REPUBLIC OF ESTONIA
TRADE MARKS ACT

TABLE OF CONTENTS

Chapter I GENERAL PROVISIONS
   1Purpose of Act
   2 Law regulating legal protection of trade marks
   3 International agreements

Chapter II Legal Protection of Trade Marks
   4 Definition of trade or service mark
   5 Legal regime of trade marks
   6 Registrable trademarks
   7Absolute grounds for refusal of registration of trade marks
   8Relative grounds for refusal of registration of trade marks

Chapter III Registration of Trade Marks
   9Application for registration of trade mark
   9.1Estonian patent agents
   10Priority of trade marks
   11Filing of applications for registration of trade marks
   11.1Database of registration applications and information on processing of registration applications, and access to and release of information from such database
   12Examination of trade marks
   13Appeal against or refusal of registration of trade mark
   14State register of trade and service marks
   15Certificate of registration
   16Publication of registered trade marks
   17Validity of trade mark

Chapter IV Use of Trade Marks
   18Obligation to use trade mark
   19Non-use of trade mark
   20Registered trade mark symbol

Chapter V Transfer of Trade Marks
   21Licensing of trade marks
   22Surrender of trade mark
   23Transfer of rights in trade mark
   24Declaration of invalidity of trade mark and deletion of trade mark from register
   24.1Declaration of invalidity and deletion from register of trade mark containing geographical indication

Chapter VI Collective Marks
   25Definition of collective mark
   26Registration of collective mark
   27Use of collective trade marks
   28Declaration of invalidity of collective trade marks

Chapter VII State Fees
   29State fees
   30Procedure for payment of state fee
    31. [repealed]

Chapter VIII Protection of Rights of Proprietors of Trade Marks, Disputes and Liability
   32Protection of rights of proprietors of trade marks
   33Protection of exclusive right of proprietor of trade mark
   34Liability for violation of exclusive right of proprietor of trade mark
   35Resolution of trade mark disputes by Board of Appeal
   36Civil liability
   36.1Administrative liability of legal persons
   36.2Proceedings in matters concerning administrative offences
   36.3Seizure
   36.4Preparation of reports concerning administrative offences by legal persons
   36.5Exceptions in application of administrative liability to legal persons

Chapter IX Special Provisions
   37 Registration of trade marks in foreign countries
   37.1International registration of trade marks
   37.2Applications for international registration of trade marks and national processing thereof
   28Registration of foreign trade marks on basis of international applications

Chapter I

GENERAL PROVISIONS

Purpose of Act

Art.1

Law regulating legal protection of trade marks

Art.2

International agreements

Art.3

Chapter II

Legal Protection of Trade Marks

Definition of trade or service mark

Art.4

(1) A trade or service mark (hereinafter trade mark) is a sign which a natural or legal person uses or intends to use in economicand business activities to distinguish the person's goods or services from other similar types of goods or services of othernatural or legal persons.

(2) Goods and services are classified in accordance with the international classification of goods and services established by theNice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration ofMarks (RT II 1996, 4, 14).

Legal regime of trade marks

Art.5

(1) Natural and legal persons may acquire protection for their trade marks in the Republic of Estonia on the basis of andpursuant to the procedure prescribed in this Act.

(2) The state protects the exclusive right of the proprietor of a protected trade mark to the trade mark.

(3) No natural or legal person shall use a trade mark which is identical with or confusingly similar to a protected trade mark todesignate identical or confusingly similar goods or services in economic and business activities without the consent of theproprietor of such trade mark. The following constitute use of a trade mark:

1) affixing the trade mark to goods or to the packaging thereof;

2) offering goods for sale, putting them on the market or stocking them for the purposes of sale under the trade mark;

3) offering or rendering services under the trade mark;

4) importing or exporting goods under the trade mark;

5) using the trade mark on business papers, in advertising or user instructions of goods.

(4) The proprietor of a trade mark has the right to prohibit the use of the trade mark in relation to identical or similar goods orservices and other goods or services if the trade mark is well known in the Republic of Estonia and such use takes unfairadvantage of or is detrimental to the distinctive character or repute of the trade mark.

(5) The proprietor of a trade mark has no right to prohibit a third party from using, in economic and business activities:

1) the name or address of the third party;

2) indications which designate the kind, quality, quantity, intended purpose, value or geographical origin of goods or services,the time of production of goods or of rendering of services, or other characteristics of goods or services;

3) the trade mark if it is necessary to indicate the intended purpose of a product (as accessories or spare parts) or a service;

4) elements of the trade mark which are not subject to protection.

(6) Upon publication of a registered trade mark in a reference book, manual, textbook, professional journal or otherpublication, the author and publisher shall ensure that the publication includes the registered trade mark symbol pursuant to § 20of this Act if the proprietor of the trade mark so requests.

(7) The proprietor of a trade mark has no right to prohibit further distribution, sale or offer for sale of goods which are affixedwith a trade mark by the proprietor or with the proprietor's consent and put on the market in the Republic of Estonia orabroad, or the stocking, importation or exportation of goods for these purposes under the trade mark, except if the quality ofgoods has changed after they are put on the market.

