Significant amendments to Estonian trademark legislation enter into force

Estonia
  • On 1 April 2019 the amendments to Estonian trademark law and to the related secondary legislation entered into force
  • The amendments have implemented the EU Trademark Directive and simplified the trademark registration procedure
  • The Industrial Property Board of Appeal has been brought under the jurisdiction of the Estonian Patent and Trademark Office
     

On 1 April 2019 amendments to Estonian trademark law and to the related secondary legislation entered into force, which implemented the EU Trademark Directive (2015/2436), introduced important changes and simplified the trademark registration procedure in Estonia.

Under the amendments, trademarks are valid for 10 years from the application date, rather than 10 years from the registration date. However, this change does not affect the period of validity of trademarks filed before 1 April 2019.

The Industrial Property Board of Appeal, previously an independent body under the jurisdiction of Ministry of Justice, has been brought under the jurisdiction of the Estonian Patent and Trademark Office (PTO). The new Board of Appeal will start working on 9 September 2019. Until then, the Board of Appeal in place will decide all IP-related matters.

From 1 April 2019 the PTO no longer examines trademarks based on relative grounds. This also applies to pending trademarks filed before 1 April 2019. Examination on relative grounds has been replaced by a mandatory pre-trial opposition procedure before the PTO’s Board of Appeal, which examines and decides on revocation and cancellation actions. Before the amendments, a trademark could be invalidated or cancelled by filing a claim at the civil court only. Board of Appeal decisions may further be appealed to the Harju Country Court (civil court) in the capital Tallinn. This court has been given exclusive jurisdiction as the only first-instance court to decide on IP disputes and is the only court in Estonia that has specialised judges for IP matters.

Similar to the previous situation, an opposition can be filed within two months of the date of publication of a trademark application. However, under the previous law, oppositions were possible based on both absolute and relative grounds. They are now possible based on relative grounds only.

Oppositions on absolute grounds have been replaced by third-party observations. These can also be filed within two months of the date of publication of a trademark registration notice. The PTO is required to decide on third-party observations within one month. Should any other oppositions be filed against the same mark, the oppositions proceedings are suspended until the PTO’s decision is passed with regard to third-party observations.

Non-use defence has been introduced in opposition proceedings and revocation applications and infringement actions. It is also applicable to the pending proceedings before the Board of Appeal or before the court that commenced before 1 April 2019.

Other significant procedural changes are as follows:

  • powers of attorney are no longer required for representation before the Estonian PTO (applicable to any matters);
  • original and certified documents are no longer required – recordation requests may be filed by submitting the copies of relevant documents (applicable to trademarks and industrial designs only);
  • the official fee of €45 for trademark registration has been abolished; and
  • registration certificates are issued in electronic form (applicable to trademarks and industrial designs only).

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