RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/235/Add.1
8 December 2000
(00-5358)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Replies from Estonia to questions posed by the United States
Addendum
By means of a communication from the Permanent Mission of Estonia dated
27 November 2000, the Secretariat has received copies of the following responses to questions posed
by the United States, which were circulated in document IP/C/W/215/Add.1.
_______________
A. GENERAL
1. With respect to each form of intellectual property covered by Part II of the TRIPS Agreement,
including plant variety protection, please explain the manner in which the laws of Estonia ensure that
nationals of other WTO Members receive national treatment and most-favoured-nation treatment asrequired by Articles 3 and 4 of the TRIPS Agreement.  Please cite to the relevant provisions of law.
Copyright
Section 3 of the Copyright Act regulates the validity of the Copyright Act and Subsection 1 of
the relevant Section stipulates, that the Copyright Act applies also to works:  " …3) which must be
protected in accordance with an international agreement of the Republic of Estonia ".
There are no exceptions or exemptions from national treatment and most-favoured-nation
treatment in the Copyright Act.
Trademarks
Trademark Act Section 5(1) stipulates:"Natural and legal persons may acquire legal protection for their trademarks in the Republic
of Estonia on the basis of and pursuant to the procedure prescribed in this Act."
Geographical Indications
The Geographical Indication Protection Act, Section 2 stipulates:
"The rights and obligations prescribed in legislation regulating the legal protection of
geographical indications apply equally to natural and legal persons of the Republic of Estoniaand of foreign states (hereinafter persons), considering restrictions provided for in this Act."IP/C/W/235/Add.1
Page 2
Industrial designs
The Industrial Design Protection Act, Section 3 stipulates:
"Natural and legal persons (hereinafter persons) of the Republic of Estonia and of foreign
states shall be equal in exercising the rights and obligations prescribed in this Act and otherlegislation regulating the legal protection of industrial designs ."
Patents
The Patent Act, Section 3 stipulates:
"Natural and legal persons of the Republic of Estonia and of foreign states (hereinafter
persons ) shall exercise the rights and obligations prescribed by this Act on equal grounds
unless the legislation of the Republic of Estonia or international agreements ratified by the
Riigikogu provide otherwise."
Layout-designs of integrated circuits
The Act on the Protection of Layout Designs of  Integrated Circuits, Section 3 stipulates:
"Natural and legal persons (hereinafter persons) of the Republic of Estonia and of foreign
states shall be equal in exercising the rights and duties prescribed in this Act and by other
legal acts providing legal protection of layout-designs of integrated circuits, taking into
account the restrictions provided for in this Act for persons of foreign states."
Plant variety protection
The Plant Variety Rights Act, Section 14 stipulates:
"(1) A natural person or a legal person who is the breeder or owner of a variety has a right
to apply for the plant variety right. If the breeder and owner of a variety are not thesame person, the owner of the variety has the right to apply.
(2) The breeder of a variety is a natural person or a group of persons who has bred or
identified the variety by using different breeding techniques.
(3) The owner of a variety is the person who has acquired the proprietary rights attached
to the variety on a legal basis. A breeder of a variety may also be the owner of thevariety. If a variety is bred by a breeder in an employment or service relationship or
on order, the employer or the customer is  deemed to be the owner of the variety.
(4) If the breeder and owner of a variety are not the same person, the non-proprietary
rights attached to the variety belong to the breeder of the variety and the proprietaryrights attached to the variety belong to owner of the variety."
B. C
OPYRIGHT AND RELATED RIGHTS
2. Please describe any provisions applicable to copyright and related rights are contained in
Estonia's Civil Code and please cite to the provisions.
The general measures for protection of civil rights are stipulated in Section 112 of the General
Part of the Civil Code Act.  Accordingly, measures for protection of civil rights are:IP/C/W/235/Add.1
Page 3
(1) recognition of rights;
(2) elimination of violations and prevention of further violations;(3) restoration of the situation that existed prior to violation;(4) compensation for damage;(5) compulsory performance of obligations;(6) other measures provided by law.
Therefore, as the General Part of the Civil Code Act provides for the general principles of
civil law,  the provisions of this Act are applicable also to copyright and related rights.
In addition, Copyright Act Section 81 stipulates protection of copyright and related rights
under civil law:
"§ 81. Protection of copyright and related rights under civil law
(1) In the case of an infringement of copyright or related rights and a dispute which arises
in the implementation of this Act or other copyright legislation, either party or both
parties may have recourse to the courts for resolution of the dispute.
