07-05-2010 (Newsletter Issue 12/10)Domain Name Registration LoosenedThe Estonian Internet Foundation has loosened the restrictive registration rules of domain name registration effective by July 5th, 2010.
The new domain regulation will make the .ee ccTLD significantly more accessible: private individuals and foreigners will be able to register .ee domain. One person can register multiple domains.
For more information please click here
Legal basis is the Trademark Act of October 1st, 1992, last redaction entered into force March 1st, 2009.
Estonia is a member of the Madrid Protocol since November 18th, 1998. Since May 1st, 2004, Estonia has been a member of the European Union.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Trademarks which were protected in the former Soviet Union enjoy protection in Estonia only if they were re-registered within the period stipulated.
Nice classification, 10th edition
All distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, sounds, combinations of colours, three-dimensional forms, the three dimensional form of a good or its packaging and any combination of the mentioned signs can be registered as trademarks.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks, trade names and titles of establishment.
The application is filed at the Patent Office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a substantial examination (search for prior trademarks and company names). Signs not deemed distinctive in the examination can be registered if distinctive character has been acquired by use.
Before registration, the trademark application is published in the official Gazette (Eesti Kaubamärgileht). The processing time from first filing to registration is approx. 14 to 16 months.
The first office action is taken after approx. 10 to 12 months. The registration of a trademark is published as well.
The opposition period at the Board of Appeal is 2 months from publication date of the application.
It is also possible to file an opposition against the trademark registration at a court within 5 years from registration date.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
A trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.
There is a grace period of 6 months starting from expiration date of the trademark.
If the trademark has not been used within 5 years from registration, it may be subject to cancellation. Trademarks cannot be cancelled on the basis of non-use if the proprietor started to use the trademark after a 5 years period and more than 3 months prior to filing of the action.
The official fee is approx. EUR 141.00 for one class, approx. EUR 45.00 for each additional class and approx. EUR 45.00 for the registration.
Trademark Licence Agreement
In Estonian Law, there is no provision regarding the form of a licence agreement, but it is advisable to be in writing. Licensing of unregistered marks is not permitted. A trademark can be licensed for all or some of the goods or services in respect of which the mark is registered. There are exclusive and non-exclusive licences. In the case of a non-exclusive licence the licensor may also exercise the right which is the subject matter of the agreement or grant the right to use to other persons. An exclusive licence agreement grants the licensee the right to exercise the rights arising from intellectual property registration to the agreed extent and precludes other persons from using the rights. The term of the validity of a licence expires with the expiry of the term of the registration. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of a licensing agreement.
There are provisions in law for the recordal of a licensee. The recordal of a licence is voluntary, but advisable. On request of one of the parties the licence shall be entered in the Register.
There is no time frame for a recordal and there is no prescribed form or content for a licence agreement. For recordal purposes, the agreement shall be in writing and contain information concerning the licensee and the nature, scope and term of the licence.
The following documents and information are required for a recordal:
1. The licence agreement (or a transcript of the agreement or an officially certified abstract of the agreement) officially certified by the Patent Office
2. Information concerning the payment of the official fee
3. An authorisation document or a reference to an authorisation document, if the application is submitted by a representative of the proprietor
The licence agreement becomes effective and enforceable against third parties upon entering into agreement by the parties. Recorded licences will be published once after their registration in the monthly Estonian Trademark Gazette.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. The licensee can also call upon the owner to institute infringement proceedings. The licensee (exclusive and non-exclusive) can institute proceedings in his own name after a reasonable period of time if the proprietor refuses or neglects to do so after having been called upon by the licensee. He does not need to cite the trademark owner as co-defendant in any such proceedings.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
|Word Mark Search (availability)
|Word Mark Search (identical)
|Extended Search (word mark, company name, domain)
|Device Mark Search (availability)
|Trademark Owner Search
|Company Name Search
|Domain Name Search (extended)
|i-Search (word mark availability + legal opinion)
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We would like to thank the following law firms for their assistance in updating the information provided: