01st April, 2019
This year will bring significant changes in the field of Estonian trademark protection. The Estonian Parliament (Riigikogu) passed The Act on Amendments to the Trademark Act, which will make registration of trademarks in Estonia faster. Upon adoption of the new trademark law, the Estonian trademark procedure will be harmonised with the Directive (EU) No. 2015/2436. The Act enters into force on 1 April 2019.
Trademark registration to accelerate
The amendments to the Trademark Act removes the obligation of the Patent Office to look for the existence of similar rights (trademarks, trade names).
Currently it takes about 10-12 months to register a trademark in Estonia. This is far too long for a problem-free examination. By comparison, registration of a European Union trademark is significantly faster, about four months. Unlike European Union Intellectual Property Office (EUIPO), the Estonian Patent Office checks whether similar trademarks have protected for the same or similar goods and services in Estonia. If a similar trademark exists, the trademark applicant must submit written consent of the proprietor of the earlier trademark to the Patent Office. Obtaining such a consent is costly and time-consuming, and often impossible because it is impossible to contact the owner of the earlier trademark.
In the future, the examination on relative grounds by the Patent Office will be effectively replaced by the opposition procedure of the Industrial Property Board of Appeal. Those who do not agree with the registration of a later trademark will have the opportunity to oppose the application. This means that diligent trademark owners should monitor subsequent third-party trademark applications in Estonia regularly. A similar system successfully works for EU trademarks.
Our experience with EU trademarks shows that, although many applications are challenged, disputes are mostly resolved by agreement between the parties. Applicants will not need togo through costly and unpredictable disputes with the Estonian Patent Office, where the proprietor of an earlier trademark is often not interested in preventing the later mark from being registered. Instead, it is more effective if each trademark owner monitor their rights and, in the event of a conflict between similar signs, the parties communicate with each other.
Restructuring of the Industrial Property Board of Appeal
The Industrial Property Board of Appeal is a mandatory pre-trial trademark dispute resolution body that reviews complaints and appeals against decisions of the Patent Office. In addition to trademark disputes, the Board also resolves disputes concerning designs and inventions.
The amended law provides for reorganisation in the Board of Appeal procedure, to ensure faster and more effective dispute resolution. The substantive settlement of disputes will be preceded by a so-called ‘settlement period’. The Board of Appeal will have the opportunity to decide on the accelerated procedure if the trademark applicant does not dispute and has no interest in taking part in the opposition procedure (analogous to a judgment rendered in absentia). Specific deadlines will also be set for the different stages of the Board of Appeal procedure. This will prevent the procedure from stopping and the parties will have a better overview of what is going on in the proceedings.
Opportunities to protect different types of trademarks to expand
According to the amended law, the trademark will no longer be required to be graphically represented. The requirement for graphic representation means that the trademark to be registered should be represented by shapes, lines or characters. Removing this requirement will make it easier to record sounds, moving characters, multimedia marks and holograms, among other signs.