterprise operating in Estonia must authorize a patent attorney to perform procedures related to the trade marks in the Estonian Patent Office and in the Board of Appeals as his or her representative.

When paying the state fee, a unique reference number must be used, which the applicant receives from the Estonian Patent Office at their e-mail address after filing an application.

The applicant will be notified of the entry within 20 working days from the date of receipt of the required application and the necessary documents.
 

The entry of the registration must be made on the basis of the registration decision.

A trade mark is registered if:

  • the decision to register a trade mark has not been appealed or the applicant’s right to the published trade mark has not been contested or the note specified in § 411(1) of the Trade Marks Act has not been submitted to the Patent Office within two months from the publication of the notification of trade mark registration;
  • regardless of the appeal or the contestation, the decision to register a trade mark and the applicant’s right for the published trade mark remain in force.


If the trade mark is registered, all registration details set out in § 48 (2) of the Trade Marks Act will be entered in the register and published in the Official Gazette of the Estonian Patent Office – The Estonian Trade Mark Gazette.

After the registration of the trade mark, the Estonian Patent Office will issue an electronic trade mark certificate to the owner within 20 working days.

Upon application by the owner of the trade mark, the Estonian Patent Office issues a copy of the electronic trade mark certificate in paper form within 20 working days of submission of the application, but not before the payment of the required state fee.

It is in the interest of the owner or the applicant to keep the information up-to-date and correct in the register. This facilitates communication between the Estonian Patent Office and the owner and helps to avoid misunderstandings.

In the event of a change in the name, address or other contact information the applicant or owner must submit a written application to the Estonian Patent Office. There is no need to pay a state fee. An application may be submitted via e-services portal, as an e-mail with a digitally signed attachment sent to [email protected], by post, or delivered to the address itself.

The entry is made within 20 working days from the date of receipt of the required application and the necessary documents. The Estonian Patent Office will send a notice confirming the entry.

The owner or applicant of a trade mark can transfer the trade mark to another person. A trade mark can be transferred in whole or in some parts in respect of goods or services (§ 18 (1) Trade Marks Act).

An application for a transfer may be filed by the registered owner or applicant or by the new owner or the new applicant. If the application is filed by the new applicant or by the new owner of the trade mark, a document certifying the transfer, signed by the registered applicant or owner, must be attached to the application. If the trade mark to be transferred is burdened with a right in rem, namely pledge, the written consent of the pledgee must be attached to the petition.

The application can be filed via e-services portal, e-mail (digitally signed attachment) or post. The state fee for the transfer registry entry is 32 euros. When paying the state fee, a unique reference number must be used, which the applicant receives from the Estonian Patent Office at their e-mail address after filing an application.

After making the transfer entry in the register, the Estonian Patent Office will issue a corresponding written notice to the applicant. The entry is made within 20 working days from the date of receipt of the required application and the necessary documents.

NB! Upon the dissolution of the company, the continued ownership of the trade mark as an asset of the company should be decided. If the company that owned the trade mark has been deleted from the Business Register, the trade mark no longer has an owner, i.e. a person who could perform operations with the trade mark.
 

The legal protection of a registered trade mark applies from the date of filing of the trade mark registration application and is valid for 10 years after the date of filing. Trade marks registered on the basis of applications submitted before April 1, 2019 are subject to legal protection from the date of filing of the trade mark application and remain valid for 10 years after the date of registration.

The owner of a trademark may, within one year prior to expiry of the term of legal protection of a trade mark, request renewal of the term of the legal protection of the trade mark for the next ten years by submitting a statement to the Estonian Patent Office.

An application for the renewal of the term may be submitted to the Estonian Patent Office through the e-services portal, to the e-mail address [email protected] (digitally signed as an attachment) or in free-form on paper. The entry is made within 20 working days from the date of receipt of the required application and the necessary documents. After making the entry in the register, the Estonian Patent Office will issue a corresponding written notice to the applicant.

According to the § 104 (1) of the State Fees Act, the state fee for the renewal of the term of legal protection of a trade mark is 195 euros. When paying the state fee, a unique reference number must be used, which the applicant receives from the Estonian Patent Office at their e-mail address after filing an application.

If the owner of the trade mark has forgot it or if the renewal of the term has not been carried out for some other reason, the owner can, according to § 50 (2) of the Trade Marks Act, request restoration of the term for renewal of the legal protection of the trade mark within six months after the term of legal protection of the trade mark has expired.
In case of restoring the term, the owner of the trade mark must pay – in addition to the renewal fee of 195 euros – the state fee of 45 euros according to the subsection 106 (1) of the State Fees Act. Therefore, if the owner of the trade mark wishes to restore the term for renewal of legal protection of the trade mark, and to renew the term of legal protection of the trade mark, a state fee in total of 195 + 45 = 240 euros has to be paid.

See more: Trade mark fees.

6 months before the expiry of the trade mark, the Estonian Patent Office will send a reminder to the e-mail address of the owner of the trade mark to extend the term of validity. Re-notification will be sent on the day following the expiry of the term of validity, after which it is possible to extend the validity of the trade mark for a further 6 months by paying the additional fee. A valid e-mail address of the owner of the trade mark must be provided in the register in order to be able to receive the notification.