(2) In addition to the measures specified in § 112 of the General Part of the Civil Code
Act (RT I 1994, 53, 889; 89, 1516; 1995, 26-28, 355; 49, 749; 87, 1540; 1996, 40,
773; 42, 811; 1998, 30, 409; 59, 941; 1999, 10, 155), infringed rights are protected
under civil law by:
1) ordering payment of damages for moral damage;2) ordering delivery of assets acquired through infringement;
3) termination of a contract;
4) prohibition of infringing activities.
(3) If a claim filed by an entitled person or representative thereof pursuant to clause (2)
of this section is included in a criminal matter or matter regarding an administrative
offence arising from a violation of copyright legislation, then, upon the rendering of adecision in the same matter ordering seizure of the assets acquired as a result of the
criminal offence or administrative offence, the same amount of money or an
equivalent of the seized assets in money shall be ordered to be paid or delivered to the
entitled person by the same decision.
(4) If, as a result of a violation of copyright legislation, a work is communicated to the
public, recorded, reproduced, distributed, imported or altered etc., an entitled person
may claim:
1) restoration of the work in the original form; or2) alteration of copies of the work by specific means; orIP/C/W/235/Add.1
Page 4
3) destruction of pirated copies.
(5) The provisions of clauses (4) 2) and 3) of this section do not apply to works of
architecture.
(6) It is prohibited to transfer pirated copies to the author, holder of related rights or a
representative thereof".
The Code of Civil Procedure stipulates regulation of civil proceedings and as copyright
infringement may result in civil liability, the provis ions in the Code of Civil Procedure are applicable
also to copyright and related rights.
3. Section 5(2) of Estonia's copyright law provides that the law does not apply to expressions of
folklore.  Please explain the criteria used to differentiate an expression of folklore from a
copyrightable work based on folklore.
Folklore (expressions of folklore) is not protected under Copyright Act and the basis for such
provision is the meaning of Berne Convention Article 2, which does not recognize folklore as aspecial category of works.
A work based on folklore is copyrightable provided it meets the criteria stipulated in the
Copyright Act Section 4 Subsection 2 – the work has to be original (result of author's own intellectual
activity), expressed in an objective form and can be perceived and reproduced in this form eitherdirectly or by means of technical devices.  For example, if expressions of folklore are translated,
adapted (meaning that original parts have been adde d to the original text) etc., then differentiation
between an expression of folklore and a copyrightable work based on folklore is dependent on
meeting the criteria of originality (for instance, writing down words of a recorded folk-song is not a
basis for an authorship, the writer has just done technical work in that case).
4. Please describe in detail how Estonia has impl emented the obligations of Article 18 of the
Berne Convention, as incorporated by Article 9 of the TRIPS Agreement and how protection has been
restored for phonograms that were in existence in Estonia on the date of application of the TRIPS
Agreement, that were still protected in their country of origin and that had not had a full term of
protection in Estonia.
The term of protection of copyright shall be the life of the author and seventy years after his
or her death (Copyright Act Section 38).  As to the producers of phonograms, the rights prescribed in
Copyright Act shall not expire before the end of a period of fifty years as of the first fixation of a
phonogram (Section 74).  Those dates are in accordance with relevant international standards.  If
copyright protection is claimed in Estonia for works that are still protected in its country of origin and
fallen under the public domain in Estonia, the Berne Convention Article 18(2) applies (also BerneConvention Article 7(8) should be referred to here).
As to the protection of works and results of work of performers, producers of phonograms or
broadcasting organizations created before entry into force of the Copyright Act (1992), Section 88
stipulates:
"(1) This Act also extends to works and results of the work of performers, producers of
phonograms or broadcasting organizations which are created before 12 December
1992.
The requirements established by this Act for the use of works and results of the work of
performers, producers of phonograms or broadcasting organizations do not extend to cases where use
occurred before 12 December 1992.  …"IP/C/W/235/Add.1
Page 5
C. TRADEMARKS
5. Section 5(4) of Estonia's trademark law provides that the owners of well-known marks to
prevent the use of its trademark by others for similar goods and services if such use takes unfair
advantage of or is detrimental to the distinctive character or reputation of the trademark.  Please
explain whether the well-known mark must be registered for the owner to be able to exercise thisright.
Complying with the requirements of Paris Convention Article 6 bis (1), Section 5(4) of the
Trademark Act provides the right of the protection of well-known trademark. In accordance with the
Trademark Act Section 5(2) the state protects the exclusive right of the proprietor of a protected
trademark to the trademark.  The provisions of the protection of exclusive right apply to a protected
trademark and do not stipulate the obligation of registration.