(8) The scope of protection of a registered trade mark shall be based on a representation of the trade mark.

(9) The scope of protection of a registered trade mark in relation to goods and services is determined by a list of such goodsand services. The list of goods and services indicated in the registration may be limited. Extension of the list of goods andservices is prohibited.

Registrable trademarks

Art.6

(1) Any sign or combination of signs which is capable of being represented graphically and consists of letters, words, numeralsor designs or is three-dimensional may be registered as a trade mark provided that such signs distinguish the goods and servicesof one natural or legal person from those of others.

(2) A trade mark may be registered in black-and-white or colour. A trade mark which is registered in black-and-white shall beprotected in all colour combinations; a trade mark which is registered in colour shall only be protected in the colourcombination which is applied for.

(3) Trade marks which consist of sound or smell are not registrable.

(4) A trade mark filed for registration may include elements which are not subject to protection unless this decreases thedistinctive character of the trade mark or violates the rights of other persons.

(5) If, during subsequent use, an element of a registered trade mark which is not subject to protection becomes well-known inthe Republic of Estonia within the meaning of Article 6 bis of the Paris Convention for the Protection of Industrial Property (RTII 1994, 4/5, 19) and thereby acquires a distinctive character, new registration of the registered trade mark may be applied forto extend protection to the whole mark.

Absolute grounds for refusal of registration of trade marks

Art.7

(1) The following shall not be registered as a trade mark:

1) signs which do not conform to the provisions of subsection 6 (1) of this Act;

2) trade marks which are devoid of any distinctive character;

3) trade marks which consist exclusively of signs or indications which designate the kind, quality, quantity, intended purpose,value or geographical origin of the goods or services, the time of production of the goods or of rendering of the services, orother characteristics of the goods or services, or which consist of the above-mentioned signs or indications which are notconsiderably altered;

4) trade marks which consist exclusively of signs and indications which have become customary in the current language use inrelation to such goods or services for which application for registration of a trade mark is made, or which have becomecustomary in economic and business activities;

5) signs which consist exclusively of the shape which results from the nature of the goods, is necessary to obtain a technicalresult or gives substantial value to the goods;

6) trade marks which are of such a nature as to deceive the consumer as to the kind, quality, quantity, intended purpose, valueor geographical origin of the goods or services, the time of production of the goods or of rendering of the services, or othercharacteristics of the goods or services;

61) a trade mark which contains a registered geographical indication or is confusingly similar thereto if it

(15.12.1999 entered into force 10.01.2000 - RT I 1999, 102, 907)

7) trade marks which are contrary to public policy or to accepted principles of morality;

8) trade marks the registration of which must be refused on the basis of Article 6 ter of the Paris Convention for the Protectionof Industrial Property, unless the competent authorities or officials give written consent for the registration;

(24.11.99 entered into force 25.12.99 - RT I 1999, 93, 834)

9) (Repealed - 24.11.99 entered into force 25.12.99 - RT I 1999, 93, 834)

10) trade marks which contain flags, armorial bearings or other symbols which are not specified in

Article 6 ter of the Paris

(24.11.99 entered into force 25.12.99 - RT I 1999, 93, 834)

11) signs the use or registration of which as a trade mark is prohibited pursuant to other Acts.

(24.11.99 entered into force 25.12.99 - RT I 1999, 93, 834)

(2) Clauses (1) 2), 3) and 4) of this section do not apply if it is proven that by the filing date of an application for registration ofa trade mark (hereinafter registration application), the trade mark has, due to its use, become well known in the Republic ofEstonia within the meaning of Article 6 bis of the Paris Convention for the Protection of Industrial Property.

(3) Upon the incorporation of a sign specified in clauses (1) 2), 3), 4) and 5) of this section within a trade mark, such signconstitutes an element of the trade mark which is not subject to protection.

Relative grounds for refusal of registration of trade marks

Art.8

(1) The following shall not be registered as a trade mark:

1) a trade mark which is identical with an earlier trade mark which is registered or filed for registration in the name of anotherperson to designate identical goods or services;

2) a trade mark which is identical with, confusingly similar to or associated with an earlier trade mark which is registered or filedfor registration in the name of another person to designate similar goods or services, unless the other person gives writtenconsent for the registration;

3) a trade mark which is identical with, confusingly similar to or associated with an earlier trade mark which is registered or filedfor registration in the name of another person to designate goods or services of a different type, if, due to confusion on the partof the consumer, this may take advantage of the repute or be detrimental to the distinctive character of another person's trademark, unless the other person gives written consent for the registration;

4) a trade mark or marking of goods which belongs to another person and, at the filing date of the registration application or thedate of priority, is well known in the Republic of Estonia within the meaning of Article 6 bis of the Paris Convention for theProtection of Industrial Property, regardless of whether or not it is registered, unless the other person gives written consent forthe registration;

5) a trade mark which is identical with or confusingly similar to the business name of another person provided that the businessname is entered in the commercial register prior to the filing date of the registration application or the date of priority, and theother person's area of activity in respect of which a notation has been made in the commercial register includes the goods andservices for which a registration application is filed, unless the other person gives written consent for the registration;