The Estonian Patent Office wishes to remind the owners of trade marks to pay attention and to keep in mind when the term of legal protection ends for their trade mark, and when to renew it.

If the trademark is deleted from the register, the owner of the trade mark must again carry out the whole process of registration which includes filing the application, paying the state fee and passing the examination. That means essentially that the trade mark application will be considered as a new trade mark registration application at the Estonian Patent Office.
 

A trade mark applicant may divide the application and the trade mark owner may divide the registration into two or more applications or registrations by dividing the goods and services between them.

In order to divide the application or the registration, the applicant or the owner must submit a free-form digitally signed application to [email protected], send it by post or deliver it to the address itself and pay a state fee of 45 euros. When paying the state fee, a unique reference number must be used, which the applicant receives from the Estonian Patent Office at their e-mail address after filing an application.

The application for registration or the application for dividing the trade mark must contain the following information:

  • application number or registration number;
  • a list of goods and services which remain in the original application or registration;
  • a list of goods and services which are transferred to the divided application or registration.

The applicant will be notified of the entry within 20 working days from the date of receipt of the required application and the necessary documents.

A registered trade mark or trade mark application may be encumbered with a pledge.

The person in whose favor the pledge is set (the pledgee), shall have the right to satisfy the claim secured by the pledge at the expense of the pledged trade mark. The trademark cannot be transferred or licensed without the consent of the pledgee. The registration of a pledge in the trade mark register is not mandatory. The purpose of this is to prevent acts harmful to the pledgee with trademarks, such as the transfer of a trademark, and to inform the public.

The acts related to the registration of a pledge are regulated in § 506 of the Trade Marks Act. The trade mark owner or pledgee must submit a written application for registration of the pledge. An application may be submitted as an e-mail with a digitally signed attachment sent to [email protected], by post, or delivered to the address itself. A written agreement on the establishment of the pledge must be appended to the application. 

At registration of a pledge a state fee in the amount of the full state fee rate set out in Annex 2 to the State Fees Act must be paid. The transaction value upon registration of a pledge contract is the amount of the pledge. When paying the state fee, a unique reference number must be used, which the applicant receives from the Estonian Patent Office at their e-mail address after filing an application.

To change the terms of the pledge agreement, an application must be submitted together with a notarised annex to the pledge agreement, a court judgment or other document certifying the amendment and a state fee of 7 euros must be paid (registration of an annex to the pledge agreement).

To change the identity of the pledgee, an application must be submitted together with a notarised document certifying the change and a state fee of 7 euros must be paid (registration of an annex to the pledge agreement). In order to change the ranking of a registered pledge, an application must be submitted together with the agreement of the persons whose ranking of rights changes and a state fee must be paid.

A pledge is deleted upon termination of the claim secured by the pledge or if the pledgee waives the pledge. If the pledgee waives the pledge during the period of validity of the pledge, the pledgee must submit an application together with a notarial declaration of waiver of the pledge.

It is important to emphasize that in order to amend or delete an entry concerning a registered pledge on the basis of an application by the owner of the trade mark, a notarised written consent of all persons whose registered right could be prejudiced by the amendment or deletion must be submitted to the Estonian Patent Office according to § 506 (8) of the Trade Marks Act.

Deleting an entry on a pledge from the register of trade and service marks is also done on the basis of an application in the Estonian Patent Office. The Estonian Patent Office does not delete entries on registered pledges on its own initiative. Therefore, there have been cases where the term of validity of a pledge is over in in terms of the calendar date but the entry on a pledge has not been deleted from the register and thus the trade mark cannot be transferred.

After making the entry in the register, the Estonian Patent Office will issue a corresponding written notice to the applicant. The entry is made within 20 working days from the date of receipt of the required application and the necessary documents.
 

The owner (licensor) of the trade mark may allow one or more persons (the licensee) to use the rights arising from the trade mark on the basis of a license agreement.

The terms and the scope of the license must be determined in the license agreement.

The license expires at the end of the registration period. The transfer of a trade mark or a subsequent license will not affect the validity of the license previously granted. The licensee may transfer rights obtained from the owner of the trade mark to a third party only with the permission of the owner.

Registration of a license is governed by § 505 of the Trade Mark Act. A written request of the licensor or the licensee is necessary for the registration. An extract of the license agreement must be attached to the application, which must contain the information necessary for making the entry regarding the parties to the agreement, the nature, scope and term of the license. An extract is not required if both the licensor and the licensee have signed the application for entry of the license in the register, and the application contains the information necessary for the entry.

An application may be submitted as an e-mail with a digitally signed attachment sent to [email protected], by post, or delivered to the address itself.

The state fee for registering a license is 32 euros. When paying the state fee, a unique reference number must be used, which the applicant receives from the Estonian Patent Office at their e-mail address after filing an application. After making the license entry in the register, the Estonian Patent Office will issue a corresponding written notice to the applicant. The entry is made within 20 working days from the date of receipt of the required application and the necessary documents.

