What is the primary legislation governing trademarks in your jurisdiction?
Estonia’s primary legislation at national level is the Trademark Act, which works alongside international agreements and EU legislation.
Which international trademark agreements has your jurisdiction signed?
Estonia has signed the following international trademark agreements:
- the Paris Convention for the Protection of Industrial Property (the Stockholm Act 1967);
- the Agreement on Trade-Related Aspects of Intellectual Property Rights;
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
- the Trademark Law Treaty;
- the Singapore Treaty on the Law of Trademarks; and
- the Nairobi Treaty on the Protection of the Olympic Symbol.
Which government bodies regulate trademark law?
The Ministry of Justice regulates trademark law. The primary legislation is passed by Parliament.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Ownership of a trademark is determined on a first-to-file basis.
What legal protections are available to unregistered trademarks?
Protection for well-known trademarks is based on Article 6bis of the Paris Convention.
How are rights in unregistered marks established?
Regarding unregistered marks, legal protection is granted only to well-known trademarks within the meaning of Article 6bis of the Paris Convention.
Article 7 of the Trademark Act regulates the matter:
(1) A court shall recognise a trademark as being well known at the request of the proprietor of the trademark. A trademark shall be recognised as being well known only in connection with an action or appeal concerning the legal protection of the trademark.
(2) The Patent Office shall recognise a trademark as being well known only in connection with the registration procedure of the trademark or other trademarks. The Industrial Property Board of Appeal shall consider a trademark as being well known only in connection with the adjudication of an appeal against a decision of the Patent Office or a revocation application concerning the legal protection of the trademark.
(3) The following is taken into consideration while recognising a trademark as being well known:
1) the degree of knowledge of the trademark in Estonia in the sector of actual and potential consumers of goods analogous to the goods or services to which the trademark applies, the sector of persons involved in channels of distribution of such goods or services or in business circles dealing with such goods or services; 2) the duration and extent of the use and promotion of the mark and geographical area of the use of the mark; 3) the registration, use and knowledge of the mark in other countries; 4) the value associated with the mark.
(4) It is sufficient for recognising a trademark as being well known if the trademark is known to the majority of persons in at least one of the sectors specified in clause (3) 1) of this section.
(5) The recognition of a trademark as being well known shall not have any legal effect in later disputes.
Are any special rights and protections afforded to owners of well-known and famous marks?
There are generally no special rights and protections afforded to owners of well-known and famous marks, but owners of such marks may challenge any third-party rights or signs based on the well-known status or reputation (ie, showing that the use of a later mark or sign would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trademarks). This is independent of whether the later mark or sign designates identical or similar goods or services or different ones.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign registrations may be considered in establishing the well-known status of a trademark in Estonia, as well as in bad-faith trademark filings or third-party use.
What legal rights and protections are accorded to registered trademarks?
Article 14 of the Trademark Act establishes the exclusive rights of trademark owners:
(1) The proprietor of a trademark has the right to prohibit third parties from using in the course of trade:
1) any sign which is identical with the trademark which is granted legal protection in relation to goods or services which are identical with those for which the trademark is protected; 2) any sign which is identical with or similar to the trademark which is granted legal protection in relation to goods or services which are identical with or similar to those for which the trademark is protected if there is the likelihood of confusion on the part of the consumers, including the likelihood of association between the sign and the trademark which is granted legal protection; 3) any sign which is identical with, or similar to a registered trademark or a trademark which is known to the majority of the Estonian population and which is granted legal protection, where such sign is used to designate goods or services which are not similar to those for which the trademark is registered, if use of that sign might take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trademark.
(2) The following acts, inter alia, are prohibited based on the provisions of subsection (1) of this section:
1) affixing the sign to goods or to the packaging thereof; 2) offering goods for sale, distributing or storing them for the purposes of sale under the sign; 3) offering or supplying services under the sign; 4) importing or exporting the goods under the sign; 5) using the sign on business papers, in advertising or instruction manuals for the goods.
(3) The use of a trademark on the Internet is considered to be use of the trademark in Estonia only if such use has commercial consequence in Estonia. The following, inter alia, shall be taken into account while establishing commercial consequence:
1) business activity in Estonia of the person who uses a trademark on the Internet, such as actual business relations or relations motivated by business, the existence of customer services and non-Internet activity in Estonia; 2) the intention of the person who uses the trademark on the Internet to offer goods or services to persons in Estonia via the Internet, taking into consideration the transportation of goods, the currency and information, language and Internet links relating to communication with the provider of goods or services; 3) a condition indicated on the Internet stating that goods or services shall not be offered to persons in Estonia, and adherence to such condition; 4) taking unfair advantage of, or being detrimental to the distinctive character or repute of a trademark belonging to another person.
