Estonia

Estonian IP practice is characterised by gradual changes rather than dramatic shifts: the rate of national filings continues to decline, partly due to the growing popularity of EU trademarks, which places additional strains on local practitioners. Currently, the country’s IP systems are also being tweaked in accordance with the EU Trademark Directive. However, there is renewed stability in Estonia’s legal market, following a series of reconfigurations that followed the break up of Tark Grunte Sutkiene in 2016. One notable exception to this is the recent acquisition by PricewaterhouseCooper of Glimstedt’s leading IP professionals. The world-famous professional services outfit enters a market otherwise dominated by specialist patent bureaus and locally rooted general service law practices.

Firms: enforcement and litigation

H
AAA Legal Services
COBALT Legal
Derling
Ellex Raidla
INTELS Estonia
Patendibüroo TURVAJA OÜ
SORAINEN

Firms: prosecution and strategy

H
AAA Legal Services
Advokaadibüroo PricewaterhouseCoopers Legal OÜ
Ellex Raidla
INTELS Estonia
LASVET Patendibüroo OÜ
Patendibüroo KÄOSAAR
Patendibüroo TURVAJA OÜ
SORAINEN
AAA Legal Services
Dynamic boutique AAA Legal Services cuts an impressive figure on the Estonian trademark market, as elsewhere in the Baltic region. It boasts a slick prosecution offering, characterised by efficiency and sharp strategic insight; but surprisingly for an IP agency, the set-up is most celebrated for its masterful handling of thorny disputes and has distinguished itself in negotiations, as well as administrative and judicial proceedings. Lynchpin Almar Sehver continues to impress fellow professionals: “He excels in complex and difficult cases, because of his specialist focus and granular knowledge of the law. He is formidable in litigation, but is also effective out of court. Almar is a good opponent: he is aggressive but professional, very thorough and a pleasure to work with.” Sehver lately enjoyed a landmark victory in Estonia’s Supreme Court regarding the jurisdiction of the country’s courts over trademark infringement claims. Another recent highlight was his successful transfer of a crucial domain name to fashion giant Lacoste. He has also been coordinating multifaceted litigation in Finland on behalf of Aldar Eesti in its spat with Alko Inc. Entrusted with equally crucial contentious matters, his colleague Mikas Miniotas draws similarly effusive praise: “He is a go-to trademark lawyer, has in-depth know-how and thinks creatively about how to achieve a client’s overall objectives. Mikas is up to speed with the fast-developing soft-IP questions that affect brand owners internationally.”
COBALT Legal
One of the country’s largest general service firms, COBALT makes light work of demanding instructions across the trademark lifecycle. Bases in Lithuania, Belarus and Latvia extend its reach throughout the region, while its affiliation with LexMundi ensures smooth cooperation with associated firms around the world. COBALT’s 2016 merger with Attorneys at Law Borenius brought a squad of crack IP specialists into its ranks. One such practitioner is Viive Kaur, a thought leader who has influenced the development of the country’s trademark laws. She is “a superb lawyer who can handle any trademark matter with ease”. Flanking her is Liina Jents, a prescient counsellor especially recommended for her level-headed handling of transactions; her specialist areas are advertising, pharmaceuticals regulations and online matters.
Derling
A compelling choice in contentious circumstances, Derling is famed for its prowess in litigation and anti-counterfeiting briefs; its business savvy team is also a safe bet for commercial agreements. Despite the firm’s youth – it was founded in 2016 by former partners of Tark Grunte Sutkiene – its trademark team is vastly experienced: for instance, department head Toomas Taube has 20 years’ practice under his belt, and has resolved a plethora of IP spats for major brand owners. A “seasoned litigator with a nuanced grasp of the law”, he is also assiduous in the fight against fakes; he is currently tackling infringers and imitators for Hewlett Packard and Sony, while other recent work includes securing trademark-rich licensing deals for Nortal. Taube maintains many longstanding client relationships too – which is unsurprising given his firm’s sky-high customer satisfaction levels, as shown by recent TNS SIFO Prospera surveys.
Ellex Raidla
The only law firm in Estonia that employs a qualified trademark attorney, Ellex Raidla offers a first-rate holistic brand protection service; long renowned for delivering “outstanding results in litigation and enforcement”, it has recently seen a significant upturn in its non-contentious instructions, especially since taking over Patent Bureau Roosilla’s portfolio management functions. “Able to handle the weightiest and most complex matters”, the well-resourced general service outfit is also the only firm in the country with an IP-focused managing partner – Ants Nõmper, “a leading trademark specialist who is extremely articulate and particularly good in dispute resolution”. He also enjoys the distinction of having acted in the first IP case before the Estonian Supreme Court. Another mainstay is Mari Must, a member of the Estonian Bar and a registered trademark agent, who is both a deft prosecutor and a dexterous litigator. Her recent highlights include representing Apple in a dispute with Swatch and stewarding a significant portfolio for one of the country’s top publishers.
INTELS Estonia
INTELS has all trademark angles covered: its polished prosecution practice is matched by stellar enforcement and monetisation services. Offices in Russia, Kazakhstan, Uzbekistan, Moldova, Lithuania, Latvia and Ukraine support the team in Tartu to assist patrons with interests across Eastern Europe and Central Asia; the set also collaborates seamlessly with major law firms in Western Europe and North America. All-round trademark maven Riina Pärn is a hit with clients and fellow professionals alike: “I wish all of my foreign agents were as good as Riina”, enthused one interviewee. “Proactive, prompt and diligent”, she “provides crystal clear opinions and has a talent for finding solutions that are both time and cost-efficient”. Her whole team is “creative, deeply knowledgeable and can be trusted with the most challenging mandates without hesitation”.
Patendibüroo TURVAJA OÜ
TURVAJA has been tried and tested before the national and EU trademark offices. Offering an efficient and reliable registration service, the immensely experienced agency – which was the first privately owned IP firm in the former Soviet Union – also operates nimbly in administrative disputes. From its crack team of capable attorneys, Urmas Kauler stands out as a crucial contact; the forward-thinking adviser knows how to build a watertight portfolio – and how to defend it.
SORAINEN
Combining expansive business law expertise with a fine-tuned understanding of intangible assets, SORAINEN is in high demand for its value-adding strategic and transactional counsel, as well as its compelling representation in hard-fought trademark battles; the firm also won TNS SIFO Prospera’s 2016 Best legal Competence Award for Estonian firms in the IP field. Principal of the trademark practice and contracts team Kaupo Lepasepp dispenses shrewd advice on brand-rich transfers and licensing deals; he also knows how to shape prosecution strategy for optimal commercial outcomes. Of late Lepasepp advised Yliopiston Apteekki – Finland’s largest pharmacy chain – on a number of franchising agreements and then successfully defended it in Estonian Competition Authority proceedings. His colleague Carri Ginter provides energetic leadership to the dispute resolution practice, pursuing infringers with verve; “he is expert in all IP matters and is also an authority on EU law”. He is flanked in contentious matters by Ants Mailend, who has made a great impression since his arrival from Law Firm Varul in 2016; he has recently been kept busy acting for Sandoz in a major dispute with Bayer. The multitalented Olivia Kranich plays a major role in the team, bringing an assured hand to portfolio management instructions and acting as a potent force in oppositions; she is trusted to manage the brand rights of Atria Eesti, one of the country’s largest food producers, and has recently been negotiating with an alleged infringer on its behalf.
Advokaadibüroo PricewaterhouseCoopers Legal OÜ
PwC Legal has made a splash in Estonian trademark circles with its recent acquisition of Glimstedt’s illustrious IP team. Now embedded in one of the world’s leading professional services firms, the ensemble – which has long been sought-after for transactions and dispute resolution – draws on impressive legal and commercial resources, dispersed throughout a truly global network. Helming the group is well-rounded business lawyer Priit Lätt, who is “extremely hardworking and a very accomplished litigator”.
LASVET Patendibüroo OÜ
“Flagship agency” LASVET serves up gilt-edged non-contentious soft-IP services: “its high-quality team has been in the market for many years and knows how to deal with any trademark scenario that arises.” Skilful professional Villu Pavelts is the cornerstone of the practice; he “has a broad perspective and keen strategic sense, but is very detail-orientated and a perfectionist”.
Patendibüroo KÄOSAAR
A time-served prosecution practice, KÄOSAAR has recently made huge strides in developing its transactional and litigation capabilities. This is partly due to the efforts of the “excellent” Indrek Eelmets, an “elite specialist litigator” and former pillar at law firm SORAINEN. “He performs well in court, but is also very skilled at negotiating settlements. Eelmets knows the law inside out, but is also business minded and understands the wider marketplace.” “Fine strategist” and trademark devotee Kalev Käosaar is another go-to professional; the worldly-wise practitioner is called on to dispatch challenging instructions on both sides of the contentious/non-contentious schism. Acquiring iron-clad brand rights, Aivo Arula has cultivated an enviable knowledge of soft-IP registration over a 20-year career. Elder statesman of the firm Jüri Käosaar has also distilled profound wisdom from his long tenure. He continues to provide clear-sighted direction to the team’s activities.