6. Please describe in detail the manner in which well-known marks are protected in Estonia,
including indicating the criteria used to determine whether the mark in question is well known.
 The protection is regulated by the Trademark Act Sections 5(4) and 33(2).
"§ 5. Legal regime of trademarks(4) The owner of a trademark has the right to prohibit the use of the trademark in relation
to the same or similar goods and services as well as other goods and services if the
trademark is well-known in the Republic of Estonia and such use takes unfair
advantage of or is detrimental to the distinctive character or reputation of thetrademark."
"§ 33. Protection of exclusive right of trademark owners(2) The exclusive right of the owner of a we ll-known trademark in the meaning of Article
6bis of the Paris Convention for the Protection of Industrial Property shall be
protected by state supervisory agencies as of the certification of the trademark as
well-known by a court or by the Patent Office.  The Patent Office shall certify the
trademark as well-known only in connection with the processing of the trademark."
The Trademark Act does not establish the criteria to determine the well-known mark. The
results of customer and market research are mainly taken into consideration in processing ofregistration application.
D. G
EOGRAPHICAL INDICATIONS
7. Please describe in detail the protection available for geographical indications under
Estonia's Consumer Protection law.
There are no detailed provisions regarding the protection of geographical indications under
the Consumer Protection Act.  Detailed protection of geographical indications is to available under the
Geographical Indications Protection Act, which was adopted on 15 December 1999 and entered into
force on 10 January 2000.  Act will be notified to the WTO in the nearest future .
8. Please describe in detail the manner in which Estonia's Alcohol Act prevents the use of
geographical indications for wines and spirits that do not originate in the area indicated by the
indication.IP/C/W/235/Add.1
Page 6
Under Alcohol Act, the only provision dealing with geographical indications states that the
committee deciding on the entry of alcohol in the registry shall take into account the legal acts and
international agreements concerning the legal protection of trademarks and geographical indications.
In detail, the legal protection of geographic indications for alcoholic beverages is covered by
Chapter 3 of the Geographical Indications Protection Act.
E. INDUSTRIAL DESIGNS
9. Please describe in detail the protection available for textile designs in Estonia.
The protection of textile designs is based on the Sections 4(1) and 4(2) of Industrial Design
Protection Act:
"4. Definition of industrial design
(1) An industrial design is a two-dimensional or three-dimensional solution of the
appearance of a product.
(2) For the purposes of this Act, the solution of the appearance of a product is the
composition of the features of the appearance of the product that consists, either
separately or in combination, of the form, the configuration, the ornament, the
colour(s), the texture and the material."
An industrial design may have variants (Industrial Design Protection Act Sections 4(4) and
5(5)).
"4. Definition of industrial design
(4) Industrial design may have variants.  The variants of an industrial design are such
modifications of an industrial design that  produce the same overall impression on a
person skilled in the art."
"5. Granting of legal protection to industrial designs(5) Variants of an industrial design shall each be given independent legal protection."
F. P
ATENTS
10. Section 47 of Estonia's patent law authorizes the grant of compulsory licenses in certain
circumstances.  The section includes provisions for many of the conditions established by Article 31 of
the TRIPS Agreement.  Please describe in detail, how each of these conditions not included in the law
is provided for and cite to the relevant sections of law or regulations.
All provisions of TRIPS Article 31, are included in Section 47 of the Patent Act. By Estonia's
patent law only the court shall grant compulsory li cense.  This requirement applies even in case of
national emergency or other circumstances of extreme urgency. The government or any government
agency of Estonia has no authority to grant compulsory licence.
Disputes of granting licences are regulated by Section 55(2) of the Patent Act:"(2) Actions referred to in this Act fall within the jurisdiction of the court in the
jurisdiction of which the Patent Office is located."IP/C/W/235/Add.1
Page 7
The court shall resolve patent disputes pursuant to procedure prescribed by the Code of the
Civil Procedure, taking into account the specifications prescribed by the Patent Act.
Permissions of block exemptions, which restrict or may restrict competition, are stipulated in
the Resolution of the Government of Estonia No. 359 of 23 November 1999.
11. Section 57 of Estonia's patent law provides t hat the Estonian Patent Office can become a
third party in court patent infringement proceedings.  Please explain in detail what the Patent Office's
role would be as a third party.