6) a trade mark which includes a portrait of a person, name of a well-known person, name of a registered immovable, name orrepresentation of an architectural site, if this is detrimental to the rights of the person depicted on the portrait, of the well-knownperson or owner of the registered immovable or architectural site, unless the entitled person gives written consent for theregistration;

7) a trade mark which includes a protected industrial design;

8) a trade mark which includes a work or a title thereof, protected by copyright, unless the entitled person gives written consentfor the registration;

9) a trade mark which includes the name of an active ingredient of a medicinal product or the name of a medicinal productwhich belongs and is registered to another person in the Republic of Estonia prior to the filing date of the registration applicationor the date of priority of the trade mark;

10) a trade mark which is identical with a trade mark registered and used in another country if the

(2) An earlier trade mark within the meaning of subsection (1) of this section means:

1) a trade mark entered in the state register of trade and service marks with a filing date of the registration application or date ofpriority which is earlier than the filing date of the registration application or the date of priority of the trade mark in question;

2) a trade mark which is filed for registration in the Republic of Estonia with a filing date of the registration application or date ofpriority which is earlier than the filing date of the registration application or the date of priority of the trade mark in question, ifthe trade mark is entered in the state register of trade and service marks;

3) a trade mark registered pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registrationof Marks adopted by the Republic of Estonia with a date of registration or date of priority which is earlier than the filing date ofthe registration application or the date of priority of the trade mark in question.

Chapter III

Registration of Trade Marks

Application for registration of trade mark

Art.9

(1) An applicant who is a natural or legal person shall file an application for registration of a trade mark with the Patent Officeand pay the state fee.

(2) A registration application may be filed and any procedures relating to the registration of a trade mark or any procedures inconnection with a registered trade mark may be performed via an Estonian patent agent. Natural and legal persons of foreignstates shall perform acts relating to the registration of trade marks in the Republic of Estonia and procedures in connection withregistered trade marks via Estonian patent agents.

(3) Each trade mark shall have a separate registration application.

(4) A registration application shall contain:

1) a request to register a sign as a trade mark, which indicates the name of the applicant (applicants) and the applicant's(applicants') seat or residence;

2) a representation of the trade mark;

3) the list of goods or services, classified in accordance with the international classification of goods and services, in respect ofwhich registration of the trade mark is applied for, and the class numbers of the classification;

4) a document certifying payment of the state fee or a copy thereof;

5) a document certifying the authority of the patent agent or a copy thereof, if the registration application is filed via a patentagent;

6) the regulations of the collective mark, if the registration application concerns a collective mark.

(41) A document certifying the authority of a patent agent or a copy thereof may be filed within two months after the filing dateof the registration application.

(42) The regulations of a collective mark may be filed within two months after the filing date of the registration application.

(5) Registration application documents shall be filed in the Estonian language.

(6) The procedure for filing registration applications and the requirements for the format of registration application documentsare established by the Government of the Republic or the Minister of Economic Affairs as authorised by the Government of theRepublic.

Estonian patent agents

Art.9.1

(1) An Estonian patent agent is a professional and independent representative of a natural or legal person who acts on the basisof an authorisation from such person and provides legal services in the field of industrial property protection.

(2) Any natural person who resides in the Republic of Estonia, is an Estonian citizen, is a resident within the meaning of theIncome Tax Act (RT I 1993, 79, 1184; 1998, 9, 111), complies with the requirements established in the statutes of Estonianpatent agents, has been evaluated pursuant to the procedure provided for in the statutes and is entered in the state register ofEstonian patent agents may act as an Estonian patent agent.

(3) The statutes of Estonian patent agents are approved by the Government of the Republic.

(4) The statutes concerning maintenance of the state register of Estonian patent agents is approved by the Government of theRepublic.

(5) The chief and authorised processor of the state register of Estonian patent agents is the Patent Office.

Priority of trade marks

Art.10

(1) The priority of a trade mark is determined based on the filing date of the registration application with the Patent Office.

(2) The priority of a trade mark is determined based on the filing date of the first application for registration of the trade mark ina state party to the Paris Convention for the Protection of Industrial Property (Convention priority) if the registration applicationis filed with the Patent Office within six months after the filing date of the first application.

(3) The date of priority of a trade mark in respect of an exhibit which is displayed at an international or officially recognisedinternational exhibition in the territory of a state party to the Paris Convention for the Protection of Industrial Property(exhibition priority) is the date of public display of the exhibit at such exhibition if the registration application is filed with thePatent Office within six months after the date of display. The requirements for international exhibitions are provided for in theConvention on International Exhibitions of 22 November 1928 and its later revisions.

(4) An applicant who wishes to claim convention or exhibition priority shall indicate such claim in the application for registrationof a trade mark and provide documents substantiating the claim together with the application or within three months after thefiling date of the application with the Patent Office.

Filing of applications for registration of trade marks

Art.11

(1) An application for registration of a trade mark shall be filed with the Patent Office which, upon receipt of the applicationshall check the compliance of the filed documents with the requirements of § 9 of this Act.

(2) If a registration application complies with the requirements, the application shall undergo examination and the Patent Officeshall inform the applicant of the filing date of the registration application.

