Potential conflict between Community and national marks resolved


The Estonian Parliament has accepted the Patent Office's proposal to amend the Trademarks Act, which will come into force on May 1 2004 - the date of Estonia's accession to the European Union.

The new Trademarks Act will, among other things, regulate the relationship between national and Community trademarks. It provides that:

  • the owners of registered Estonian trademarks will not lose rights in their marks - provided that such rights have been acquired in good faith - as a result of accession to the European Union;

  • parties seeking to submit trademark applications in Estonia after May 1 2004 will have to take into account prior registered Community trademarks, as protection of these marks will automatically extend to the territory of Estonia; and

  • although the owners of nationally registered trademarks will not have the right to apply for cancellation of a Community trademark registered before May 1 2004, it may be possible for them to prohibit the use of that mark in Estonia.

However, there has been some uncertainty as to the status of national trademark registrations filed with the Patent Office before May 1 2004 but registered after that date. In such circumstances, it is not clear from the Trademarks Act whether Community trademarks with an earlier application or priority date should be considered to be earlier rights, allowing the owner of the Community trademark to contest the national registration.

To remedy this potential loophole, the Patent Office proposed an amendment to the Trademarks Act so as to ensure that national trademarks filed before May 1 2004 cannot be contested by the owner of a Community trademark, regardless of the Community trademark's application or priority date. Parliament has accepted the proposed amendment.

Sulev Sulsenberg, Käosaar & Co, Tallinn

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