WORLD TRADE ORGANIZATION
ORGANISATION MONDIALE DU COMMERCE
ORGANIZACIÓN MUNDIAL DEL COMERCIOIP/N/1/EST/T/1
11 September 2000
(00-3486)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  English/
anglais/
inglés
MAIN DEDICATED INTELLECTUAL PROPERTY
LAWS AND REGULATIONS NOTIFIED UNDER
ARTICLE 63.2 OF THE AGREEMENT
ESTONIA
The present document reproduces the text1 of the Trade Mark Act, as notified by Estonia
under Article 63.2 of the Agreement (see document IP/N/1/EST/1).
Conseil des aspects des droits de propriété
intellectuelle qui touchent au commerce
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA
PROPRIETE INTELLECTUELLE NOTIFIEES AU TITRE
DE L'ARTICLE 63:2 DE L'ACCORD
ESTONIE
Le présent document contient le texte1 de la Loi sur les marques, notifiée par l'Estonie au titre
de l'article 63:2 de l'Accord (voir le document IP/N/1/EST/1).
Consejo de los Aspectos de los Derechos de Propiedad
Intelectual relacionados con el Comercio
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO
ESTONIA
En el presente documento se reproduce el texto1 de la Ley de Marcas de Fábrica y de
Comercio, notificado por Estonia en virtud del párrafo 2 del artículo 63 del Acuerdo (véase eldocumento IP/N/1/EST/1).
                                                     
1 In English only. The text in the original language is available for consultation by interested
Delegations at the WTO Secretariat./En anglais seulemen t.  Les délégations intéressées peuvent consulter le
texte dans sa langue d'origine, au Secrétariat de l'OM C./En inglés solamente.  Las delegaciones interesadas
podrán consultar en la Secretaría de la OMC el texto en su idioma original.IP/N/1/EST/T/1
Page 2
TRADEMARK ACT
Passed on 27 August 1992 (RT 1992, 35, 459),
entered into force 1 October 1992.
Amended by the following Acts (date the Act was passed, publication in the Riigi
Teataja  (State Gazette), date of entering into force):
15.02.1995 (RT I 1995, 26-28, 355) 01.09.199526.06.1996 (RT I 1996, 49, 953) 26.07.199617.12.1997 (RT I 1998, 4, 63) 13.01.1998The amended section ends with a reference to the Act (date the Act was passed)enforcing the current wording.
I. GENERAL PROVISIONS
§ 1. Purpose of the ActThis Act regulates the relations, which arise in the provision of legal protection oftrademarks and service marks and in the use of protected trademarks and servicemarks in the Republic of Estonia.
[26.06.1996]
§ 2. Legislation regulating legal protection of trademarksLegislation regulating the legal protection of trademarks comprises this Act, otheracts in this field and regulations based on the acts and issued by the Government ofthe Republic and the Ministers.
§ 3. International Agreements
If, in certain provisions of a bi- or multilateral international agreement to which theRepublic of Estonia is party, certain issues relating to trademarks are regulateddifferently from those of the legislation of the Republic of Estonia, the former shallprevail.IP/N/1/EST/T/1
Page 3
II. LEGAL PROTECTION OF TRADEMARKS
§ 4. Definition of the trademark and the service mark
(1) A trademark or a service mark (hereinafter trademark ) is a sign which a natural
or legal person uses or intends to use in economic and commercial activities in orderto distinguish his goods or services from the goods and services of the same kind tothose of the other natural or legal person.(2) Goods and services are classified in accordance with the internationalclassification of goods and services adopted under the Nice Agreement Concerningthe International Classification of Goods and Services for the Purposes of theRegistration of Marks.
[15.02.1995;17.12.1997]
§ 5. Legal protection of trademarks
(1) Natural and legal person may acquire legal protection for their trademarks in theRepublic of Estonia on the basis of and pursuant to the procedure prescribed in thisAct.(2) The State protects the exclusive right of the owner of the trademark to use thetrademark that has been granted legal protection.(3) No natural person or legal entity shall have the right, without the consent of theowner of the trademark, to use a trademark in economic and commercial activities ifit is identical with or confusingly similar to the protected trademark used fordesignation of the same or similar goods and services. The following constitute useof a trademark:1) affixation of the trademark to goods or packaging;2) offering goods for sale, putting them on the market or storage for the purpose ofsale of goods under the trademark;
3) offering or rendering services under the trademark;
4) importation and exportation of goods under the trademark;IP/N/1/EST/T/1
Page 4
5) use of the trademark in economic and commercial documents, advertising
materials or operating manuals relating to the goods.(4) The owner of a trademark has the right to prohibit the use of the trademark inrelation to identical or similar goods or services and other goods or services if thetrademark is well-known in the Republic of Estonia and such use takes unfairadvantage of or is detrimental to the distinctive character or reputation of thetrademark.(5) The owner of a trademark has no right to prohibit any third party from makinguse in economic and commercial activities of:1) the name or address of the third party;2) indications which designate the kind, quality, quantity,intended purpose, value orgeographical origin of goods and services, time of production of goods or ofrendering of services, as well as other indications characterising the services orproperties of the goods;3) the trademark if it is neccessary to indicate the intended  purpose of a good (e.g.as accessories or spare parts) or a service;4) elements of the trademark which are not subject to protection.(6) Upon publication of a registered trademark in reference books, manuals,textbooks, professional journals or other publications, the author and publisher shallensure that the publication includes a warning notice, at the request of the owner ofthe trademark, pursuant to Section 20 of this Act.(7) The owner of a trademark has no right to prohibit further distribution, sale oroffer for sale of goods which are affixed with the trademark by the owner or with theowner's  consent and put on the market in the Republic of Estonia or in foreignstates, or the storage, importation or exportation of goods for these purposes underthe trademark, except if the quality of the goods has changed after they are put onthe market.
(8) The scope of legal protection of a registered trademark shall be based on a
reproduction of the trademark.IP/N/1/EST/T/1
Page 5
(9) The scope of legal protection of a registered trademark in relation to goods and
services is determined by a list of goods and services. The list of goods and servicesindicated in the registration may be limited. Extension of the list of goods andservices is prohibited.
[15.02.1995; 17.12.1997]
§ 6. Registrable trademarks(1) Any sign or combination of signs which is capable of being representedgraphically and consists of letters, words, numerals or designs or is three-dimentional may be registered as a trademark provided that such signs distinguish thegoods or services of one natural or legal person from those of others.(2) A trademark may be registered in black-and-white or colour. A trademark whichis registered in black-and-white sign shall be protected in all colour combinations; atrademark which is registered in colour shall only be protected in the colourcombination claimed.(3) Trademarks which consist of sound or smell are not registrable.(4) A registrable trademark may include elements which are not subject to protectionunless this diminishes the distinctiveness of the trademark and does not infringe therights of other persons.(5) If, during subsequent use, an element of a registered trademark which is notsubject  to protection becomes well-known in the Republic of Estonia within themeaning of Article 6 bis of the Paris Convention for the Protection of Industrial
Property (RT II 1994, 4/5, 19) and thereby acquires a distinctive character, a newapplication for registration of the registered trademark may be filed to extend legalprotection to the entire mark.
[17.12.1997]
§ 7. Absolute grounds for refusal of trademark registration(1) The following shall not be registered as a trademark:
1) signs in conflict with the provisions of subsection 6(1) of this Act;
2) trademarks devoid of any distinctive character;IP/N/1/EST/T/1
Page 6
3) trademarks consisting exclusively of signs or indications which designate the kind,
quality, quantity, intended purpose, value, geographical origin of the goods orservices, the time of production of the goods or of rendering of the services, or othercharacteristics of the goods or services, or which consist of the above-mentionedsigns or indications which are not considerably altered;4) trademarks consisting exclusively of signs or indications which have becomecustomary in the current language use in relation to such goods or services for whichapplication for registration of a trademark is applied for, or which have becomecustomary in economic and commercial activities;5) signs consisting exclusively of the shape which results from the nature of thegoods, is necessary to obtain a technical result or gives substantial value to thegoods;6) trademarks which are of such nature as to deceive the consumer as to the kind,quality, quantity, intended purpose, value or geographical origin of the goods andservices, the time of production of the goods or of the rendering of the services, orother characteristics of the goods or services;7) trademarks which are contrary to public policy or accepted principles of morality;8) trademarks the registration of which must be refused on the basis of Article 6 ter
of the Paris Convention for the Protection of Industrial Property, unless the legallycompetent official gives written consent for the registration;9) trademarks which are not covered by Article 6 ter of the Paris Convention for the
Protection of Industrial Property but which contain the names or their abbreviations,flags, armorial bearings, emblems, seals, honorary distinctions, hallmarks indicatingcontrol and warranty, symbols, important elements of symbols or imitations of thesesigns of the Republic of Estonia or of undertakings or foundations of the Republic ofEstonia which are registered in the Republic of Estonia, unless the legally competentofficial gives written consent for the registration;
10) trademarks which contain the names or their abbreviations, flags, armorial
bearings, emblems, seals, honorary distinctions, hallmarks indicating control andIP/N/1/EST/T/1
Page 7
warranty, important elements of symbol or imitations of these signs, which are of
public interest, of other states or international organisations which are not specifiedin Article 6 ter of the Paris Convention for the Protection of Industrial Property,
unless the legally competent official  gives written consent for the registration.(2) Subparagraphs 2, 3 and 4 of paragraph 1 of this Section do not apply if it iscertified that by the date of receipt of an application for registration  of a  trademark(hereinafter also registration application ), the trademark  has, as a result of its use,
become well-known in the Republic of Estonia within the meaning of Article 6 bis of
the Paris Convention for the Protection of Industrial Property.(3) Where the sign mentioned in subparagraphs 2, 3, 4 or 5 of paragraph 1of thisSection is used in the composition of the trademark, the said sign shall be deemed asthe unprotectable part of the trademark.
[17.12.1997]
§ 8. Relative grounds for refusal of trademark registration(1) The following signs shall not be registered as trademarks:1) trademarks which are identical with earlier trademarks which are registered orfiled for registration in the name of another person to designate identical goods orservices;2) trademarks which are identical with or confusingly similar to or associated with anearlier trademark which is registered or filed for registration in the name of anotherperson to designate goods or services of the same kind, unless the other persongives  written consent for the registration;3) trademarks which are identical with or confusingly similar to or associated withearlier trademarks  registered or applied for registration in the name of anotherperson to designate goods or services of a different kind, where they may deceiveconsumers  and as a result take unfair advantage of the repute or be detrimental tothe distinctive character of another person's trademark, unless the other person
gives  written consent for the registration;IP/N/1/EST/T/1
Page 8
4) trademarks or markings of goods which belong to another person and are well
known in the Republic of Estonia on the date of receipt of the application forregistration of a trademark or on the priority date within the meaning of Article 6 bis
of the Paris Convention for the Protection of Industrial Property, regardless ofwhether or not it is registered, unless the other person  gives  written consent for theregistration;5) trademarks which are identical  with or confusingly similar to a trade namebelonging to another person provided that the trade name has been entered in thecommercial register prior to the date of receipt of the application for registration of atrademark or the priority date, and the other person's area of activity in respect ofwhich a notatation has been made in the commercial register includes the goods andservices for which an application for registration is filed, unless the other persongives  written consent for the registration;6) trademarks which include a portrait of a person, the name of a well-knownperson, the name of a real estate, the name or representation of an architecturalobject where it infringes the rights of the person depicted in the portrait, the well-known person or the person being the owner of the real estate or of the architecturalobject, and where the written consent of the entitled person for registration ismissing;
7) trademarks including protected industrial designs;
8) trademarks including creative works protected by copyright or their titles wherethe written consent of the entitled person for registration is missing;9) trademarks which include the active agent of a medicament or the name of amedicament belonging to another person and registered in the Republic of Estoniaprior to the filing date of the application for registration  or the priority date;10) trademarks which are identical with a trademark registered and in use in anothercountry if the application for registration is filed in bad faith.(2) An earlier trademark within the meaning of subsection (1) of this Section means:IP/N/1/EST/T/1
Page 9
1) a trademark entered in the State Register of Trademarks and Service Marks with
a filing date of the application for registration or priority date which is earlier thanthe date of receipt or the priority date of the application for registration of thetrademark in question;2) a trademark filed for registration in the Republic of Estonia with a date of receiptof the application for registration or priority date which is earlier than the date ofreceipt or priority date of the application for registration of the trademark inquestion, if  the trademark is entered in the State Register of Trademarks andService Marks;3) a trademark valid in the Republic of Estonia and registered under the Protocolrelating to the Madrid Agreement Concerning the International Registration ofMarks, with the date of registration or priority date which is earlier than the filingdate of the application for registration or priority date of the trademark in question.
     [17.12.1997]
III. REGISTRATION OF TRADEMARK
§ 9. Registration application of a trademark
(1) A registration application shall be filed  with the Patent Office by an applicant(natural or legal person) and accompanied by payment of the state fee.(2) A registration application may be filed, and all proceedings for the maintainanceof the trademark may be effected, through the patent attorneys of the Republic ofEstonia. Foreign natural or legal persons shall perform matters connected with theregistration and maintaining of trademarks in the Republic of Estonia through theEstonian patent attorneys.(3) A registration application  shall relate to one trademark only.(4) A registration application shall contain:1) the request for registration of a sign as a trademark, specifying the name of the
applicant (applicants) and  the applicant (applicants') location or residence;IP/N/1/EST/T/1
Page 10
2) the reproduction of the trademark;
3) the list of goods and services, classified in accordance with the internationalclassification of goods and services, for which registration of the trademark isclaimed, and the class numbers of the classification;4) documentary proof that the state fee has been paid or a copy thereof;5) the document of authority certifying the powers of the patent attorney or a copyof it, where the application for registration is filed through a patent attorney;6) the statutes of the collective mark, if  application for registration concerns acollective mark.(4
1) The document certifying the authority of the patent attorney or the copy of it
may be filed within two months after the filing date of the application forregistration .(4
2) The statutes of the collective mark may be filed within two months after the
filing date of the application for registration .(5) The documents of the application for registration  shall be filed in the Estonianlanguage.(6) The procedure for filing a registration application and the formal requirementsfor application documents are established by the Government of the Republic or theMinister of Economic Affairs as authorised by the Government of the Republic.