(3) If the Patent Office refuses to accept a registration application, the applicant has the right, after payment of the state fee, toappeal against the refusal to the Industrial Property Board of Appeal (hereinafter Board of Appeal) within two months afterrefusal to accept the application.

The state fee shall be refunded if the Board of Appeal declares the refusal to accept the registration

Database of registration applications and information on processing of registration applications,

Art.11.1

(1) The database of registration applications and information on the processing of registration applications is a structured bodyof data concerning processed registration application documents and information on the processing thereof. Information on aregistration application and the processing thereof is maintained until the end of processing.

(2) Access to the database of registration applications and the information on the processing of registration applications, andrelease of information from the database is generally prohibited. It is permitted to release the following information from thedatabase: representations of trade marks, numbers of registration applications, filing dates of registration applications,information on priority, names of applicants, names of representatives of applicants, lists of goods and services, and classnumbers of the international classification.

(3) Access to a database file containing information on the processing of a registration application is granted to the applicant,persons who have the written consent of the applicant, persons whom the applicant has informed in writing of the filing of aregistration application, competent officials of state agencies which have supervisory authority, and the courts.

(4) A fees is charged for the release of information from the database of registration applications and information on theprocessing of registration applications with the exception of the release of information to state agencies with supervisoryauthority or to a court. A state fee is charged for the release of information.

(5) The database of registration applications and information on the processing of registration applications is established by theGovernment of the Republic or the Minister of Economic Affairs as authorised by the Government of the Republic.

Examination of trade marks

Art.12

(1) If the examination of a registration application depends on the examination of another registration application which hasearlier priority, the examination is suspended until a final decision is made concerning the registration application which hasearlier priority.

(2) An examination may also be suspended on the basis of a reasoned proposal from an applicant for a period determined bythe Patent Office.

(3) During an examination, the Patent Office may require that an applicant provide details or amend the registration applicationwithin a specified period. The applicant has the right to extend the period if the applicant pays a supplementary state fee.

(4) If an applicant ignores the period determined by the Patent Office, or fails to pay the state fee or respond to a decisionmade as a result of an examination, the Patent Office shall reject the application.

(5) An applicant has the right to withdraw a registration application during an examination in which case the examination shall beterminated.

(51) An applicant may limit the list of goods and services specified in the registration application during an examination. It isprohibited to extend the list of goods and services.

(6) A trade mark shall be registered if no grounds for refusal of registration as specified in §§ 7 or 8 of this Act are revealedduring the examination.

(61) Registration of a trade mark shall be refused if the examination reveals at least one of the grounds for refusal of registrationspecified in §§ 7 or 8 of this Act. A decision to refuse registration of a trade mark shall be reasoned.

(62) A trade mark shall be registered for some of the goods or services specified in a registration application if the trade markcannot be registered pursuant to §§ 7 or 8 for the remaining goods or services specified in the registration application.Registration of the trade mark for the remaining goods or services shall be refused.

(63) The registration of a trade mark shall include a limitation if the Patent Office determines that a particular element of thetrade mark is an element which is not subject to protection pursuant to subsection 7 (3) of this Act.

(7) The Patent Office may review a decision on registration of a trade mark if there is a registration application which has anearlier date of priority pursuant to an international agreement of the Republic of Estonia.

(8) The Patent Office shall indicate the element of a trade mark which is not subject to protection in the decision on registrationof the trade mark. If a trade mark is registered, the trade mark shall be published in the official gazette of the Patent Office.

(9) The processing of a registration application of a trade mark is completed by registration of the trade mark in the stateregister of trade and service marks, or by refusal of registration or rejection of the registration application.

Appeal against or refusal of registration of trade mark

Art.13

(1) If an applicant does not agree with a decision of the Patent Office on refusal of registration of a trade mark, the applicantmay, after payment of the state fee, appeal such decision to the Board of Appeal within two months after the date on which thedecision is made.

The state fee shall be refunded if the Board of Appeal declares the refusal of registration to be

(2) The proprietors of other trade marks or other interested persons may, after payment of the state fee, appeal a decision ofthe Patent Office on the registration of a trade mark to the Board of Appeal within two months after publication of the trademark in the official gazette of the Patent Office.

State register of trade and service marks

Art.14

(1) A trade mark is entered in the state register of trade and service marks (hereinafter register) after payment of theappropriate state fee. The state fee shall be paid within three months after expiry of the time limit for appeal against a decisionon the registration of a trade mark or, in the case of an appeal, after termination of the appeal proceeding. If the Patent Officedoes not receive a document certifying payment of the state fee by the end of the time limit, the registration application shall berejected.

(2) The Patent Office is the chief and authorised processor of the register.

(3) The registry secretary arranges for maintenance of the register and makes decisions on entries in the register.

(4) The register is maintained as an entry book on paper. The register may be maintained on computer if the entries are storedas print-outs.

(5) The language of the register is Estonian. Foreign language documents shall be submitted to the authorised processortogether with an Estonian translation.

(6) The expenditure for maintenance of the register is covered from the state budget through the budget of the Patent Office.

(7) The statutes for maintenance of the register are approved by the Government of the Republic.

