As a general rule, legal protection for a trade mark can be obtained through its registration for specific goods and services in a specific territory. By registering a trade mark, its owner gets the exclusive right to use it and, on the other hand, the right to prohibit others from using identical and similar trade marks for the same or similar goods and services. The exclusive right also allows prohibiting others from using trade marks that exploit or damage the distinctiveness or reputation of the original trade mark.
Legal protection of trade marks
The scope of legal protection of a trade mark is determined by which trade mark you have registered for which goods and services.
The owner of a registered trade mark is obliged to use it to designate the goods and services indicated in the registration. If the trade mark is not used within five years without a valid reason, an interested person may challenge the exclusive right to this trade mark.
International classification of goods and services
Before applying for trade mark registration, find out which classes your goods and services fall into. The generally recognised Nice classification system is used for the classification of goods and services. This is an international classification system that is also valid in Estonia, which is why you must determine which class of goods or services your trade mark belongs to. It is recommended to protect your trade mark for the goods and services that the activities of your company are related to (including in the future).
Registration of a trade mark in Estonia
In order to obtain legal protection in Estonia, an application for trade mark registration must be submitted to the Patent Office in Estonian. The application can be submitted electronically through the e-services of the Patent Office or by filling out the trade mark registration application form, which can be printed out and brought or sent to the reception of the Patent Office at 39 Tatari Street, 15041, Tallinn.
The application for trade mark registration must be submitted separately for each trade mark. You must submit a proper application, present the required additional documents, and pay a state fee.
The trade mark registration application must include the following:
- trade mark registration application
- power of attorney if the applicants have a common representative and the application has not been signed by all applicants
- documents proving priority, if priority is applied for
- articles of association for a collective trade mark if the application is submitted for a collective trade mark
- articles of association for a certification trade mark if an application is submitted for a certification trade mark
The amount of the state fee to be paid for the processing of the trade mark registration application depends on the number of classes of goods and services in which you wish to protect the trade mark. When submitting an application, the state fee for one class of goods or services is 145 euros and an additional fee of 45 euros must be paid for each additional class.
When paying the state fee, you must use the unique reference number, which you will receive from the Patent Office to your email address immediately after submitting the application. If the state fee is paid without a unique reference number, the payment details for the state fee must be submitted to [email protected]. The state fee must be paid within two months from the date of submission of the application.
The legal protection of the trade mark is valid for ten years from the date of submission of the application. The validity period of legal protection of a trade mark can be extended in increments of ten years at the request of the trade mark owner. To extend the validity period, the trade mark owner must submit an application and pay a state fee.
You can carry out the procedures of registering trade marks yourself or through patent attorneys. Persons whose place of residence, seat, or operating commercial or industrial company is not in Estonia must appoint a patent agent as their representative, except for filing the application.
More information on submitting and processing a trade mark application can be found on the website of the Estonian Patent Office.
Registration of a trade mark in EU Member States
If you operate in more than one EU country, we recommend applying for a European Union trade mark. A European Union trade mark provides legal protection in all EU member states. The corresponding EU trade mark application can be submitted at the European Union Intellectual Property Office (EUIPO).
More information about the protection of intellectual property in EU Member States can also be found on the portal Your Europe.
Registration of a trade mark abroad
There are three ways to register a trade mark abroad:
- submit an application for trade mark registration to the patent office of the respective country (so-called national trade mark);
- register a trade mark through the World Intellectual Property Organisation (WIPO) under the Protocol relating to the Madrid Agreement by submitting an application through the Patent Office to the WIPO International Bureau (so-called international trade mark);
- register a European Union (EU) trade mark throughout the territory of the EU (the aforementioned EU trade mark).
Related articles
References
- How to protect your trade mark
- International classification of goods and services
- Trade marks database of the Estonian Patent Office