(4) Upon the publication of a registered trademark in a reference book, manual, textbook, professional journal or other publication, including electronic publications, the author and publisher shall ensure that the trademark has the registered trademark symbol next to it if the proprietor of the trademark so requests. If the publication is already published, the proprietor of a trademark may request the use of the registered trademark symbol in the next publication.
Who may register trademarks?
Any person may register a trademark.
What marks are registrable (including any non-traditional marks)?
According to Article 6(1) of the Trademark Act, trademarks are registrable if they are capable of graphical representation. Although this includes some non-traditional marks, according to Trademark Office practice, registrations for non-traditional marks are limited (eg, official citations raised during the examination).
Can a mark acquire distinctiveness through use?
Yes, a mark can acquire distinctiveness through use if such use is shown by the filing date.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
A mark can be refused registration on both absolute and relative grounds under Articles 9 and 10 of the Trademark Act:
§ 9. Absolute circumstances which preclude legal protection
(1) Legal protection is not granted to the following signs:
1) signs which do not conform to the provisions of § 6 of this Act; 2) signs which are devoid of any distinctive character, including single letters in non-stylised form, single numbers in non-stylised form and single colours; 3) signs which consist exclusively of signs or indications which designate the kind, quality, quantity, intended purpose, value or 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 describe the goods or services in another manner, or which consist of the above-mentioned signs or indications which are not considerably altered; 4) signs which consist exclusively of signs or indications which have become customary in current language or in bona fide business practices; 5) signs which consist 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) signs which are of such a nature as to mislead the consumer as to the kind, quality, quantity, intended purpose, value or 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; 7) signs which are contrary to public order or accepted principles of morality; 8) signs 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 competent authorities or officials give written consent for the registration; 9) signs which include a flag, armorial bearings or another symbol other than those covered by Article 6ter of the Paris Convention for the Protection of Industrial Property the registration of which is contrary to public interest, unless the competent authorities or officials give written consent for the registration; 10) signs the application for the registration of which was filed in bad faith by the person applying for registration (hereinafter applicant) or the use of which has commenced in bad faith; 11) signs which contain a registered geographical indication or are confusingly similar thereto if it may result in unlawful use of the geographical indication pursuant to the provisions of the Geographical Indications Protection Act; 12) signs the use of which is prohibited pursuant to other Acts or an international agreement.
(2) If, following the use of a trademark, it has acquired a distinctive character by the filing date of an application and in the case of well-known trademarks, the provisions of clauses (1) 2)–4) of this section do not apply.
(3) Upon the incorporation of a sign specified in clauses (1) 2), 3), 4) and 5) of this section within a trademark, such sign constitutes an element of the trademark which is not subject to protection.
§ 10. Relative circumstances which preclude legal protection
(1) Legal protection is not granted to the following trademarks:
1) trademarks which are identical with an earlier trademark which has been granted legal protection with regard to identical goods or services designated by the trademark; 2) trademarks which are identical or similar to an earlier trademark which has been granted legal protection with regard to identical goods or services or goods or services of a similar kind designated by the trademark, if there exists a likelihood of confusion on the part of the consumers, which includes association of the trademark with the earlier trademark; 3) trademarks which are identical or similar to an earlier registered trademark or a trademark which has been filed for registration or to a trademark which is known to the majority of the Estonian population and which has been granted legal protection for different kinds of goods or services, if the use of the later trademark might take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark which has been acquired by the filing date of the application or by the date of priority of the later trademark; 4) trademarks which are identical or confusingly similar to a business name entered in the commercial register prior to the filing date of the application, the date of international registration or the date of priority, and the area of activity of the respective undertaking is in the same field as the goods and services which the trademark is used to or is going to be used to designate; 5) trademarks which are identical or confusingly similar to the name of a proprietary medicinal product registered in Estonia prior to the filing date of the application, the date of international registration or the date of priority if the goods which the trademark is used to or is going to be used to designate belong to the field of medicine; 6) trademarks the use of which is detrimental to an earlier right to a name, a right of personal portrayal, a right to the name of an immovable, the name or image of an architectural site, an object of copyright or industrial property right or another earlier right; 7) trademarks which are identical or confusingly similar to a trademark which is used in another country and was used in that country also on the date on which the application was filed, if the application is filed in bad faith.