Certificate of registration

Art.15

(1) After entry of a trade mark in the register, the Patent Office issues a certificate of registration to the proprietor of the trademark.

(2) The requirements for and procedure for completion of the certificate form are established by the Government of theRepublic or the Minister of Economic Affairs as authorised by the Government of the Republic.

Publication of registered trade marks

Art.16

(1) The Patent Office publishes trade marks entered in the register in the official gazette of the Patent Office.

(2) The statutes of the official gazette of the patent office are approved by the Government of the Republic or the Minister ofEconomic Affairs as authorised by the Government of the Republic.

Validity of trade mark

Art.17

(1) The right in a trade mark is created from the filing date of the registration application and is valid for ten years from the dateof entry of the trade mark in the register.

(2) The validity of a trade mark may be extended at the request of the proprietor for a further period of ten years at a time if theproprietor so requests within one year before the expiry of the validity of the trade mark and pays the state fee.

(3) The Patent Office may grant a period of six months to the proprietor of a trade mark for making the request specified insubsection (2) of this section after the expiry of the validity of the trade mark. The proprietor of the trade mark shall pay a statefee.

(4) The Patent Office makes an entry in the register on the extension of the validity of a trade mark, publishes it in the officialgazette of the Patent Office and issues an annex to the certificate to certify extension of the validity of the trade mark.

Chapter IV

Use of Trade Marks

Obligation to use trade mark

Art.18

(1) The proprietor of a trade mark is required to use the trade mark; the acts specified in subsection 5 (3) of this Act constituteuse of a trade mark.

(2) The procedure established in subsection (1) of this section is deemed to be complied with if the proprietor of a trade markgrants a trade mark licence to an interested person.

(3) Use of a trade mark by its proprietor in a form differing in elements which do not alter the distinctive character of the trademark in the form in which it was registered constitutes use of a trade mark.

Non-use of trade mark

Art.19

(1) If, within five years from the date of entry of a trade mark in the register or later, during an interrupted period of five years,the proprietor of the trade mark fails to comply with the requirements of § 18 of this Act without proper reasons, everyinterested person has the right to contest the validity of the registration of the trade mark. A state fee shall be paid upon thefiling of a revocation application.

(2) A revocation application based on the facts specified in subsection (1) of this section shall be filed with the Board ofAppeal, which shall inform the proprietor of the trade mark thereof and propose that the proprietor of the trade mark presentto the Board of Appeal documents which prove the use of the trade mark. The Board of Appeal shall examine the revocationapplication and decide whether to reject the protest or to revoke the registration in part or in full.

Registered trade mark symbol

Art.20

Chapter V

Transfer of Trade Marks

Licensing of trade marks

Art.21

Surrender of trade mark

Art.22

(1) The proprietor of a trade mark may surrender the trade mark to a natural or legal person in respect of some or all of thegoods or services.

(2) An entry shall be made in the register concerning the surrender of a trade mark after payment of the state fee.

Transfer of rights in trade mark

Art.23

Declaration of invalidity of trade mark and deletion of trade mark from register

Art.24

(1) Upon the application of an interested person, the Board of Appeal may declare the registration of a trade mark invalid if theregistration is in breach of the requirements specified in §§ 7 and 8 of this Act.

(2) An application for a declaration of invalidity of the registration of a trade mark may be filed with the Board of Appeal afterpayment of the state fee, within five years after the date of entry of the trade mark in the register.

(3) A trade mark shall be deleted from the register by a decision of the Patent Office:

1) based on the application of the proprietor of the trade mark;

2) upon termination of the registration of the trade mark if the proprietor of the trade mark has violated the provisions of § 18of this Act;

3) upon dissolution of the proprietor of the trade mark (legal person), the death of the proprietor of the trade mark (naturalperson), or on any other justified grounds unless the rights conferred by the trade mark have transferred to a new owner;

4) upon declaration of invalidity of the registration of the trade mark pursuant to subsection (1) of this section;

5) pursuant to the provisions of art.17 of this Act.

Declaration of invalidity and deletion from register of trade mark containing geographical

Art.24.1

(1) An interested person may request the declaration of invalidity of a trade mark which is filed for registration in bad faith orregistered in bad faith if:

1) the trade mark contains a registered geographical indication or a sign confusingly similar thereto;

2) goods or services designated with the trade mark and a geographical indication are identical or of similar type;

3) the trade mark is filed for registration or registered after the geographical indication becomes subject of legal protection in itscountry of origin.

(2) If a trade mark specified in subsection (1) of this section contains the name of a geographical area in Estonia, the conditionspecified in clause (1) 3) of this section does not apply upon the declaration of invalidity of the trade mark.

(3) A trade mark is filed for registration or registered in bad faith if the person who filed for registration or registered the trademark knew or should have known that the sign indicates that goods or a service originates from a certain geographical area anda certain characteristic, reputation or other characteristic feature of the goods or service can be related to a considerable extentto the geographical origin.

(4) Prior to the date of entry into force of the Geographical Indications Protection Act, an interested person may request thedeclaration of invalidity of a trade mark registered to designate an alcoholic beverage if the trade mark contains a registeredgeographical indication or is confusingly similar thereto and the alcoholic beverage designated by the trade mark does notoriginate from the geographical area specified by the geographical indication.