The Patent Office participates as a third party in administrative proceedings, where its role
mainly is to explain its decisions which have been contested and in civil proceedings the Patent Office
may participate as an expert upon the respective request, but such cases are rare.
G. UNDISCLOSED INFORMATION
12. Paragraph 3 of Article 39 of the TRIPS Agreement requires that Members protect certain test
data submitted to obtain marketing approval for pha rmaceutical and agricultural chemical products
from disclosure and from "unfair commercial use" .  Please explain how Estonia implements these
obligations under the Medicinal Products Act.
The Ministry of Social Affairs and the State Agency of Medicines have drafted amendments
to the Medicinal Products Act, which cover the requirements of Article 39 of the TRIPS Agreement.
According to the Competition Act confidential information is defined as any technical,
technological or other business information the publication of which is not mandatory, andinformation concerning commercial negotiations, transactions, market research and other
circumstances.  Misuse of confidential information is the use of confidential information of another
undertaking if such information is obtained unlawfully or the use thereof is contrary to an agreement
entered into with the other undertaking.  The misuse of confidential information is prohibited.
The Estonian Databases Act stipulates that data maintained in state and local government
databases is public, except if access to or release of data is prohibited by law or if the data is intended
for internal use only.
H. E
NFORCEMENT
13. Please state whether decisions on the merit in court proceedings are provided in writing and
if those written opinions are available to the public so that people can become familiar with the law.
The principle of written decisions is stipulated in every procedural code in Estonia
(Section 230 of the Code of Civil Procedure, Secti on 261 of the Code of Criminal Procedure, Section
25 of the Code of Administrative Procedure).  Therefore, all the decisions in court proceedings are
provided in writing.
As to the possibility of people becoming familiar with the court decisions – the decisions of
the Supreme Court are published in State Gazette ( Riigi Teataja ) and are available on Internet as well.
14. Please state whether judicial authorities have authority to adopt provisional measures
inaudita altera parte, as required under Article 50.2 of the TRIPS Agreement and under whatcircumstances that authority will be invoked.
Code of Civil Procedure Section 155 stipulates:IP/C/W/235/Add.1
Page 8
"(1) On the application of a party, a court may secure an action by a ruling.  An action
may be secured throughout the proceeding in a matter if failure to secure the action
may render compliance with the judgement difficult or impossible.
(2) A court may secure an action not earlier than one month before the filing of the action
on the basis of a reasoned written petition.  A petition for securing an action shall be
filed with the court with which the action should be filed pursuant to the provisions
concerning jurisdiction; the petition shall set out the reasons for not filing the action
immediately.   …
(5) A court shall send a ruling on the securing of an action to the other party after the
execution of the ruling.  …"
Section 158(2) stipulates:  "(2) The defendant and other participants in the proceedings shall
not be notified of the hearing of a petition for the securing of an action".
The measures for securing action are stipulated in section 156:
"1) the establishment of a judicial mortgage on an immovable belonging to the
defendant;
2) the making of a notation in a property register concerning a prohibition on
disposal of property;
3) seizure of a movable belonging to the defendant which is in the possession of
the defendant or another person;
4) a prohibition on a defendant from departing from his or her residence;
5) a prohibition on the defendant from entering into certain transactions or
performing certain acts;
6) a prohibition on other persons from transferring property to the defendant or
performing other obligations with regard to the defendant;
7) in the case of the filing of an action for release of property from seizure,
suspension of the compulsory sale of the property;
8) suspension of collection in an execution proceeding if the execution
document is contested by the filing of an action.
(2) A court may apply several measures concurrently to secure an action.  …"
15. Please indicate if the Estonian customs authorities have ex officio authority to take action to
delay release goods into free circulation suspected counterfeit trademarked goods and pirated
copyrighted works and cite to the relevant provisions of law.
According to Section 65 of the Customs Act "unl awful carriage of goods across the customs
frontier" (including carriage of forbidden goods across the customs frontier) is a violation of customs
rules.  Therefore a person can be held liable according to Section 69 of the Customs Act – a fine up tothe threefold value of the goods which are the direct object of the violation is imposed on a person
unlawfully carrying goods across the customs frontier.IP/C/W/235/Add.1
Page 9
Subsection 8 of Section 69 stipulates:  "In the case of a violation specified in clause (2) 3) of
this section, the customs authorities may seize the goods which are presumed to be the direct object of
the violation of the customs rules.  Objects, substances and other assets subject to mandatory seizure
by the customs authorities shall be provided in subsection 238 (1) of the Code of Administrative
Offences. Application of seizure is not connected to the imposition of a punishment.  Seizure may beapplied regardless of the fact to whom the seized objects, substances or other assets belong or whether
the legal holder thereof is identified".
