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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.
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