[15.02.1995; 17.12.1997]
§ 9
1. Estonian patent attorney
(1) An Estonian patent attorney is a professional and independent representative,providing legal advice on the legal protection of industrial property and acting on thebasis of authorization from such person.(2) An Estonian patent attorney may be a natural person resident and citizen of theRepublic of Estonia who is a resident within the meaning of the Income Tax Act (RTI 1993, 79, 1184; 1998, 9, 111), who complies with  the requirements established in
the statute of Estonian patent attorneys, has been evaluated pursuant to procedureIP/N/1/EST/T/1
Page 11
provided for in the statutes and has been entered in the State Register of Estonian
Patent Attorneys.(3) The statutes of Estonian patent attorneys shall be ratified by the Government ofthe Republic.(4) The statutes for maintaining the State Register of Estonian Patent Attorneys shallbe ratified by the Government of the Republic.(5) The chief and authorised processor of the State Register of Estonian PatentAttorneys is the Estonian Patent Office.
[17.12.1997]
§10. Priority of a trademark(1) The priority of a trademark is determined as of the date of receipt of theapplication for registration with the Patent Office.(2) The priority of a trademark may be claimed on the basis of the filing date of thefirst application for registration in any state party to the Paris Convention for theProtection of Industrial Property (Convention priority) if the application forregistration is filed with the Patent Office within six months after the filing date ofthe first application.(3) The priority date of a trademark  incorporated on exhibits which is displayed at
an international or officially recognised international exhibition in the territory of astate party to the Paris Convention for the Protection of Industrial Property(exhibition priority) is claimed on the basis of the first date of public display of theexhibit at such exhibition if the registration application is filed with the Patent Officewithin six months after the date of display. The requirements for internationalexhibitions are specified in the Convention on International  Exhibitions of 22November 1928, and  in the subsequent amendments to it.(4) An applicant wishing to claim either Convention or exhibition priority shallindicate such claim in the registration application and provide documents certifyingIP/N/1/EST/T/1
Page 12
the claim together with the claim or within three months after  the date of receipt of
the registration application by the Patent Office.
[17.12.1997]
§ 11. Filing a registration application of a trademark
(1) A registration application shall be filed with the Patent Office, which uponreceipt of the application shall check the compliance of the filed documents with therequirements of Section 9 of this Act.(2) If a registration application complies with the requirements, the application shallundergo examination and the Patent Office shall notify the applicant of the date ofreceipt of the application for registration .(3) If the Patent Office refuses to accept the registration application , the applicantmay, after payment of the state fee, contest the refusal at the Board of Appeal forIndustrial Property (hereinafter Board of Appeal ) within two months after the date of
refusal to receive  the application.The state fee shall be refunded if the Board of Appeal finds the decision to reject theapplication for registration unjustified.
Section 11
1. Files of  registration applications , access to and  and release of
information therefrom(1) The files of applications for registration and their processing is a structured bodyof data concerning documents of processed applications for registration andinformation on the processing thereof. The files shall contain information on aregistration application and the processing  thereof is maintained until the  cessationof processing.(2) Access to the files of applications for registration and their processing as well asthe release of information from the files shall generally be prohibited. The following
information from the files: reproductions of trademarks, numbers of applications forIP/N/1/EST/T/1
Page 13
registration, filing dates of applications for registration , information on priority,
names of applicants, names of  representatives of applicants, lists of goods andservices, and class numbers of the international classification.(3) Access to the files file containing information on the processing of a registrationapplication is granted to the applicant, persons who have the written consent of theapplicant, persons whom the applicant has notified in writing of the filing of aregistration application, competent officials of state agencies which have supervisoryauthority, and the courts.(4) Information from the files of   registration applications and their processing isavailable upon payment, except with the release of information to state agencies withsupervisory authority or to a court. A state fee is charged for the release ofinformation.(5) The files of registration applications and their processing is established by theGovernment of the Republic or by the Minister of Economic Affairs as authorisedby the Government of the Republic.  [17.12.1997] §
12. Examination of trademarks(1) If the examination of a registration application depends on the examination ofanother application for registration which has earlier priority, the examination issuspended until a final decision is made concerning the application for registrationwhich has earlier priority.(2) The examination may also be suspended, on the basis of a reasoned request ofthe applicant, for a period determined by the Patent Office.(3) During the examination procedure, the Patent Office may require the applicant tomake amendments and corrections by a fixed term. The applicant has the right toextend the term upon payment of the prescribed supplementary state  fee.(4) If an applicant fails to respect the term prescribed by the Patent Office, or to paythe state fee, or to respond to the decision made as a result of an examination, the
Patent Office shall reject the application for registration .IP/N/1/EST/T/1
Page 14
(5) During the examination procedure the applicant may withdraw the application for
registration, in which case the examination shall be terminated.(5
1) During the examination procedure the applicant may limit the list of goods and