(2) Circumstances specified in clauses (1) 2)–6) of this section which preclude legal protection are not taken into account if the proprietor of the earlier trademark or another earlier right consents to the grant of legal protection in writing.
Are collective and certification marks registrable? If so, under what conditions?
The Trademark Act provides legal protection for collective and guarantee trademarks (Chapter 6 of the act, Articles 61 to 65). Further requirements are applied for these types of mark, including an application for the registration of a collective mark or guarantee mark, which must include the regulations of the mark. A collective mark or guarantee mark is registered if there are no circumstances which preclude the legal protection and:
- the regulations are not contrary to public order or accepted principles of morality;
- in the case of a guarantee mark, the regulations include a list of the required common features of goods and services designated with the guarantee mark which can be used as the basis for quality control; and
- in the case of a collective mark, the regulations have a list of members of the association whose goods and services are designated with the collective mark attached thereto and the regulations include the conditions of and procedure for becoming a member of the association.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
A power of attorney is required, which must be an original document. There are no further requirements (eg, notarisation or legalisation).
What information and documentation must be submitted in a trademark registration application?
The following must be submitted in a trademark registration application:
- a power of attorney (original and signed);
- representation of the mark (in case of electronic filing, in .jpg format);
- the applicant’s name and address;
- a list of goods and services (under the Nice Classification);
- certified priority documents if priority is claimed;
- the official fee; and
- for a collective or guarantee mark, the mark’s regulations (original or notarised copy).
There are basic requirements to establish the application date.
The following information should also be considered:
- Multiple-class applications are allowed;
- Power of attorney and priority requests may be added later, within two months of filing;
- Certified priority documents may be added later, within three months of filing;
- Under existing legislation, a trademark application is examined on both absolute and relative grounds of refusal;
- Before the examination, the correctness of the list of goods and services is checked in case of any questions and the trademark office’s citations are raised; and
- The time from filing until registration is usually between 12 and 14 months.
What rules govern the representation of the mark in the application?
The mark must be capable of graphical representation.
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
Official fees are as follows:
- first class – €145; and
- each additional class – €45.
How are priority rights claimed?
Priority rights are claimed either in the application or within two months of filing date of the application. Certified priority documents should be submitted within three months of the filing date.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Trademark searches are available (not by the Trademark Office), although there is no obligation to carry out searches before filing. It is up to the applicant whether to proceed with prior trademark searches.
What factors does the authority consider in its examination of the application?
The absolute and relative grounds of refusals.
Does the authority check for relative grounds for refusal (eg, through searches)?
Yes, during the examination the Patent Office checks the following prior rights:
- the trademarks effective in Estonia (eg, national trademarks, international trademarks designating the European Union and Estonia and EU trademarks);
- the company names registered in the Commercial Register; and
- the drug names entered into the Drug Register, if a trademark covers goods and services in the medical field.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Yes, the applicant can rectify the application if it makes sense and helps to do so to overcome the raised citations. In most cases, the Trademark Office cites any prior rights and raises citations based on absolute grounds (based mainly on non-distinctness and descriptiveness). The response to the office action should be filed within two months of the notification. The deadline may be extended by two-month terms up to 13 months (the official fee is €32 per each extension). The official citations raised based on the relative grounds can usually be overcome by filing a letter of consent, except in cases of identity (ie, a later identical trademark for identical goods and services in the name of another person), where Estonian legislation does not allow a letter of consent.
Can rejected applications be appealed? If so, what procedures apply?
Yes, the decisions of the Patent Office can be further appealed to the Industrial Property Board of Appeal within two months of the decision date. The board of appeal decisions may be further challenged in the civil court.
When does a trademark registration formally come into effect?
Trademark registration comes into effect from the registration date, with retroactive effect from the filing date.
What is the term of protection and how can a registration be renewed?
The term of protection is 10 years from the registration date. Renewal is possible within one year before the expiry date, and six months after the expiry date when paying an additional official fee.
What registration fees apply?
The official fee is €195, independent of the number of classes.
What is the usual timeframe from filing to registration?
The timeframe from filing to registration is usually around 12 to 14 months.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
A pre-registration opposition system exists in Estonia. Interested third parties can oppose a trademark application based on absolute or relative grounds of refusal. Opposition can be filed within two months of publication of the trademark application in the official trademark gazette Kaubamärgileht. The oppositions must be well substantiated and no extension is possible.
What is the usual timeframe for opposition proceedings?
The usual timeframe for opposition proceedings is around one year to 18 months.
Are opposition decisions subject to appeal? If so, what procedures apply?
Yes, the next step is the first-instance civil court. The appeal term is three months from publication of the Industrial Property Board of Appeal decision.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
Yes. A trademark should be put to genuine use during the first five years following the registration date. In case of non-use, any interested third parties can challenge the trademark registration by filing a court action with the civil court. The action cannot be filed if the trademark has been put to genuine use after the named five-year period, except if such use started within the three months before the action was filed and if the trademark owner became aware of the intention of filing the action.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
A trademark can be revoked on the following grounds:
- loss of distinctiveness;
- becoming misleading; and
It can be invalidated if:
- it constitutes an incorrect registration; and
- it was registered in the representative’s name without the trademark owner’s consent.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any interested third parties may file a request for revocation by filing a court action with the civil court.
What are the evidentiary and procedural requirements for revocation proceedings?
The revocation action should be well founded and submitted with all evidentiary materials, except the revocation action based on non-use, where the preliminary evidence must be filed by the plaintiff and the defendant must prove genuine use of its trademark.
The following documents must accompany the revocation action:
- a power of attorney; and
- a document proving the legal capacity of the plaintiff (eg, a certificate of incorporation or an extract from the Commercial Register).
The court may also request a document proving the right of representation of the person signing the power of attorney.
The court may request the named accompanying documents to be notarised and legalised or apostilled. As a first step, the documents may be filed in a simple form. If such formal requirements are raised by the court, the request to extend the term to meet such formalities may be filed (no official fees).
What is the appeal procedure for cancellations or revocations?
For cancellations and revocations an appeal should be filed with the second-instance court, the Tallinn District Court (the third and last-instance court is the Supreme Court).
What is the procedure for surrendering a trademark registration?
The trademark owner may voluntarily surrender a trademark with regard to all or some of the relevant goods or services. The surrender enters into force on the date of entry of the corresponding amendment in the register. A trademark cannot be surrendered if the trademark is encumbered with a pledge or included in a bankruptcy estate or licence that has been issued, or a prohibition on disposal has been made in relation to the trademark.
Which courts are empowered to hear trademark disputes?
The civil courts are empowered to hear trademark disputes, mainly the civil court in jurisdiction of the Patent Office as the first-instance court.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Civil and criminal actions can be taken against trademark infringement. The general requirements for these types of action apply. Civil proceedings are usually more effective, as Estonian police forces are ineffective in dealing with IP infringement, while criminal proceedings may provide the instruments for taking actions which are limited during the civil proceedings.
Administrative proceedings are handled by Customs.
Who can file a trademark infringement action?
The trademark owner and trademark licensee (with the consent of the trademark owner) can file a trademark infringement action. Consent is not required if the trademark owner is informed of the infringement and fails to file an action in reasonable time.
What is the statute of limitations for filing infringement actions?
Such civil court action may generally be brought within five years of becoming aware of the use of a later infringing sign (except in bad faith, where no time limits exist) (ie, the principle of acquiescence, Article 16(2) of the Trademark Act).
What is the usual timeframe for infringement actions?
The usual timeframe is five years.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
Provisional and protective measures may be applied.
Provisional measures may be applied during the pre-trial procedure of taking evidence (directed against the defendant or any other relevant person) or as a result of arrangements for applying injunctions (directed against the defendant). Provisional measures may also be applied in cases where IP rights have been infringed or where danger of infringement exists.
In general, the provisional measures are as follows:
- measures for preserving evidence or calculation of damages collected as a result of inspections, hearing witnesses, expert assessments and other procedural acts, including:
- inspection of samples and recording of a detailed description of samples with or without storing the samples; and
- seizure of the infringing goods, raw materials, equipment and related documents; and
- arrangements for applying injunctions, including:
- immediate termination of infringements;
- right of information (eg, the issuance of banking, financial or business documentation);
- recall of infringing goods placed on the market; and
- seizure of property, including seizure of goods suspected of infringing IP rights and the imposition of the obligation to hand over such goods to prevent them being placed on the market or distributed.
