TRADEMARK ACT
SYNOPSIS
1. TRADEMARK
A trademark and a service mark (hereinafter trademark) is a sign which a natural or legal person uses or intends to use in economic and business activities in order to distinguish his goods or services from other goods or services of the same kind of other natural or legal persons.
2. REGISTRABLE TRADEMARK
Any sign or combination of signs which is capable of being represented graphically and consists of letters, words, numerals or designs or is three-dimensional may be registered as a trademark provided that such signs distinguish the goods or services of one natural or legal person from those of others.
A trademark may be registered in black-and-white or in colour. A trademark which is registered in black-and-white shall be protected in all colour combinations; a trademark which is registered in colour shall be protected only in the colour combination which is applied for.
Trademarks which consist of sound or smell are not registrable.
A registrable trademark may include elements which are not subject to protection unless this decreases the distinctive character of the trademark and infringes the rights of other persons. These parts of the trademark will be disclaimed expressis verbis.
If, during subsequent use, an element of a registered trademark which is not subject to protection becomes well-known in the Republic of Estonia within the meaning of Article 6bis of the Paris Convention and thereby acquires a distinctive character, a new application for registration of the registered trademark may be filed to extend legal protection to the entire mark.
3. ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION
1) signs which cannot be presented graphically;
2) trademarks which are devoid of any distinctive character;
3) trademarks consisting exclusively of signs or indications which designate the kind, quality, quantity, intended purpose, value, geographical origin of the goods or services, the time of production of the goods or of rendering of the services, or other characteristics of the goods or services, or which consist of the above-mentioned signs or indications which are not considerably altered;
4) trademarks consisting exclusively of signs or indications which have become customary in the current language use in relation to such goods or services for which the registration of a trademark is applied for, or which have become customary in economic and business activities;
5) signs consisting exclusively of the shape which results from the nature of the goods, is necessary to obtain a technical result or gives substantial value to the goods;
6) trademarks which are of such nature as to deceive the consumer as to the kind, quality, quantity, intended purpose, value or geographical origin of the goods and services, the time of production of the goods or of the rendering of the services, or other characteristics of the goods or services;
61) trademarks which contain a registered geographical indication or are confusingly similar to it if it may result in an unlawful use of the geographical indication pursuant to the provisions of '' 11 or 18 of the Geographical Indication Protection Act;
7) trademarks which are contrary to public policy or accepted principles of morality;
8) trademarks the registration of which must be refused on the basis of Article 6ter of the Paris Convention for the Protection of Industrial Property, unless the legally competent authority or official gives written consent for the registration;
9) trademarks which contain flags, armorial bearings or other symbols which are not covered by Article 6ter of the Paris Convention for the Protection of Industrial Property but the registration of which is contrary to public interest;
10) signs which are prohibited to be used or registered as trademarks pursuant to other laws.
4. RELATIVE GROUNDS FOR REFUSAL OF REGISTRATION
1) trademarks which are identical with an earlier trademark which is registered or filed for registration in the name of another person to designate identical goods or services;
2) trademarks which are identical with or confusingly similar to or associated with an earlier trademark which is registered or filed for registration in the name of another person to designate goods or services of the same kind, unless the other person gives written consent for the registration;
3) trademarks which are identical with or confusingly similar to or associated with an earlier trademark registered or filed for registration in the name of another person to designate goods or services of a different kind, where they may mislead consumers and as a result take advantage of the reputation or be detrimental to the distinctive character of another person's trademark, unless the other person gives written consent for the registration;
4) trademarks or markings of goods which belong to another person and are well known in the Republic of Estonia on the date of receipt of the application for registration of a trademark or on the priority date within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property, regardless of whether or not they are registered, unless the other person gives written consent for the registration;
5) trademarks which are identical with or confusingly similar to a trade name belonging to another person provided that the trade name has been entered in the commercial register prior to the date of receipt of the application for registration of a trademark or the priority date, and the other person's area of activity in respect of which a notation has been made in the commercial register includes the goods and services for which an application for registration is filed, unless the other person gives written consent for the registration;
6) trademarks which include a portrait of a person, name of a well-known person, name of a registered immovable, name or representation of an architectural site if it is detrimental to the rights of the person depicted in the portrait, the well-known person or the owner of the immovable or architectural site, unless the entitled person gives written consent for the registration;
7) trademarks including protected industrial designs;
8) trademarks including works or titles thereof protected by copyright unless the entitled person gives written consent for the registration;
9) trademarks including the name of a medicinal product belonging to another person and registered in the Republic of Estonia prior to the filing date of the registration application or the priority date or the name of an active ingredient of a medicinal product;
10) trademarks which are identical with a trademark registered and in use in another country if the application for registration is filed in bad faith.