services specified in the application for registration. Extension of the list of goodsand services is prohibited.(6) A trademark shall be registered where the examination reveals no issues beingthe ground for refusal of registration specified in Sections 7 or 8 of this Act.(6
1) Registration of a trademark shall be refused if the examination reveals at least
one issue being the ground for refusal of registration specified in Sections 7 or 8 ofthis Act. A decision on the refusal of trademark registration shall be reasoned.(6
2) A trademark shall be registered for some of the goods or services specified in a
registration application if  the trademark cannot be registered pursuant to Sections 7or 8 of this Act, for the remaining goods or services specified in the application forregistration. Registration of the trademark  for the remaining  goods or services shallbe refused.(6
3) A trademark shall be registered with a limitation if the Patent Office
determinesthat a particular element is an element which is not subject to protection pursuant tosubsection 7(3) of this Act.(7) The Patent Office may reconsider its decision on registration of a trademark  ifthere is a registration application which has an earlier priority in conformity with aninternational agreement to which the Republic of Estonia is party.(8) In the decision on registration of the trademark the Patent Office shall indicatethe unprotectable part of the trademark which is not subject to protection. Uponmaking a decision on registration of the trademark, the trademark shall be publishedin the Official Gazette of the Patent Office.(9) The processing of a registration application shall cease upon entering thetrademark in the State Register of Trademarks and Service Marks or upon refusing
of registration of the trademark or upon rejection of the application for registration .IP/N/1/EST/T/1
Page 15
[17.12.1997]
§ 13. Contesting the decision on trademark registration or refusal of trademark(1) Where the applicant disagrees with the decision of the Patent Office on refusal ofregistration of a trademark, the applicant may, after payment of the state fee, contestthe decision at the Board of Appeal within two months following the date on whichthe decision was made.The state fee shall be refunded if the Board of Appeal adjudicates the refusal oftrademark registration as unjustified.(2) The owner of another trademark or other interested persons may contest thedecision of the Patent Office on registration of a trademark at the Board of Appeal,after paying the state fee, within two months from publication of the trademark inthe Official Gazette of the Patent Office.
[17.12.1997]
§ 14. State Register of Trademarks and Service Marks(1) Trademarks shall be entered in the State Register of Trademarks and ServiceMarks (hereinafter Register ) after payment of the corresponding state fee. The state
fee shall be paid within three months after the expiration of the term for contestingthe decision on the registration of a trademark  or, upon contesting the decision,after cessation of the contesting  procedure. If the document proving  payment of thestate fee has not been submitted to the Patent Office by the end of the term, theapplication for registration shall be rejected.(2) The Patent Office is the chief and authorised processor of the Register.(3) The registry secretary is responsible for the maintenance of the Register at thePatent Office and for making the decisions on entries in the Register.(4) The Register is maintained as an entry book on paper carrier. The Register maybe maintained on computer storing the entries as print-outs.(5) The Register is maintained in Estonian. Documents in foreign languages shall be
submitted to the authorised processor together with the translation into Estonian.IP/N/1/EST/T/1
Page 16
(6) The expenses for maintenance of the Register is covered from the State Budget
via the budget of the Patent Office.(7) The statutes for maintenance of the Register shall be ratified by the Governmentof the Republic.
[17.12.1997]
§ 15. Trademark certificate(1) After the trademark has been entered  in the Register, the Patent Office shallissue a  trademark certificate to the owner.(2) The formal requirements for the certificate and the procedure for filling in thecertificate form are established by the Government of the Republic or the Minister ofEconomic Affairs as authorised by the Government of the Republic.
[17.12.1997]
§ 16. Publication of registered trademark(1) The Patent Office shall publish trademarks entered  in the Register in its OfficialGazette.(2) The statutes on the official publications of the Patent Office shall be ratified bytheGovernment of the Republic or  the Minister of Economic Affairs as authorised bythe Government of the Republic.
  [17.12.1997]
§ 17. Term of validity of trademark(1) The right to the trademark shall commence on the date of the filing of theapplication for registration until the expiration of 10 years from the date of entry inthe Register.(2) The validity of the trademark may be renewed at the corresponding request ofthe owner for a further period of 10 years each time if the owner files the requestIP/N/1/EST/T/1
Page 17
within one year before the expiration of the preceding period, against payment of the
state fee.(3) After expiration of validity of the trademark, the Patent Office may grant aperiod of six months to the owner of the trademark for the filing of the requestspecified in subsection 2 of this Section. The owner of the trademark shall pay thestate fees.(4) The Patent Office makes an entry on the renewal of the trademark in theRegister, publishes it in the Official Gazette of the Patent Office, and issues anannex to the certificate certifying the renewal.
[17.12.1997]
IV. USE OF TRADEMARK
§ 18. Requirement of trademark use
(1) The owner of a trademark shall be required to use the trademark; transactionsspecified in subsection 5(3) of this Act shall be construed as use of the trademark.(2) The requirements set forth in subsection 1 of this Section shall be deemed to becomplied with where the owner of a trademark gives a trademark licence to aninterested person.(3) The trademark shall be deemed to be used if the owner uses a trademarkdifferent from the registered trademark in minor details without changing thedistinctive character of the registered trademark.