(5) Applications for the declaration of invalidity of the registration of a trade mark specified in subsections (1) and (4) of thissection shall be filed with the Board of Appeal.

(6) If a trade mark is declared invalid, the Patent Office shall delete the trade mark from the register.

(7) The provisions of this section apply also to the declaration of invalidity of trade marks containing geographical indicationswhich were filed for registration or registered prior to the date of entry into force of the Geographical Indications ProtectionAct.

(15.12.1999 entered into force 10.01.2000 - RT I 1999, 102, 907)

Chapter VI

Collective Marks

Definition of collective mark

Art.25

Registration of collective mark

Art.26

Chapter 3 of this Act.

Use of collective trade marks

Art.27

Declaration of invalidity of collective trade marks

Art.28

Chapter VII

State Fees

State fees

Art.29

Procedure for payment of state fee

Art.30

(1) The state fee shall be paid by an applicant, proprietor of a trade mark or third party who has an interest in the performanceof an act or the issue of a document prescribed in this Act. If the state fee for registration of a trade mark or renewal ofregistration is paid by a third party, the written consent of the applicant or the proprietor of the trade mark is required.

(2) The state fee is deemed to be paid if the Patent Office receives a document which certifies payment of the state fee or, inthe case of an appeal, if the Board of Appeal receives such document.

(3) Paid state fees are not refunded, except in the cases provided for in subsections 11 (3) and 13 (1) of this Act.

Art. 31. [repealed]

Chapter VIII

PROTECTION OF RIGHTS OF PROPRIETORS OF TRADE MARKS, DISPUTES AND

Protection of rights of proprietors of trade marks

Art.32

Protection of exclusive right of proprietor of trade mark

Art.33

(1) State supervisory authorities shall protect the exclusive right of the proprietor of a trade mark as of the entry into register ofthe trade mark.

(2) State supervisory authorities shall protect the exclusive right of the proprietor of a trade mark which is well-known withinthe meaning of Article 6 bis of the Paris Convention for the Protection of Industrial Property after a court or the Patent Officehas considered the trade mark to be well known. The Patent Office shall consider a trade mark to be well-known only inconnection with the registration procedure of the trade mark.

(3) The exclusive right of the proprietor of a trade mark is violated if:1) a natural or legal person uses a sign to designate goodsor services which is identical with or confusingly similar to the sign used to designate identical or similar goods or serviceswithout the consent of the proprietor, or performs other acts which violate the exclusive right of the proprietor;

2) a licensee violates the terms of the licence agreement.

(4) Goods which are designated with a sign which is identical with or confusingly similar to a trade mark which is registered inrespect of identical or similar goods are deemed to be counterfeit goods.

(24.11.99 entered into force 25.12.99 - RT I 1999, 93, 834)

Liability for violation of exclusive right of proprietor of trade mark

Art.34

(1) The acts that violate the exclusive right of the proprietor of a trade mark shall result in civil, criminal or administrativeliability; the types of liability may be applied together or separately. If a natural person violates the exclusive right of theproprietor of a trade mark in the interests of a legal person, criminal liability to the natural person and administrative liability tothe legal person may be applied simultaneously.

(24.11.99 entered into force 25.12.99 - RT I 1999, 93, 834)

(2) The amount of damages caused to the proprietor or licensee of a trade mark shall be calculated based on the profit whichthe proprietor or licensee would have received during the normal use of the trade mark.

Resolution of trade mark disputes by Board of Appeal

Art.35

(1) Disputes concerning industrial property are resolved by the Industrial Property Board of Appeal formed in the area ofgovernment of the Ministry of Economic Affairs. The statutes of the Board of Appeal are approved by the Government of theRepublic or the Minister of Economic Affairs as authorised by the Government of the Republic.

(2) The Board of Appeal shall examine appeals filed against decisions of the Patent Office pursuant to subsection 11 (3), and§§ 13, 24 and 241 of this Act, and shall examine revocation applications made by interested persons pursuant to § 19.

(15.12.1999 entered into force 10.01.2000 - RT I 1999, 102, 907)

(3) The Board of Appeal shall inform the appellant and, if necessary, the proprietor of another trade mark, of the date andplace of the examination of the appeal. The failure of such persons to be present at the examination shall not constitute animpediment to the examination of the appeal.

(31) The Board of Appeal shall dismiss or grant an appeal by its decision. In the latter case, the Board of Appeal shall annul thedecision of the Patent Office and propose that the Patent Office re-examine the registration application and make a newdecision.

(4) The Board of Appeal shall make a decision concerning an appeal within three months after receipt of the appeal. Thedecision shall be communicated to the appellant and the proprietor of the trade mark. The Board of Appeal may delay theexamination of an appeal if there is a reasoned request to do so or the Board of Appeal deems it necessary to request furtherdocuments.

(5) Interested persons may appeal a decision of the Board of Appeal to a court within three months after the making of thedecision.

