Legislative changes deriving from the European Union Trade Mark Directive 2015/2436 affecting trade mark proprietors have been now fully transposed into Estonian law.
Indisputably, the most important amendment is that starting from 1 st of April 2019 the Estonian Patent Office will only conduct clearance searches for absolute grounds for refusal when deciding over the registration of a trade mark. This means that proprietors of earlier trade marks should monitor the Estonian trademark database for potential trade marks infringing their rights on relative grounds themselves. There is no automated measure currently available.
The clearance search for relative grounds for refusal is replaced with pre-trial appeal proceedings at the Industrial Property Board of Appeal. The Industrial Property Board of Appeal will also act as the first point of mandatory out-of-court action against the proprietor of a trade mark for the exclusive right of the proprietor of the trade mark.
In addition to this, other noteworthy changes have been introduced. The following aims to give a brief overview.
Non-graphical representation of trade marks
The newly amended Estonian Trade Marks Act removes the requirement for a graphic representation of a trade mark, i.e. the condition that a trade mark to be registered must be represented by letters, shapes or lines.
Under the new regulation, trade marks can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. This allows you to register trade marks in a different format than before, such as audio or video files.
Absolute grounds for refusal are specified
In addition to existing grounds, it has been now specified that legal protection will not be granted to the following signs:
- signs with high symbolic value, such as religious or historic symbols;
- signs depicting geographical indications and designations of origin;
- signs depicting traditional terms for wine and traditional specialties guaranteed;
- signs which consist of plant variety denominations.
Guarantee mark becomes certification mark
Guarantee mark is replaced with certification mark while existing marks remain valid. The applicable law at the time of filing is applied to existing guarantee marks. The certification mark may still refer to the geographical origin of the goods or services. This will not however entitle the proprietor to prohibit a third party from using the mark in accordance with honest practices in the course of trade.
Business name defence dismissed?
Businesses can no longer rely on the defence that they are using their own name or address as this is reserved for only natural persons in the new Trade Marks Act. The mere adoption of a business name may not be regarded as an infringement itself. Businesses can however no longer use a third party’s trade mark in the course of trade if they use the sign as their business name or part thereof in relation to identical or similar goods or services.
Interested parties can no longer contest an applicant’s right on the basis of absolute grounds
Interested parties can now contest an applicant’s right to a trade mark at the Board of Appeal only on the basis of relative grounds for refusal and not on the basis of absolute grounds. This is replaced by observation by third parties: any person may submit to the Patent Office written observations to draw attention to the existence of any absolute grounds precluding a trade mark’s legal protection.
An applicant’s right to file an appeal against a decision of the Patent Office on the basis of both absolute and relative grounds for refusals remains.
The right to prevent infringing goods in transit is specified
The owner of a trade mark is able to prevent third parties from bringing infringing goods into Estonia even when the goods are not intended for the European Union market. This applies if the goods originate from countries outside the European Economic Area and are marked with a sign identical to or substantially indistinguishable from the protected trade mark. This also extends to the packaging of the goods.
No more state fee for recording the trade mark registration
The new law no longer requires the payment of a state fee for the registration of a trade mark. Meaning that the earlier two step system of paying state fees (when filing the application and when recording the registration) has been replaced with a single state fee system.