Subsection 1 of Section 238 of the Code of Administrative Offences stipulates that subjects to
seizure include among other items:
- a means or instrument used to commit the administrative offence;- a vehicle which has been specifically reconstructed for the purpose of violating the
customs rules and by, in, or with the assistance of which goods which are deemed to
be the direct object of a violation of the customs rules were or were intended to be
transported;
- pirated goods;- counterfeit goods.
In case customs authorities have a reason to believe that a good is counterfeited or pirated, the
customs authorities can sustain the goods on thei r own and ask assessment as follows – Section 45(1
1)
of the Customs Act stipulates:
"Goods with regard to which there is reason to believe that they are counterfeit or pirated
goods shall be assessed by:
1) the proprietor or a representative of the proprietor of the trade mark, or the
holder or a representative of the holder of the rights of the proprietor of the
trade mark, or;
11) the lawful user of the registered geographical indication, or;
2) the owner or a representative of the owner of the industrial design, or the
holder or a representative of the holder of the rights of the owner of the
industrial design, or;
3) the author or the representative of the author, or the holder or the
representative of the holder of the rights of the author, or;
4) the holder or a representative of the holder of the rights related to the
copyright".
In case the mentioned persons assesses goods as counterfeit or pirated, the customs authorities
can start administrative procedure as described above.
16. Please indicate the Estonian authorities responsible for criminal actions involving
intellectual property rights and indicate whether their authority extends to other forms of intellectual
property rights.
According to Section 93 of the Code of Criminal Procedure the criminal proceedings are
commenced by a preliminary investigator or prosecutor.IP/C/W/235/Add.1
Page 10
According to Customs Act Section 68 customs, police and border guard officials shall prepare
a report on a violation of the customs rules.  Section 75 of the Customs Act also stipulates, that the
customs authorities are pre-trial investigation authorities in matters concerning violation of the
customs rules and they shall follow the legislation regulating criminal procedure.
17. Please provide statistical information related to civil copyright, trademark, geographical
indication, industrial design, patent, integrated circuit layout-design, and trade secret enforcement
for each of the years 1998 and 1999, including th e number of cases filed; injunctions issued;
infringing products seized; infringing equipment seized;  cases resolved (including settlement);  and
the amount of damages awarded.
See answer to question no 18.
18. Please provide statistical information related to criminal enforcement in the area of copyright
piracy and trademark infringement for each of the years 1998 and 1999, including the number of
raids, prosecutions, convictions, and the amount of fines and/or jail terms (including whether the fines
were paid and whether the jail term was actually served or was suspended) and any other information
establishing that the criminal system operates ef fectively to deter copyright piracy and trademark
counterfeiting.
Six hundred and sixty six legal and natural persons have been controlled during the first nine
months of the year 2000.  41862 items of pirated products have been discovered and 40832 infringing
products have been seized.  Protocols on the grounds  of the Code of Administrative Offences were
composed in 53 cases.  The total amount of the fines prescribed by the courts was 190510 EEK.
Fifty nine criminal cases were filed, including five cases on the grounds of Section 278 of
Criminal Code, 47 cases on the grounds of Section 280 of Criminal Code, one case on the grounds of
Section 281 of Criminal Code and 6 cases on the grounds of Section 283 of Criminal Code.  Eightprosecutions were made during the first 9 months of the year 2000.
19. Please describe any new initiatives that are planned to improve enforcement of intellectual
property rights in Estonia, particularly initiatives related to criminal enforcement.
Establishment of Media and Copyright Department in the Ministry of Culture in the
beginning of 2000 was an important step in enforcement of intellectual property rights.  The
Department deals among other matters with supervision of legal acts concerning intellectual propertyrights.
A number of training courses have been organized for police, customs authorities and judges
during the year 2000.  For example:
- a seminar for members of the copyright committee;
- seminar for performers, producers of phonograms and broadcasting organizations;- special seminars for enforcement institutions.In addition, more training programmes and seminars are being prepared in order to raise the
administrative capacity and competence of officials involved in enforcement of intellectual property
rights.IP/C/W/235/Add.1
Page 11
In May 2000, a special task force was formed by the Tallinn Police Department for combating
piracy.  Daily raids have been organized in order to remove pirated goods from the marketplaces.  The
seized goods included pirated CD's, videotapes, software and other goods.   
__________