Civil liability

Art.36

(1) The proprietor of a trade mark whose rights are violated may file a civil action, which shall contain one or several of thefollowing claims:

1) to cease the violation of the rights of the proprietor or licensee of the trade mark and restore the prior situation;

2) to compensate for proprietary and moral damage caused to the proprietor or licensee of the trade mark, includingunreceived revenue;

3) to take measures to prevent further violation of the rights of the proprietor or licensee of the trade mark, and to removeeverything from circulation which causes such violation.

(2) If the proprietor of a trade mark refuses to file an action, the right to file an action transfers to the licensee unless the licenceagreement provides otherwise.

Administrative liability of legal persons

Art.36.1

(1) A fine of 250 000 up to 500 000 kroons shall be imposed on a legal person for designating goods or packaging with a signwhich is identical with or confusingly similar to a trade mark registered in respect of identical or similar goods, without theconsent of the proprietor of the trade mark.

(2) A fine of 25 000 up to 50 000 kroons shall be imposed on a legal person for affixing a sign which is identical with orconfusingly similar to a trade mark registered in respect of identical or similar goods or services to the packaging, economic orbusiness documents, advertising materials and instructions for use of goods, without the consent of the proprietor of the trademark.

(24.11.99 entered into force 25.12.99 - RT I 1999, 93, 834)

Proceedings in matters concerning administrative offences

Art.36.2

(1) Administrative court judges hear matters concerning administrative offences by legal persons.

(2) Proceedings in matters concerning administrative offence matters by legal persons are carried out pursuant to the procedureprovided for in the Code of Administrative Offences (RT 1992, 29, 396; RT I 1999, 41, 496; 45, correction notice; 58, 608;60, 616).

(24.11.99 entered into force 25.12.99 - RT I 1999, 93, 834)

Seizure

Art.36.3

(1) Upon hearing matters concerning administrative offences specified in § 361 of this Act, the following shall be confiscated:

1) the object used to commit the administrative offence;

2) property acquired as a result of commission of the administrative offence;

3) the goods, packaging, economic or business documents, advertising materials and instructions for use of goods which are,without the consent of the proprietor of the trade mark, unlawfully affixed with a sign which is identical with or confusinglysimilar to a trade mark registered in respect of identical or similar goods or services.

(2) Upon enforcement of a decision on seizure, the objects specified in clause (1) 3) of this section which are unlawfullydesignated shall be destroyed pursuant to the procedure provided for in § 340 of the Code of Administrative Offences.

(24.11.99 entered into force 25.12.99 - RT I 1999, 93, 834)

Preparation of reports concerning administrative offences by legal persons

Art.36.4

(1) Officials of the following authorities have the right to prepare reports concerning administrative offences specified in § 361 ofthis Act:

1) the Competition Board;

2) police authorities;

3) the Consumer Protection Board;

4) the Customs Board.

(2) The report concerning an administrative offence shall indicate:

1) the date and place of preparation of the report;

2) the name and address of the agency in whose name the report is prepared;

3) the given name and surname and official title of the person who prepared the report;

4) the name and address of the administrative offender;

5) the given name and surname and official title of the representative of the administrative offender;

6) the date, place and description of the administrative offence;

7) a reference to a provision of law which prescribes liability for such administrative offence;

8) the explanation provided by the representative of the administrative offender;

9) a notation concerning the fact that the representative of the administrative offender has been informed of his or her right toreceive legal aid;

10) other information necessary for the just adjudication of the matter concerning the administrative offence.

(3) The report concerning an administrative offence shall be signed by the official who prepared the report and the representative of the administrative offender.

(4) If the representative of an administrative offender refuses to sign the report concerning the administrative offence, the person who prepared the report shall make a corresponding notation to the report. Written comments of the representative of the administrative offender on the report shall be appended to the report concerning the administrative offence; the reasons for refusal to sign the report shall also be appended to the report.

(24.11.99 entered into force 25.12.99 - RT I 1999, 93, 834)

Exceptions in application of administrative liability to legal persons

Art.36.5

(1) The administrative liability of a legal person for using a trade mark to designate identical or similar goods or services in cases specified in clauses 5 (3) 2) and 3) of this Act where there is violation of the exclusive right of the proprietor of the trade mark is provided for in the Consumer Protection Act (RTI 1994, 2, 13; 1999, 35, 450).

(2) The administrative liability of a legal person for using a trade mark to designate identical or similar good in cases specified in clause 5 (3) 4) of this Act where there is violation of the exclusive right of the proprietor of the trade mark is provided for in the Customs Act (RT I 1998, 3, 54; 1999, 86, 782).

(24.11.99 entered into force 25.12.99 - RT I 1999, 93, 834)

Chapter IX

SPECIAL PROVISIONS

Registration of trade marks in foreign countries

Art.37

(1) Natural and legal persons of the Republic of Estonia are responsible for the registration of their trade marks in foreign countries.

(2) Natural and legal persons of the Republic of Estonia may register their trade marks in foreign countries regardless of registration thereof in the Republic of Estonia.

