May 22, 2019

Changes to the Estonian trademark legislation

On 29 March 2019 amendments to the Trade Marks Act entered into force in Estonia. In addition, as of 1 April 2019 the Directive (EU) 2015/2436 became effective, which among other amendments abolished the previously necessary graphical representation requirement and examination on relative grounds for the trademarks. 

As a result of the Directive’s implementation, the filing process for the non-traditional trademark types is simplified, and many non-graphical trademarks may be applied for by providing multimedia files. Though the application process was simplified, the elimination of the examination on relative grounds shifts the monitoring responsibility on to the shoulders of the trademark owners. They will have to monitor the Trademark Gazette carefully and lodge oppositions for the registrations of confusingly similar and identical trademarks. Before the Directive, it was the Office’s duty to check whether marks exist conflicting with the registration.

Apart from the amendments above, there is a change in the trademark’s validity term calculation. Trademarks filed after 1 April 2019 are valid for ten years calculated from the date of filing as opposed to the ten years from the registration date according to the previous legislation. Besides, a new regulation concerning the Power of Attorneys in trademark-related cases was introduced. From now on, patent attorneys are no longer required to furnish a Power of Attorney, meaning they are assumed to have the right of representation. However, if the Patent Office doubts this right, an attorney may be requested to submit the PoA, which must be filed within two months after such request.

The Patent Office also introduced a positive amendment in terms of environmental protection: trademark certificates are no longer issued on paper but available in electronic form; thus the previous grant fee of EUR 45 is removed from the fee schedule. Trademark owners may still get a paper certificate if they file a corresponding request and pay a relevant fee.

All in all, the amendments bring the Estonian trademark law in compliance with the Directive (EU) 2015/2436, making the filing process easier for the applicants and relieving the Patent Office on examining relative grounds for refusal, which is believed to accelerate the registration process.

Verified by Mikhailyuk, Sorokolat & Partners.

Author: Lynda Miller