A license agreement is, by its legal nature, a private law agreement governed by the Law of Obligations Act and is valid under the conditions agreed upon by the parties to the agreement. This means that, if the rights and obligations of the parties are agreed in the agreement between the licensor and the licensee and are violated by one of the parties, the dispute between the parties must be resolved using civil law remedies.

The trade mark license entry will be deleted from the register on the basis of the application submitted to the Estonian Patent Office. A valid application pursuant to § 29 (3) of the Trade Mark Regulation must be submitted by the person who submitted the application for registration of the license.

A duplicate of a certificate of the trade mark will replace the original certificate. The details of the duplicate must be in accordance with the registration details valid at the time of issue of the certificate.

According to § 40 of the Trade Mark Regulation, the owner of the trade mark or their authorized representative must file a written free-form application to the Estonian Patent Office. An application may be submitted as an e-mail with a digitally signed attachment sent to [email protected], by post, or delivered to the address itself.

The state fee for issuing a duplicate is 16 euros. When paying the state fee, a unique reference number must be used, which the applicant receives from the Estonian Patent Office. The duplicate will be issued no later than the 20th working day following the receipt of the application, but not before the payment of the required state fee.

The trade mark will be deleted from the register if the owner has not renewed the validity of the registration. The trade mark will be deleted from the register before the term if the owner waives the rights or on the basis of a decision of the Board of Appeals or a court or at the request of an interested person.

If the validity of the trade mark has not been renewed, the trade mark will be deleted from the register six months after the expiry of the registration in accordance with § 51 (1) of the Trade Marks Act. Deletion takes effect retroactively on the day following the date of expiry of the registration. 

If the owner of the trade mark has forgot it or if the renewal of the term has not been carried out for some other reason, the owner can, according to § 50 (2) of the Trade Marks Act, request restoration of the term for renewal of the legal protection of the trade mark within six months after the term of legal protection of the trade mark has expired. 

According to § 51 (2) of the Trade Marks Act, a trade mark is deleted from the register before the prescribed time if a corresponding court judgement which has entered into force is submitted to the Patent Office or if the owner of the trade mark renounces the trade mark.

If the owner of the trademark has waived the trademark, a corresponding application must be submitted to the Estonian Patent Office. A trade mark cannot be waived if it is encumbered with a pledge or included in a bankruptcy estate or is subject to a license or a prohibition on disposal.

In practice, deletion of a trade mark is most complicated on the basis of § 51 (3) of the Trade Marks Act which states that a trade mark is 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 written request is filed for the making of an entry in the register on the transfer of the trade mark. When filing an application of deletion with the Estonian Patent Office on previously stated grounds, it must also be proven that the trade mark entered into the register earlier impedes the proceedings of the later trade mark and its registration. The Trade Mark Department of the Estonian Patent Office must issue a notification concerning the impediment of the registration to the later applicant of the trade mark.

The register is public after the publication of the entry of the registration data in the official publication of the Estonian Patent Office – The Estonian Trade Mark Gazette. Anyone may submit an application for examination of the file, for the issue of written confirmation from the register, for a statement in the register or for a copy.

Before publishing a notice of the entry of registration data, the following information may be issued from the register:

  • reproduction of the trademark;
  • application number;
  • the date of submission of the registration application;
  • priority data;
  • the name of the applicant;
  • the name of the applicant’s representative;
  • the list of goods and services and the class numbers of the Nice Classification.

This information will be published in the public database of the trade mark of the Estonian Patent Office on the day following the receipt of the application.

Following the publication of the registration entry in The Estonian Trade Mark Gazette, the register is public. To have access to the registry file, to issue information or to obtain a document of the register file, an application must be filed and a state fee paid. The applicant and the owner of the trade mark have access to the registration file of their trade mark free of charge.

An application may be submitted as an e-mail with a digitally signed attachment sent to [email protected], by post, or delivered to the address itself. When paying the state fee, a unique reference number must be used, which the applicant receives from the Estonian Patent Office at their e-mail address after filing an application.

The file can be viewed at the reception of the Estonian Patent Office on a client computer, where the electronic files are downloaded. The file must be accessible within five working days from the date of receipt of the application to the Estonian Patent Office or from the date of payment of the state fee if the state fee is paid later than the date of receipt of the application.

The release of information from the register will take place on the basis of a request made in the application within five working days from the date of receipt of the application or from the date of payment of the state fee if the state fee is paid at a later date. The Estonian Patent Office will provide the information requested by e-mail or by paper, on-site or by post.

A copy of a document in the registry file or a printout of an entry will be issued from the register as an approved document. The Estonian Patent Office will issue the documents specified in the application either by e-mail, on paper on the spot or by post within five working days as of the date of receipt of the application or as of the date of payment of the state fee if the state fee is paid later.

The Estonian Patent Office will issue, on the basis of a written statement by the applicant or the owner of the trade mark, a priority document consisting of the Estonian Patent Office’s confirmation and a copy of the application. A state fee of 16 euros must be paid for the issue of a document.

  • Jaga

Last updated: 20.04.2022