In addition to these provisional measures, protective measures include reasonable measures with regard to infringing goods and the materials principally used in the manufacture or creation of those goods (including destruction, recall and definitive removal from the channels of commerce) and can be applied at the expense of the infringer, unless deemed unreasonable. The destruction of infringing goods and objects may be requested if it is not possible or expedient to eliminate the unlawful nature of the goods or objects in another manner. Instead of the application of named measures, the infringer may request the court to pay financial compensation, if the infringer has not acted intentionally or carelessly. The application of the measures could cause the infringer disproportionate damage and financial compensation may be considered sufficient.
Further measures include:
- a request to restrain the infringer and the person whose services a third party used for the purpose of violating trademark rights; and
- the publication of the court decision at the expense of the defendant, in a manner determined by the court.
In case of filing a preliminary injunction request (ie, before the main court action), the court should set the term within which the main court action must be filed. The named deadline must not be more than one month.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
In general, a trademark owner may file an action against a person infringing its exclusive rights, including a licensee that has violated the terms of the licence agreement, for:
- termination of the offence; and
- compensation for patrimonial damage caused intentionally or due to negligence, including loss of profit and moral damage.
Punitive damages are not allowed.
What customs enforcement measures are available to halt the import or export of infringing goods?
To halt the import and export of infringing goods, a customs application for action (either national or EU-wide) can be filed. Customs also takes measures ex officio in cases of suspicion, while informing the trademark owner or its representative about the suspended goods.
What defences are available to infringers?
Infringers may consider counter-attacking the trademark right (eg, based on non-use or other grounds of revocation or invalidity).
What is the appeal procedure for infringement decisions?
An appeal can be filed with the second-instance court (ie, the district courts).
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
A trademark application or registration may be assigned in relation to all or some of the relevant goods or services. The request may be filed by either the assignor or assignee. In cases filed by an assignee, the request must be accompanied by the document (original or notarised) certifying the assignment, which is signed by the assignor. If filed by the representative, the original, signed power of attorney must also be submitted.
An assignment should be recorded to have legal effect. An assignment enters into force on the date of entry in the register.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
A licensee may transfer the rights acquired from the trademark owner only with the consent of the trademark owner. The transfer of a trademark or a licence issued at a later point does not affect the validity of an earlier issued licence. A licence expires with the expiry of the registration term.
The licence may be recorded in the register. It is not compulsory to record a licence (whether exclusive or non-exclusive), and both recorded and unrecorded licensees are treated similarly.
The following documents are necessary for the recordal of a licence:
- a power of attorney executed by the licensor or licensee (original and signed) if a recordal request has been filed by a representative; and
- a licence agreement (original or notarised copy) – a short-form document signed by both parties containing:
- trademark registration numbers;
- licensor and licensee data (eg, name and address);
- the nature of the licence (ie, non-exclusive, exclusive or sub-licence);
- territorial scope and scope with regard to goods and services; and
- the term of the licence.
Prima facie, no risks may be foreseen for non-recordal, but some aspects may be considered. Recordal is more beneficial for a licensee, as it would be easier to prove the acquired rights in cases where the licensee is willing to enforce the rights on its own behalf, as the licence agreement is entered into the local official register and there would be no need to provide third parties or the court with a copy or extract of the licence agreement. Should the trademark owner be willing to abandon the trademark registration, the trademark cannot be abandoned if it is subject to a valid registered licence.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
General clauses are typically included in a licensing agreement. There are no specific requirements established by the law, except clauses regarding the cancellation of an agreement. The latter is regulated for agreements entered into for an unspecified term, according to which the party willing to cancel the agreement must give at least one year’s notice to the other party.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
Yes, for trademark registrations. Recordal is obligatory.
The required documents for recordal include:
- a power of attorney executed by the trademark owner or pledgee (original and signed) if a recordal request is filed by a representative; and
- a pledge agreement (notarised), containing at least:
- the trademark registration number;
- trademark owner and pledgee data (eg, name and address);
- monetary amount of pledge (ie, the sum of pledge);
- value of claim secured by the pledge; and
- term of execution.
The official notification confirming the recordal is issued within two weeks of filing the recordal application.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
In principle, yes (eg, through copyright, registered designs and unfair competition). Copyright protection does not require registration.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
In general, the trademark owner can take action against the unlawful use of its rights online and in domain names having an effect or commercial consequence in Estonia.