An earlier trademark means:
1) a trademark entered in the State Register with a filing date of the registration application or priority date which is earlier than the date of receipt or the priority date of the registration application of the trademark in question;
2) a trademark filed for registration in Estonia with a date of receipt of the registration application or priority date which is earlier than the date of receipt or priority date of the registration application of the trademark in question, if the trademark is entered in the State Register of trademarks and service marks;
3) a trademark valid in Estonia and registered pursuant to Madrid Protocol, with the date of registration or priority date which is earlier than the filing date of the registration application or priority date of the trademark in question.
5. FILING
An application shall be filed with the Patent Office by an applicant -natural or legal person. Filing is accompanied with payment of the state fee.
An applicant may file an application and perform all procedures relating to the registration and maintaining of the trade mark independently or through a patent attorney. Natural and legal persons of foreign states shall perform procedures relating to the registration and maintaining of trade marks in Estonia only through patent attorneys.
Each registration application shall cover one trademark only.
5. MADRID PROTOCOL APPLICATION
National applicants:
1) An application for international registration of a trademark shall comply with the form and content requirements established in the Madrid Protocol and its Common Regulations.
2) An international application shall be filed with the Patent Office. The documents of the international application shall be filed in English.
3) A state fee shall be paid for the filing of an international application.
Registration of foreign trademarks on basis of international applications:
1) The Patent Office shall examine the international registrations where Estonia is the designated party.
2) The Patent Office shall notify the International Bureau within 18 months after the date of notice of the international registration of a trademark if the international registration does not satisfy the conditions for registration of trademarks provided in Estonia.
3) The Patent Office may notify of the refusal to grant legal protection to an international registration pursuant to Article 5(2)c of the Madrid Protocol after the expiry of 18 months from the date of notice of the international registration.
4) If the examination confirms that the international registration satisfies the conditions for registration in Estonia, notice of the international registration of a trademark shall be published in the official gazette of the Patent Office.
5) Any person may file an opposition against the international registration at the Board of Appeal within two months after the date of publication of the notice of international registration in the official gazette of the Patent Office. The Patent Office shall notify the International Bureau of such opposition.
6. EXAMINATION
Formal examination - compliance of a trademark application with the formal requirements (obligatory documents, signatures, etc.)
Substantial examination - investigation of the sign applied for against the absolute and relative grounds for refusal.
If the examination of an application depends on the examination of another application which has earlier priority, the examination is suspended until a final decision is made concerning the earlier application.
The Patent Office may oblige the applicant to specify or amend the application by a fixed term. The applicant has the right to extend the term upon payment of an extra state fee.
If the applicant fails to meet the term prescribed by the Patent Office, or to pay the state fee, or to respond to the decision made as a result of examination, the Patent Office shall reject the registration application.
The applicant may withdraw the registration application and the examination shall be terminated.
The applicant may limit the list of goods and services specified in the application. Extension of the subject list is prohibited.
A trademark shall be registered if neither absolute nor relative grounds for refusal are revealed.
Registration is refused if at least one of the grounds for refusal is revealed. A decision to refuse registration of a trademark shall be reasoned.
7. CONTESTING OF THE DECISION OF THE PATENT OFFICE
The decision on refusal of the registration may be contested by the applicant at the Board of Appeal within two months from the date of the decision. The decision of the Board can be contested in court within three months from the date of the decision. The respective state fees have to be paid.
The decision to register a trademark may be contested by the owner of another trademark or other interested party at the Board of Appeal within two months from the date of the decision. The decision of the Board can be contested in court within three months from the date of the decision. The respective state fees shall be paid.
8. RECORDING INTO THE REGISTER
Trademarks shall be entered into the Register after payment of the appropriate state fee. The state fee shall be paid within three months after the expiration of the term for contesting the decision on trademark registration or, in case of contest, after termination of the contest proceeding. If the document certifying payment of the state fee has not been submitted to the Patent Office by the end of the term, the registration application shall be rejected.
9. TRANSFER OF A TRADEMARK
The owner of a trademark may assign the registered trademark in respect of all or some of the goods or services both in the stage of examination and after registration. The assignment of a registered trademark shall be registered in the Register upon payment of the state fee, otherwise invalid.
The owner of a trademark (licensor) may transfer the right to use the trademark to another person/other persons (licensee/licensees) pursuant to a licence agreement. Recording of a licence agreement in the register is not compulsory, but an unregistered licence agreement is not valid against third parties. Therefore, registration is recommended.
Upon dissolution, merger, division or transformation of a legal person or upon the pledge of the trademark, the legal status of the trademark is altered, and a corresponding entry shall be made in the Register after payment of the state fee.
10. THE RIGHTS OF A TRADEMARK OWNER
No natural or legal person shall have the right, without the consent of the owner of the trademark, to use a trademark to designate the same or similar goods and services in economic and business activities if the trademark is identical with or confusingly similar to the protected trademark.