[17.12.1997]
§ 19. Failure to use a trademark(1) Where the owner of the trademark has failed, without a substantiated reason, tocomply with the requirements set forth in Section 18 of this Act with in the course ofa continuous five-year period from the date of entering the trademark in the Registeror later, every interested person shall have the right to contest the validity of theIP/N/1/EST/T/1
Page 18
registration of the trademark. A state fee shall be paid upon filing of a revocation
application.(2) Revocation application based on the facts specified in subsection 1 of this Sectionshall be filed with the Board of Appeal who will notify the owner of the trademarkand shall invite him to furnish documentary proof of the use of the trademark. TheBoard of Appeal shall consider the revocation application and make a decision toreject the revocation application or  invalidate the registration in full or in part.
[17.12.1997]
§ 20. Warning noticeThe owner of trademark may use a warning notice together with the trademark toindicate that the trademark is registered in the Republic of Estonia.
[17.12.1997]
V. TRANSFER OF TRADEMARK§ 21.License for a trademarkThe owner of a trademark (licensor) may transfer the right to use the trademark toanother person/other persons (licensee/licensees) under a licence agreement. Anentry shall be made in the Register concerning the licence agreement  after paymentof the state fee.
[17.12.1997]
§ 22. Assignment of trademark
(1) The owner of a trademark may assign the registered trademark to a naturalperson or legal  entity for all or some of the goods or services.
(2) An entry shall be made in the Register concerning the assignment of the
trademark after payment of the state fee.
[15.02.1995; 17.12.1997]
§ 23.Transfer of trademark rightsIP/N/1/EST/T/1
Page 19
Upon the dissolution, merger, division or transformation of legal persons or upon
pledging of the trademark, the legal status of the trademark will change; the changeshall be entered in the Register after payment of the state fee.
[15.02.1995]
§ 24. Invalidation of registration of a trademark and deletion from the Register(1)  Upon the request of an interested person the Board of Appeal may invalidate theregistration of a trademark, where such registration was made in a manner contraryto the requirements of Sections 7 and 8 of this Act.(2) The request for invalidation of trademark registration may be filed with theBoard of Appeal after payment of the state fee within five years from the date ofentering the trademark in the Register.(3) A trademark shall be deleted from the Register by a decision of the PatentOffice:1) if the owner of the trademark files a corresponding request;2) if the period of validity of trademark expires and the owner of trademark hasfailed to comply with the provisions of Section 18 of this Act;3) upon the dissolution of the owner of the trademark legal entity or upon the deathof the owner of trademark (natural person) or on other legitimated reasons where therights conferred by the trademark have not been transferred to the new owner;4) if the registration of the trademark is invalidated on the basis of subsection 1 ofthis Section;5) on the basis of the provisions of Section 17 of this Act.
[15.02.1995; 17.12.1997]
VII. COLLECTIVE MARKS
§ 25. Definition of a collective mark
A collective mark is a trademark to which an association of legal persons has been
granted an exclusive right to use for designation of  its goods and services of theIP/N/1/EST/T/1
Page 20
association and those of its members in conformity with conditions prescribed in the
statute of the association or in the rules of the trademark.
§ 26. Registration of collective marks
A collective mark may be applied for in the name of an association and itsregistration shall be effected in conformity with the provisions of Chapter III of thisAct.
§ 27. Use of collective marks
A collective mark shall be used in conformity with the provisions of Chapter IV ofthis Act and the provisions of the statute of the association or of the rules of thetrademark.
§ 28. Invalidation of the registration of a collective mark
A collective mark may be invalidated in confirmity with the provisions of Section 24of this Act.
VII. STATE FEE§ 29. State Fee
In cases prescribed in this Act, state fees are charged for effecting transactions andissuing documents according to the rates stipulated  in the State Fees Act (RT I1997, 80, 1344; 86, 1461; 87, 1466 and 1467; 93, 1563; 1998, 2, 47; 4, 63).
[17.12.1997]
§ 30. Payment of state fees(1) The state fee shall be paid by the applicant, the trademark owner of  or a thirdparty interested in effecting transactions or the issue of documents prescibed in this
Act. If the state fee for registration of a trademark or for renewal of the period ofIP/N/1/EST/T/1
Page 21
the registration is paid by a third party, the written consent of the applicant or the
owner of the trademark is required.(2) The state fee is deemed to be paid if the Patent Office receives a document whichcertifies payment of the state fee or, in the case of an appeal, if the Board of Appealreceives such document.(3) The paid state fee shall not be refunded, except in the cases provided for insubsections 11(3) and 13(1) of this Act.
[17.12.1997]
§ 31 [repealed - 17.12.1997]
VIII. PROTECTION OF THE RIGHTS OF TRADEMARK OWNERS,
SETTLEMENT OF DISPUTES, LIABILITY
§ 32. Protection of the rights of trademark owners
The rights of the  trademark owner are protected in administrative procedure and incourt.
[17.12.1997]
§ 33. Protection of exclusive right of trademark ownersThe exclusive right of the trademark owner has been infringed if :1) for designating goods or services, a natural person or legal entity uses a signconfusingly similar to a sign designating goods or services of the same kind withoutthe consent of the owner, or performs other acts liable to infringe the exclusive rightof the owner;2) the licensee fails to comply with the conditions of the licence agreement.
