Trade and Service Marks

– Trademarks Act, in force as of May 1, 2004. Amendments effected in 2004, 2005, 2006, 2007, 2009, 2012, 2019 and 2023.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), since February 5, 1994.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since August 24, 1994.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Geneva Act), since May 27, 1996.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since November 11, 1998 (Estonia is not a member of the Madrid Agreement).
– WTO’s TRIPS Agreement, since November 13, 1999.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 30, 2001.
– Trademark Law Treaty, since January 7, 2003.
– European Union Trade Mark Regulation.
– Singapore Treaty on the Law of Trademarks, since August 14, 2009.

Filing

Applicant: natural or legal person. 

Foreign applicant: can file an application himself, but in case of procedural questions (filing responses to the Patent Office’s notices regarding alleged grounds of refusal, etc.), must be represented by a local trademark attorney. 

Kinds of protection: literal, verbal, numerical, figurative and spatial signs as well as their combinations, sound marks, collective marks and certification marks.

Excluded from registration: signs which: (1) are devoid of any distinctiveness; (2) are comprised of descriptive indications (incl. descriptive indications that are not considerably altered); (3) are comprised of indications customary in business practice or common language; (4) are comprised of the shape resulting from the nature of the goods or shape necessary to obtain a technical result; (5) are deceptive of characteristics of goods/services; (6) are contrary to public policy or accepted principles of morality; (7) are to be refused under Article 6ter of the Paris Convention unless there is express consent of the competent authority or official(s); (8) contain another symbol not covered by said Article 6ter, but registration would still be contrary to public interest unless there is the aforementioned consent; (9) are filed in bad faith or started to be used in bad faith; (10) contain a geographical indication or are confusingly similar thereto if it may result in unlawful use of the said indication pursuant to the Geographical Indications Protection Act; (11) use is contrary to other Acts or international agreements.

International priority: according to the Paris Convention.

Classification: international (Nice Agreement).

Filing requirements for an application:
An application must include:
1. A request for the registration of a trademark, incl.:
(a) details of the applicant, (b) details of the representative (if there is one), (c) representation of the mark, (d) list of goods/services classified according to the Nice Agreement, (e) a list of colors in case of a colored mark, (f) statement if the mark is a 3D mark, (g) signature of applicant or representative thereof;
2. Power of attorney (in case of representative and only upon request);
3. Documents certifying priority (if it is claimed);
4. Evidence of payment of the State fee;
5. Certain additions in case of collective or guarantee marks.

Electronic filing: available.

For a change of name or address: no documents are required for recordal of change of name or address, however, the Patent Office has a right to request documents to prove the change (no formal requirements are set for said documents).

Examination

Formal examination: whether the application is in compliance with the formal requirements. The examination may be suspended upon request of the applicant for twelve months in total. Term of restarting of the examination will be determined by the Patent Office.

Contesting the decision of the examination: the complaint must be filed with the Board of Appeal within two months of decision date. The decision of the Board of Appeal may be contested in court.

Disclaimers: available.  

Letters of consent: can be accepted in order to overcome an objection based on an older registration if the marks are not identical and do not cover identical goods/services. The LoC can be simply signed.

Publication: after the decision of the examination. 

Opposition: has to be filed with the Board of Appeal within two months of the date of publication. The decision of the Board of Appeal may be contested in court.

Registration, Protection

Registration: the trademark will be recorded in the Estonian Trademark Register after it has passed formal examination and after publication no opposition is received or applicant has successfully defended it.

Delivery of document: the trademark certificate is issued in electronic format only.

Duration of registration: ten years from the date of filing. Note: for trademarks filed before April 1, 2019, the duration is ten years from the date of registration.

Renewals: for further ten years, renewable indefinitely. The renewal request shall be filed within the year before the due date (the date of expiry of current registration) upon payment of the renewal fee. 

Late renewal: possible within six months of the due date accompanied by payment of an extra fee.

Use: compulsory. Non-use during any uninterrupted five-year period of effective registration allows any interested party to require cancellation of the registration. Cancellation ex officio on the basis of non-use is excluded. 

Is considered as valid use of a trademark: (1) affixing the trademark to goods or to the packaging thereof; (2) offering goods for sale under the trademark, putting them on the market and stocking them for the purpose of sale; (3) offering and rendering services implied by the trademark; (4) exporting and importing goods marked with the trademark; (5) affixing the trademark to economic and business papers, advertising materials, and instructions for use of goods; (6) use on the Internet if such use has commercial consequence in Estonia; (7) use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. 

Nominal use: not accepted.

Marking: not compulsory, but can be used.

Modification of Protection after Granting

Prior user rights: not directly provided by law. A prior user of an unregistered trademark can, however, contest the registration of a younger trademark by another person, provided that (1) he is able to prove that the prior use has made his trademark well-known in Estonia; (2) he is able to prove that the owner of the registration has embezzled his trademark (filed the application in bad faith). 

License: recording of a license agreement in the Estonian Trademark Register is not compulsory, but is advised for legal clarity. 

Assignment: possible, both at the stage of application and after registration. 

Assignee: individual or legal entity. 

Scope of assignment: solely for all or some of the goods and services. The act of assignment is not juridically connected with the assignment of business activity. It is sufficient that the act of assignment is signed by the assignor only. Assignment of a registration must be recorded in the Register, otherwise it is invalid.

Cancellation of registration may be requested: (1) by the owner without bringing any explanations by way of lodging the respective request with the Patent Office; (2) by an interested party within five years of the date of recording the registration in the Register on grounds of non-conformity of the trademark with the criteria of registrability. If the contested trademark has been filed in bad faith, the term for filing the cancellation action will not be limited; (3) by any interested party in case of deletion of the owner from the Commercial Register and change of ownership has not been recorded within one year from the deletion; (4) by any interested party if the trademark has, as a result of acts or failure to act on the part of the owner of the trademark, become a customary sign in relation to the goods or services with regard to which it is registered; (5) by any interested party if the trademark has, as a result of use, become deceptive; (6) by any interested party due to the non-use during five consecutive years after the registration date. The cancellation action shall be filed with the Harju County Court.

Re-filing of identical trademarks: possible after the cancellation (the reasons for cancellation have no impact on re-filing) of the previous registration. It can be re-filed either by the previous owner or another applicant. 

Infringements: are handled by Estonian court. 

Liability of an infringer: civil or criminal. 

Civil liability: the demands of the owner of an infringed trademark may be: (1) to stop infringing activities and to restore the situation prior to the infringement; (2) to compensate economic and moral damages, including lost profits; (3) to take measures preventing further infringement by removing from circulation everything contributing to the infringement. If the owner refrains from bringing action, the licensee will have the right to act accordingly, unless stated otherwise by the license agreement.

European Union Trademark (EUTM) Conversion

Filing requirements for conversion of an EUTM application or registration into a national application in Estonia:
1. An Estonian translation of the request for conversion received from EUIPO and the documents accompanying the request;
2. Power of attorney (in case of representative and only upon request);
3. Representation of the mark (only for color marks);
4. Document certifying the payment of the State fee.

Time limit: the term for filing the above listed conversion documents is appointed in the notification from the Estonian Patent Office; the term is not extendible. 

Validity: irrespective of the actual filing date of the EUTM, the validity in Estonia can only begin on May 1, 2004 (when Estonia became a member of the European Union).