New Board of Appeal rules implemented

Following on the heels of the implementation of the new Trademarks Act in Estonia, new Rules of the Board of Appeal of Industrial Property have also come into effect. The Board of Appeal is an independent extra-judicial body that hears appeals from decisions of the Patent Office and also conducts opposition proceedings. It falls under the remit of the Ministry of Economic Affairs and Communication. The board consists of at least eight members, each of whom must (i) have a higher academic education (half of the members must have a higher academic legal education), and (ii) be an expert in the industrial property field.

The rules, applicable since May 1 2004, include the following:

• The working language of the board is Estonian and all documents not in Estonian are to be accompanied by Estonian translations.
  
  
• Appeals from the Patent Office or oppositions must be filed with the board in writing. They can be filed in person, or by mail, fax or email.
  
  
• The head of the Board of Appeal must examine whether the appeal or opposition is admissible within 15 days. If so, the board can start the proceedings and inform the parties involved (the notice will be published on the board's website).
  
  
• Once the relevant parties have been notified, the head of the Board of Appeal will appoint within five days a qualified member of the board (examiner) to carry out a preliminary examination. The examiner will give a written summary of the factual and legal circumstances of the appeal or opposition to the head of the Board of Appeal within three months of the start of the proceedings. During this phase of the proceedings, the head of the board will make all the necessary decisions personally. Copies of these decisions will be forwarded to all parties involved.
  
  
• The party responding to an opposition or any interested parties in an appeal can submit their written positions within three months of the start of the proceedings. These submissions are forwarded to the opponent or appellant, who must submit any written response within three months.
  
  
• The examiner may start the final proceedings when he or she has received the written submissions of the parties and once the one-month deadline for submitting their final positions has expired.
  
  
• Any party involved in an appeal or opposition has the right to request that the hearing takes place orally.
  
  
• The final proceedings will be heard by three members of the Board of Appeal, one of whom is the examiner. If there are no oral hearings, the board must make a decision no earlier than 15 days and no later than 30 days from the start of the final proceedings. Oral hearings will usually take place no earlier than 15 days and no later than 30 days from the date of the determination of the time and place of the hearings. There are provisions stating that the parties can speed up or delay the oral hearings, allowing them to be held no earlier than 10 days but no later than 45 days from the date of determination.
  
  
• The board will make its decision in private by a majority of votes. Abstention is not allowed. The decision will be made in writing and must be signed by the members of the board who examined the appeal or opposition. The decision will be announced to the parties immediately and the full text will also be published on the Board of Appeal's website within 15 days.
  
  
• Copies of the decision will be forwarded to the parties within 15 days of the date of the announcement of the decision.
  
  
• Appeals of the board's decisions on procedural grounds may be filed with the Administrative Court of Tallinn, while appeals relating to the registrability of a trademark must be filed with the Tallinn City Court within three months of the date of the publication of the decision.

It is worth noting that cancellation actions against registered trademarks after the opposition period has lapsed should no longer be filed with the Board of Appeal but directly with the Tallinn City Court.

On a general level, the new rules also apply to the examination of appeals and oppositions filed with the Board of Appeal before May 1 2004.

Urmas Kernu, AAA Legal Services, Tallinn