[15.02.1995; 17.12.1997]
§ 34. Liability in the case of infringement of  the exclusive right of the
trademark ownersIP/N/1/EST/T/1
Page 22
(1)The acts of a natural or legal person that intentionally or through negligence,
effected transactions infringing the exclusive right of the trademark owner, shallentail civil or criminal liability, or both.(2) Calculation of the damages caused to the trademark owner or to the licensee shallbe based on the profit that he would have received from the normal use of thetrademark.
[15.02.1995; 17.12.1997]
§ 35. Settlement of trademark-related disputes at the Board of Appeal(1) Industrial property disputes shall be settled at the Board of Appeal establishedwithin the area of government of the Ministry of Economic Affairs. The statute  of
the Board of Appeal shall be ratified by the Government of the Republic or theMinister of Economic Affairs as authorised by the Government of the Republic.(2) The Board of Appeal shall consider appeals against the decisions of the PatentOffice lodged in compliance with subsections 11(3), 13 and 24 of this Act and shallconsider revocation applications made by interested persons lodged in compliancewith Section 19 of this Act.(3) The Board of Appeal shall notify the appellant, and if necessary, also the ownerof another trademark, the date and place of reviewing the appeal. Their failure toattend does not prevent the reviewing of the appeal.(3
1) The Board of Appeal shall make a decision on rejection of the appeal or on
satisfying it. Upon satisfying the appeal, the Board of Appeal shall revoke thedecision of the Patent Office and proposes the Patent Office to reconsider theapplication for registration and to make a new decision.(4) The Board of Appeal shall make a decision concerning the appeal within threemonths from the date of receipt of the appeal. The decision shall be notified to boththe appellant and to the owner of a trademark. The Board of Appeal may postponethe hearing of the appeal on a corresponding reasoned request or where the Board of
Appeal considers it necessary to request additional documents.IP/N/1/EST/T/1
Page 23
(5) Interested persons may appeal against the decision of the Board of Appeal in
court within three months from the date the decision was made.
[17.12.1997]
§ 36. Civil liability(1) The trademark owner whose rights have been infringed may bring civil actioncontaining one or more of the following requirements:1) to terminate the transaction infringing the rights of the trademark owner or thelicensee and that the situation obtaining prior to the infringement be restored;2) to compensate for the proprietary and moral damage caused to the trademarkowner or the licensee, including reimbursement for any shortfall in profits;3) to take measures to prevent the further infringement of the rights of the trademarkowner or the licensee, by removal from circulation all infringing matter.(2) Where the trademark owner refuses to bring action, the right to sue shall pass on
to the licensee except as otherwise provided in the licence agreement.
[17.12.1997]
IX. SPECIAL PROVISIONS
§ 37. Registration of trademarks in foreign states(1) Natural or legal persons of the Republic of Estonia shall register their trademarksin foreign states independently.(2) Natural or legal persons of the Republic of Estonia may register their trademarksin foreign states regardless of their registration in the Republic of Estonia.(3) Persons in whose name a trademark has been registered in the Republic ofEstonia or who have filed a registration application of a trademark, may file with thePatent Office an application for international registration of the trademark for thesame goods or services. An application for the international registration of atrademark  may be filed by a person who is a citizen of  the Republic of Estonia, has
permanent residence in the Republic of Estonia within the meaning of the termIP/N/1/EST/T/1
Page 24
“residence” referred to in § 21 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) or who owns an operating industrial or commercial enterprise in the Republicof Estonia within the meaning of the term “enterprise” referred to in § 5 of theCommercial Code (RT I 1995, 26-28, 355; 1996, 52-54, 993; 1997, 16, 258; 48,774; 77, 1313; 1998, 2, 48).
[15.02.1995; 17.12.1997]
§ 37
1. International registration of trademarks
(1) International registration of trademarks within the meaning of this Act is theregistration of trademarks in the International Register of the International Bureau ofthe World Intellectual Property Organisation (hereinafter International Bureau )
pursuant to the Protocol Relating to the Madrid Agreement Concerning theInternational Registration of Marks (hereinafter the Madrid Protocol ), adopted at
Madrid on 27 June 1989.(2) The Patent Office performs the duties proceeding from the Madrid Protocol inthe Republic of Estonia and it is the Office of Origin and the Office of theDesignated Contracting Party within the meaning of the Protocol.(3) Persons, who apply for the international registration of a trademark or renewalof the international registration, shall pay international fees pursuant to Article 8 ofthe Madrid Protocol directly to the International Bureau.
