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Enforcement

Jurisdiction

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.

Actions

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.

Injunctions

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.

Remedies

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.

Customs enforcement

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.

Defence

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).

Appeal

What is the appeal procedure for infringement decisions?

An appeal can be filed with the second-instance court (ie, the district courts).

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