Use the Lexology Navigator tool to compare the answers in this article with those from other jurisdictions.

Filing and registration

Filing procedure

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?

Yes.

Is electronic filing available?

Yes.

What are the application fees?

Official fees are as follows:

  • first class – €145; and
  • each additional class – €45.

Priority

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.

Searches

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.

Examination

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.

Registration

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.

Opposition

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.

Click here to view the full article.