The owner of a trademark has the right to prohibit the use of the trademark in relation to the same or similar goods and services as well as other goods and services if the trademark is well-known in Estonia and such use takes advantage of or is detrimental to the distinctive character or reputation of the trademark.
The following constitutes use of a trademark:
1) affixing the trademark to goods or to the packaging thereof;
2) offering for sale, putting on the market or storage for the purpose of sale of goods designated by the trademark;
3) offering or rendering services under the trademark;
4) importing or exporting goods designated by the trademark;
5) using the trademark on economic and business documents, advertising materials or user instructions of goods.
Trademarks legally protected in Estonia by way of international registration are subject to the same legal regime and enjoy the same benefits as trademarks registered in Estonia.
11. THE ACTIONS NOT INFRINGING THE RIGHTS OF A TRADEMARK OWNER
The owner of a trademark has no right to prohibit any third party from making use in economic and business activities of:
1) the name or address of the third party;
2) indications which designate the kind, quality, quantity, intended purpose, value or geographical origin of goods and services, time of production of goods or of rendering of services, as well as other characteristics of goods or services;
3) the trademark if it is necessary to indicate the intended purpose of a good (e.g. as accessories or spare parts) or a service;
4) elements of the trademark which are not subject to protection.
12. EXHAUSTION OF RIGHTS
The owner of a trademark has no right to prohibit further commercial use of goods which are designated with the trademark by the owner or with the owner's consent and put on the market in Estonia or in foreign states, or the storage, importation or exportation of goods for these purposes under the trademark, except if the quality of the goods has changed after they are put on the market.
Thus, at present Estonia follows the principle of full international exhaustion, the situation being changed in the nearest future, whereas the draft of the new Trademark Act stipulates the partial international exhaustion, taking into consideration only the territories of Estonia and the countries of the Agreement of the European Economic Area.
13. USE OF TRADEMARKS
The owner of a trademark shall be obliged to use the trademark.
To date simply grant of a license is considered as use of the trademark. This provision will disappear in the new Trademark Act.
The trademark shall be deemed to have been used if the owner uses a trademark differing from a registered trademark in minor elements which do not alter the distinctive character of the registered trademark
14. NON - USE OF A TRADEMARK
If the owner of the trademark has failed, without justified reasons, to use the registered trademark during a continuous five-year period beginning from the date of entering the trademark in the Register or later, every interested person shall have the right to contest the validity of the registration of the trademark.
The revocation application accompanied with the payment of the state fee shall be filed with the Board of Appeal, the decision of the latter may be contested in court.
15. INFRINGEMENT OF THE RIGHTS OF THE TRADEMARK OWNER
The exclusive right of the trademark owner has been infringed if :
1) for designating goods or services, a natural or legal person uses a sign identical with or confusingly similar to a sign designating the same or similar goods or services without the consent of the owner, or performs other acts infringing the exclusive right of the owner;
2) the licensee fails to comply with the conditions of the licence agreement.
Goods which are designated with a sign identical with or confusingly similar to a legally protected trademark designating the same or similar goods without the consent of the owner of the trademark, are deemed to be counterfeit goods.
16. LIABILITY
Performing of acts infringements shall entail civil, criminal or administrative liability, whereby the different types of liability may be imposed together or separately.
If a natural person has performed an act infringement in the interest of a legal person, criminal liability may be imposed on a natural person and administrative liability may be imposed on a legal person at a time.
Civil liability. The trademark owner whose rights have been infringed may file a civil action containing one or more of the following claims:
1) to cease the transaction infringing the rights of the trademark owner or the licensee and restore the prior situation;
2) to compensate for proprietary and moral damage caused to the trademark owner or the licensee, including non-received profit;
3) to take measures to prevent further infringement of the rights of the trademark owner or the licensee, by removal from circulation all matter which causes infringement.
2) If the trademark owner refuses to file an action, the right to file an action shall transfer to the licensee unless the licence agreement provides otherwise.
Administrative liability of legal persons is provided in the form of fine:
1) in the case of unauthorized real use of the trademark a fine of 250,000 to 500,000 kroons (15,985 - 31,969 EURO) shall be imposed.;
2) in the case of the nomianl use a fine of 25,000 to 50,000 kroons (1,598 - 3,197 EURO) shall be imposed.
17. VARIA
Cancellation of registration may be requested:
1) by the owner without bringing any explanations by way of lodging the respective request with the Patent Office;
2) by any interested party within five years of the date of recording the registration in the Register on grounds of non-conformity of the trademark with the criteria of registrability;
3) by liquidation or death of the owner of the trademark.
The complaint shall be filed with the Board of Appeal, the decision of the Board may be contested in court.
Re-filing of identical trademarks is possible after the cancellation (the reasons for cancellation have no impact on re-filing) of the previous registration. Can be re-filed either by the previous owner or another applicant.
