Significant Amendments to Estonian Trademark Legislation Enter into Force
On April 1, 2019, the amendments to Estonian trademark law and to the related secondary legislation entered into force implementing the EU Trademark Directive 2015/2436, introducing important changes and simplifying the trademark registration procedure in Estonia.
Under the amendments, trademarks are valid 10 years from the application date and not 10 years from the registration date. However, this change does not affect the period of validity of trademarks filed before April 1, 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 PTO. The new Board of Appeal will start working on September 9, 2019. Until then, the Board of Appeal in place decides on IP-related matters.
As from April 1, 2019, the Estonian PTO does not examine trademarks based on relative grounds. This also applies to pending trademarks filed before April 1, 2019. The examination on relative grounds has been replaced by the mandatory pre-trial opposition procedure before the PTO’s Board of Appeal, which examines and decides on revocation and cancellation actions.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 only by filing a claim at the civil court. The decisions of the PTO’s Board of Appeal may further be appealed to the Harju Country Court (civil court) in the capital of Tallinn. This court has been given exclusive jurisdiction as the only first-instance court to decide on the IP disputes. It is the only court in Estonia that has specialised judges for IP matters.
Similarly, as before, opposition can be filed within two months from the date of publication of a trademark application. However, under the previous law, oppositions were possible based on both the absolute and relative grounds and are now possible only based on relative grounds.
Oppositions on absolute grounds have been replaced by third-party observations. The third-party observations can also be filed within two months from the date of publication of a trademark registration notice. The PTO is required to decide over the third-party observations within 1 month. Should any oppositions be also filed against the same mark, the oppositions proceedings are suspended until the decision by the PTO is passed in respect of the 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 April 1, 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 only to trademarks and industrial designs);
- The official fee of EUR 45 for trademark registration has been abolished;
- Registration certificates are issued in electronic form (applicable only to trademarks and industrial designs).
Prepared by: Milica Tustić and Laura Leonte
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