Changes in Estonian trademark law from April 1, 2019

On February 20, 2019 the Estonian Parliament accepted the Act on Amendments to the Trademark Act, Principles of Legal Regulation of Industrial Property Act and Associated Acts. Amendments to the Act enter into force on April 1, 2019 and they can broadly be divided into three groups:

• Changes in filing for trademark registration
• Changes in opposing trademark rights
• Changes in managing trademark rights

Changes in filing for trademark registration

Trademark representation

The amendments eliminate the requirement that a sign protected as a trademark must be capable of being represented graphically. For example, from now on it will be possible to protect sound marks (in MP3 format), multimedia, hologram or motion marks that can be played as audio or no-sound video files (MP4 format). The criterion remains that the sign protected as a trademark must be capable of being presented in the register in such a way as to enable the competent authority and the public to ascertain the clear and precise scope of trademark protection.

Elimination of prior rights examination

From the procedural side, the examination of absolute and relative grounds for refusal by the Patent Office will be replaced only by the check of absolute grounds for refusal. In short, the Patent Office will no longer review possible conflicts with earlier rights during trademark registration procedure, this will be replaced by opposition proceedings that have proven to be effective for EU trademarks for years.

Eliminating the examination of prior rights obliges trademark owners themselves to monitor new possible similar signs in order to oppose them if necessary. Here, we can definitely provide our assistance with monitoring and take over this obligation.

As regards applications filed before April 1, 2019 and for which the Patent Office has not yet rendered a decision on registration or refusal, they will be subject to the grounds for refusal in force at the time of filing the application and will be governed by the procedural rules in force at the time of the respective procedural act.

Speeding up the application proceedings

The proceedings in the Estonian Patent Office will become much faster, i.e. if the Office has so far taken 7-9 months to make a decision on a trademark, in the future this period will approach more the length of proceedings in the EUIPO, which today is approximately 4 months.

The acceleration of proceedings is also supported by moving towards electronic communication, including transitioning to a digital registry file. Among other things, the Patent Office will, following the entry into force of the amendments, transmit procedural notices as well as, for example, trademark certificates (and also industrial design certificates) in electronic form.

Changes in opposing trademark rights

Possibility to submit comments on obstacles to registration to the Patent Office

Before turning to the Industrial Property Board of Appeal, trademark owners will have the opportunity to submit written comments to the Patent Office pending a decision on the registration of a trademark. For example, the attention of the Office may be drawn to the descriptive character of the mark applied for. The Patent Office takes note of the written comments and this may also result in a decision to refuse registration.

Changes in the structure and competence of the Industrial Property Board of Appeal

Instead of the current eight-member board, a committee of two permanent members is created. Similarly to the current system, the Board will continue to settle disputes in a three-member panel, involving an additional member or members as (an) expert (s) in the respective field.

In addition to appeals filed against decisions of the Patent Office and opposition applications, the Board is also going to settle applications for declaring a trademark proprietor’s exclusive right to be null and void or extinguished, and applications for cancellation of other industrial property items, which have so far been settled by county courts.

The opposition proceedings will also move towards the current rules applicable for EU trademarks, for example, the later trademark can no longer be opposed on the basis of an earlier trademark if the earlier mark has not been used for five consecutive years.

Speeding up the proceedings in the Industrial Property Board of Appeal

The amendments restrict the length of different stages of the proceedings of the Board to make dispute resolution more efficient and faster. There is also a conciliation procedure, i.e. a 2-month period preceding the substantive proceedings during which parties can reach a compromise.

In the future, the Chairman of the Board of Appeal can, with his sole decision, similarly to civil proceedings, confirm the compromise of the parties and terminate the proceedings. If the parties reach a compromise before the commencement of final proceedings, half of the opposition fee will be refunded.

Changes in court proceedings

If under current law, all Estonian county courts as primary instance have jurisdiction to settle civil matters concerning intellectual property pursuant to the Code of Civil Procedure, then from now on all disputes will be resolved in Harju County Court.

Changes in managing trademark rights

Beginning of trademark validity

The most significant change for trademark owners is the change in the principles of trademark validity. Trademarks are still valid for 10 years, but after the entry into force of the new Act, similarly to EU signs, instead of the date of registration, the date of filing will be considered as the date of commencement of validity.

Proof of right of representation

Another important change is the elimination of PoA-s, i.e. in the future the right of representation of the patent agent before the Patent Office and the Board of Appeal will be assumed. A document certifying contractual right of representation is submitted only if required.

To sum up, the changes should make the proceedings in the Patent Office quicker and more effective, and considering the structural changes in the Industrial Property Board of Appeal, a faster procedure can also be expected in the Board.