[17.12.1997]
§ 37
2. Applications for international registration of trademarks and their
national processing(1) An application for international registration of a trademark  (hereinafterinternational application ) which is filed pursuant to subsection 37(3) of this Act,
shall comply with the form and  content  requirements established in the MadridProtocol and its Regulations.IP/N/1/EST/T/1
Page 25
(2) An international application shall be filed with the Patent Office. The documents
of the international application shall be filed in English.(3) A state fee shall be paid for the filing of an international application.(4) The Patent Office shall check the compliance of the particulars appearing in theinternational application with the particulars of the registration application which isthe basis for the international application, or with the particulars appearing in thevalid registration of the trademark which is entered in the State Register ofTrademarks and Service Marks.(5) The Patent Office shall certify the authenticity of the particulars appearing in aninternational application and forward the application to the International Bureau.(6) The date and number of the international registration of the internationallyregistered trademark shall be entered in the State Register of Trademarks andService Marks if  the international application is made on the basis of a trademarkregistered in that Register, or a notice shall be made in the  registration applicationwhich is being processed  if the international application is made on the basis of suchapplication.(7) The Patent Office shall maintain a files of the documents of internationalapplications which are approved for processing nationally and on the processingthereof.(8) The procedure for filing applications for the international registration oftrademarks with the Patent Office is established by the Government of the Republicor the Minister of Economic Affairs as authorised by the Government of theRepublic.(9) The files of applications for the international registration of trademarks and thenational processing thereof is established by the Government of the Republic or theMinister of Economic Affairs as authorised by the Government of the Republic.(10) Information from the files of  applications for the international  registration of
trademarks and the national processing thereof is available upon payment, with theIP/N/1/EST/T/1
Page 26
exception of the release of information to state agencies with supervisory rights or to
a court. A state fee shall be paid for the release of information.
[17.12.1997]
§ 38. Registration of foreign trademarks on basis of international applications
(1) A trademark legally protected in the Republic of Estonia by virtue ofinternational registration shall have the same legal regime and enjoy benefits astrademarks registered in the Republic of Estonia.(2) If the owner of a trademark registered earlier in the Republic of Estonia effectsinternational registration for the trademark for the same goods and services on alater date, the earlier registration shall be replaced by the international registration.This provision does not apply to the persons specified in subsection 37(3) of thisAct.(3) If an international registration becomes invalid, the international registration inthe Republic of Estonia shall become invalid on the same date.(4) If the international registration of a trademark becomes invalid, the sametrademark may be registered in respect of the same goods and services in theRepublic of Estonia in compliance with the procedure specified in Chapter III of thisAct on the date of international registration if the trademark owner files a conversionapplication for registration with the Patent Office within three months from the dateof expiration of the international registration.(5) The Patent Office shall examine, pursuant to the provisions of this Act, theinternational registrations where the Republic of Estonia is the designated party.(6) The Patent Office shall notify the International Bureau within 18 months after thedate of notice of the international registration of a trademark, if the internationalregistration does not satisfy the conditions for registration of trademarks providedfor in this Act.IP/N/1/EST/T/1
Page 27
(7) The Patent Office may notify of the refusal of granting legal protection to an
international registration pursuant to Article 5(2)c of the Madrid Protocol after theexpiry of 18 months after the date of notice of the international registration.(8) If, as a result of the examination, it appears that the international registrationsatisfies the conditions specified in this Act, notice of the international registration ofa trademark shall be published in the official gazette of the Patent Office.(9) Any person may lodge an opposition against the international registration of atrademark at the Board of Appeal within two months after the date of publication ofthe notice of international registration of the trademark in the official gazette of thePatent Office. The Patent Office shall notify the International Bureau of suchopposition.(10) The Patent Office shall maintain a files of international registration oftrademarks  in which the Republic of Estonia is a designated party, and the nationalprocessing thereof.(11) The files of international registration of trademarks and the national processingthereof is established by the Government of the Republic or the Minister ofEconomic Affairs authorised by theGovernment of the Republic.(12) The release of information from the files of international registration oftrademarks and the national processing thereof shall be available upon payment, withthe exception  of the release of information to state agencies with supervisoryauthority or to a court. A state fee shall is charged for the release of information.
[17.12.1997]
Excerpt from the Act of 17 December 1997ACT AMENDING THE REPUBLIC OF ESTONIA TRADEMARK ACTII. Implementation of Act
§ 28. Implementing provisionsIP/N/1/EST/T/1
Page 28
(1) Unless otherwise provided in this Section, the provisions of this Act shall be
applied to trademarks whose registration application is pending on the day ofentering into force of this Act, or to trademarks that have been entered in theRegister before the entering into force of this Act.(2) The provisions of this Act shall not be applied while reviewing appeals lodgedbefore the entering into force of this Act against the decision of the Patent Office,the Board of Appeal and the court, and while making a new decision.(3) Where the term for contest of the decision on registration of the trademark has
expired or, upon contest, the contest procedure has ceased and the fee for enteringof the trademark in the Register has not been paid by the date of enetring into forceof this Act, the term referred to in Section 14(1) of the Trademark Act shall becalculated as of the date of entering into force of this Act.
§ 31. Entry into force of Act
This Act enters into force as of the day following the day of publishing it in the Riigi
Teataja , except Sections 24 to 26 of this Act that enter into force on the date of
entering into force of the Madrid Protocol with respect to the Republic of Estonia.
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