Individuals: enforcement and litigation

Indrek Eelmets - Patendibüroo KÄOSAAR
Carri Ginter - SORAINEN
Viive Kaur - COBALT Legal
Priit Lätt - Advokaadibüroo PricewaterhouseCoopers Legal OÜ
Ants Mailend - SORAINEN
Ants Nõmper - Ellex Raidla
Almar Sehver - AAA Legal Services
Toomas Taube - Derling
Liina Jents - COBALT Legal
Kalev Käosaar - Patendibüroo KÄOSAAR
Urmas Kauler - Patendibüroo TURVAJA OÜ
Mikas Miniotas - AAA Legal Services
Mari Must - Ellex Raidla
Riina Pärn - INTELS Estonia

Individuals: prosecution and strategy

Aivo Arula - Patendibüroo KÄOSAAR
Indrek Eelmets - Patendibüroo KÄOSAAR
Jüri Käosaar - Patendibüroo KÄOSAAR
Kalev Käosaar - Patendibüroo KÄOSAAR
Urmas Kauler - Patendibüroo TURVAJA OÜ
Olivia Kranich - SORAINEN
Kaupo Lepasepp - SORAINEN
Mari Must - Ellex Raidla
Riina Pärn - INTELS Estonia
Villu Pavelts - LASVET Patendibüroo OÜ
Almar Sehver - AAA Legal Services
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Issue 73