Amendments to the Trademark Act – a faster registration procedure and more options for trade
This year will bring major changes in the field of trademark protection. A draft amendment to the Trademark Act is in the proceedings of the Riigikogu, the adoption of which will make registration of trademarks in Estonia faster and less complicated. Upon adoption of the new trademark law, the Estonian trademark procedure will be harmonized with the European Union procedure.
Trademark registration to accelerate
The Bill removes the obligation of the Patent Office to verify the existence of similar rights (trademarks, trade names).
Today it takes about 10-12 months to register a trademark in Estonia. This is far too long for a problem-free procedure. By comparison, registration of a European Union trademark is significantly faster, about 4 months. The registrability of EU signs is verified by the European Union Intellectual Property Office (EUIPO). Unlike EUIPO, the Estonian Patent Office today checks whether similar trademarks have been protected in Estonia in the same field. If a similar trademark exists, the trademark applicant must submit a written permission of the proprietor of the earlier trademark to the Patent Office. Obtaining such a license is costly and time-consuming, and often impossible because it is impossible to contact the owner of the earlier trademark.
In the future, the verification by the Patent Office will be replaced by the pre-trial appeal procedure of the Industrial Property Board of Appeal. Those who do not like the registration of a later trademark will have the opportunity to contest the registration application. This means that every diligent trademark owner should monitor subsequent third-party trademark applications regularly. A similar system successfully works for EU trademarks.
Our experience with EU trade marks shows that, although many applications are challenged, disputes are mostly resolved by agreement between the parties. On average, only one third of the disputes are sent to the EUIPO appeal committee. Applicants need not go through costly and unpredictable disputes with the Patent Office, where the proprietor of an earlier trademark is often unable to prevent the later mark from being registered. Instead, it is more effective if each trademark owner monitor their rights and, in the event of a conflict between similar signs, the parties communicate with each other.
Restructuring of the Industrial Property Board of Appeal
The Industrial Property Board of Appeal is a mandatory pre-trial trademark dispute resolution body that reviews complaints and appeals against decisions of the Patent Office. In addition to trademark disputes, the Board also resolves disputes concerning designs and inventions.
The draft provides for reorganization in the Board of Appeal procedure, in order to ensure faster and more effective dispute resolution. The substantive settlement of disputes will be preceded by a so-called ‘settlement period’. The Board of Appeal will have the opportunity to make a decision under the accelerated procedure if the trademark registrant does not dispute and has no interest in taking part in the appeal procedure (analogous to a judgment rendered in absentia). Specific deadlines will also be set for the different stages of the Board of Appeal procedure. This will prevent the procedure from stopping and the parties will have a better overview of what is going on in the proceedings.
Opportunities to protect different types of trademarks to expand
According to the draft, the trademark will no longer be required to be graphically represented. The requirement for graphic representation means that the trademark to be registered should be represented by shapes, lines or characters. Removing this requirement will make it easier to record sounds, moving characters, multimedia marks and holograms, among other things.