(3) Persons who have a trade mark registered in their name in the Republic of Estonia or who have filed an application for registration of a trade mark may file an application with the Patent Office for the international registration of the trade mark in respect of the same goods or services. An application for the international registration of a trade mark may be filed by a person who is a citizen of the Republic of Estonia, has permanent residence in the Republic of Estonia within the meaning of "residence" in § 21 of the General Part of the Civil Code Act (RT I 1994, 53, 889; 89, 1516; 1995, 26– 28, 355; 49, 749; 87, 1540; 1996, 40, 773, 42, 811) or who owns an industrial or commercial enterprise within the meaning of "enterprise" in § 5 of the Commercial Code (RT I 1995, 26–28, 355; 1996, 52–54, 993; 1997, 16, 258; 48, 774; 77, 1313; 1998, 2, 48) operating in Estonia.

International registration of trade marks

Art.37.1

(1) International registration of trade marks within the meaning of this Act is the registration of trade marks in the International Register of the International Bureau of the World Intellectual Property Organization (hereinafter International Bureau) pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter the Madrid Protocol), adopted at Madrid on 27 June 1989.

(2) Within the state, the Patent Office performs the duties resulting from the Madrid Protocol and is the Office of Origin and the Office of the Contracting Party within the meaning of the Protocol.

(3) Persons who apply for the international registration of a trade mark or renewal of the international registration of a trade mark shall pay international fees pursuant to Article 8 of the Madrid Protocol directly to the International Bureau.

Applications for international registration of trade marks and national processing thereof

Art.37.2

(1) An application for the international registration of a trade mark (hereinafter international application) which is filed pursuant to subsection 37 (3) of this Act, shall comply with the form and content requirements established in the Madrid Protocol and its Common Regulations.

(2) An international application shall be filed with the Patent Office. International application documents shall be submitted in English.

(3) A state fee shall be paid for the filing of an international application.

(4) The Patent Office shall check the compliance of information in an international application with the information in the registration application which is the basis for the international application or with the information concerning the valid registration of the trade mark which is entered in the state register of trade and service marks.

(5) The Patent Office shall confirm the correctness of information in an international application and forward the application to the International Bureau.

(6) The date and number of the international registration of an internationally registered trade mark shall be entered in the state register of trade or service marks if the international application is made on the basis of a trade mark registered in that register, or a note shall be made in the registration application which is being processed if the international application is made on the basis of such application.

(7) The Patent Office shall maintain a database of international application documents which are being processed nationally and on the processing thereof.

(8) The procedure for filing applications for the international registration of trade marks with the Patent Office is established by the Government of the Republic or the Minister of Economic Affairs as authorised by the Government of the Republic.

(9) The database of applications for the international registration of trade marks and the national processing thereof is established by the Government of the Republic or the Minister of Economic Affairs as authorised by the Government of the Republic.

(10) A fee is charged for the release of information from the database of applications for the international registration of trade marks and the national processing thereof with the exception of the release of information to state agencies with supervisory authority or to a court. A state fee shall be paid for the release of information.

Registration of foreign trade marks on basis of international applications

Art.28

(1) Trade marks which are protected in the Republic of Estonia by way of international registration are subject to the same legal regime and have the same benefits as trade marks registered in the Republic of Estonia.

(2) If the proprietor of a trade mark which is registered in the Republic of Estonia registers the trade mark internationally to distinguish the same goods or services, the earlier registration is replaced by the international registration. This provision does not apply to the persons specified in subsection 37 (3).

(3) If an international registration becomes invalid, the international registration in the Republic of Estonia becomes invalid on the same date.

(4) If the international registration of a trade mark becomes invalid, the same trade mark may be registered in respect of the same goods or services pursuant to the procedure provided for in Chapter 3 of this Act commencing on the date of international registration if the proprietor of the trade mark files a registration application with the Patent Office within three months after the date on which the international registration terminates.

(5) The Patent Office shall, pursuant to the provisions of this Act, perform an expert examination of international registrations in which the Republic of Estonia is indicated to be a Contracting Party.

(6) The Patent Office shall notify the International Bureau within eighteen months after the date of notice of the international registration of a trade mark if the international registration does not satisfy the conditions for registration of trade marks provided for in this Act.

(7) The Patent Office may give notice of refusal to grant protection to an international registration pursuant to Article 5 (2) (c) after the expiry of eighteen months after the date of notice of the international registration.

(8) If an expert examination confirms that an international registration satisfies the conditions provided for in this Act, notice of the international registration of a trade mark shall be published in the official gazette of the Patent Office.

(9) Each person may give notice of opposition to the international registration of a trade mark to the Board of Appeal within two months after the date of publication of the notice of international registration of the trade mark in the official gazette of the Patent Office. The Patent Office shall notify the International Bureau of such opposition.

(10) The Patent Office shall maintain a database of international registration of trade marks in which the Republic of Estonia is a Contracting Party, and the national processing thereof.

(11) The database of international registration of trade marks and the national processing thereof is established by the Government of the Republic or the Minister of Economic Affairs as authorised by the Government of the Republic.

(12) A fee is charged for the release of information from the database of international registration of trade marks and the national processing thereof, with the exception of the release of information to state agencies with supervisory authority or to a court. A state fee is charged for the release of information.

* RT = Riigi Teataja = State Gazette

© Estonian Translation and Legislative Support Centre