Major Changes in Estonian Trademark Act

On April 1, 2019 important amendments to the Estonian Trademark Act come into force, and EU Directive 2015/2436 shall be transposed into Estonian law. The main impact of such changes on trademark owners and applicants shall be greater responsibility for attending to one's rights on one side, and more fluent procedures on the other. 
  • The trademark registration procedure at the Estonian Patent Office shall be similar to the procedure at the EU Intellectual Property Office EUIPO. The Patent Office no longer examines if an applied trademark is in conflict with another person's earlier rights, e.g. trademarks, business names (relative grounds of refusal of protection). Thus, the Patent Office shall not refuse registration of a trademark due to earlier Estonian or EU trademarks.
  • The Patent Office refuses to register a trademark only if the trademark in its nature isn't suitable to function as trademark, e.g. it is descriptive or non-distinctive, or has filed in bad faith. Thus, the Patent Office continues to perform examination in respect of the absolute grounds of refusal of protection.
  • Challenging trademark registrations due to earlier rights (trademarks, business names) has been left completely to the right holders as it has already been with the EU trademarks and the trademarks of many EU countries.  Deadline for oppositions: 2 months from the publication of the notice to grant of protection in the Bulletin of the Estonian Patent Office (as previously).
  • Proof of genuine use of the trademark that an opposition is based on can be requested by the applicant of the contested trademark. The opponent's claim is limited to the trademarks and goods  in respect of which it has provided sufficient proof of use.
  • Observations of third parties on the circumstances that preclude registration of a trademark (e.g. bad faith activity or non-distinctive character,  absolute grounds of refusal of protection ) may be submitted to the Patent Office within  2 months from the publication of the notice to grant of protection of the trademark in the Bulletin of the Estonian Patent Office. 
  • Contesting trademark rights (e.g. revocation) is now possible also in extra-judicial proceedings at the Industrial Property Board of Appeal (previously only in court).
  • New types of trademarks are explicitly allowed now, e.g. multimedia, sound, smell marks, etc.  A trademark needs not to be graphically represented.
  • Power of Attorney is no longer required, it is presumed that a patent attorney has the right of representation. However, in case of doubts, the Patent Office or the Board of Appeal will be entitled to request the patent attorney to submit a PoA within two months after the request. 
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Photos of Sven Začek at Ustervall web