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What is a trade mark
A trade mark is a sign which makes it possible to distinguish the goods or services of one person from the goods or services of the same kind of another person.
The purpose of a trade mark is to help the consumer distinguish the goods or services of a particular manufacturer from other identical or similar goods.
A trade mark may consist only of words, only figurative elements, or a combination of the two, a three-dimensional shape, a sound, a pattern, a motion, etc.
A trade mark cannot be used to protect the content of the goods or services, the way in which the goods or services are manufactured or provided, or the composition of the goods.
Why register a trade mark
The function of a trade mark is to mark goods or services in such a way that the consumer is likely to repurchase the product or service. Thus, distinctiveness is essential for a trade mark, which also serves an advertising function. The product or service’s reputation makes the trade mark a valuable sign of quality that needs to be protected.
Registration of a trade mark is not compulsory, but it gives the proprietor the exclusive right to use the trade mark to mark specific goods or services. A registered trade mark confers the right to prohibit others from using identical or similar signs in the same field of activity in the territory where the trade mark is protected.
Trade mark protection must be bona fide, i.e., it must be intended to protect the applicant’s business and not to restrict freedom of competition or to deliberately hinder the business of another trader.
International classification of goods and services
The proprietor of a trade mark is entitled to protection for the goods and services covered by the application.
The goods and services are divided into classes according to an international system known as the Nice Classification, which consists of 45 classes.
Goods are classified mainly according to their purpose, function or material, and the activity or purpose of the service.
Classes are identified by class headings which define the primary type of the class. To determine the exact class of a particular good or service, the help of an alphabetical list or a list of goods and services by class can be used.
Good to know before applying for a trade mark
For successful registration, it is worth ensuring that no one else has a prior right to the trade mark you want for your product or service. To do this, it is a good idea to search your local and European or worldwide databases.
Trade mark registration in Estonia
The legal protection of a trade mark is territorial. By filing a trade mark application with the Estonian Patent Office, the trade mark will, upon registration, be valid only in Estonia.
The fee for filing a trade mark application is EUR 145 per class, i.e., if all the goods or services designated by the trade mark fall within one class. If there is a need to add other classes to the application, the fee is EUR 45 for each class added.
Trade mark registration can be handled through a patent attorney or independently. A person who does not have residence, seat or commercial or industrial enterprise operating in Estonia shall authorise a patent attorney as the person’s representative to perform procedures related to trade marks, except for filing the application.
Registration of a trade mark in the European Union
The European Union trade mark system can be used to apply for trade mark protection throughout the European Union as a whole, which also means that the protection will apply, inter alia, in Estonia. In the event of the enlargement of the European Union, trade mark protection will automatically extend to the new member states.
An application for a trade mark must be filed with the European Union Intellectual Property Office (EUIPO). The amount of the application fee depends on the number of classes of goods and services included in the application (fee information).
How to check whether your trade mark has been registered
In the case of an Estonian trade mark, the register of trade marks and service marks contains information on the procedure for the legal protection of a trade mark from the filing of the application until the registration. The register also records the activities related to the managing the application or registration.
Similarly, EUIPO and WIPO (World Intellectual Property Organisation) have their own online spaces for managing EU or worldwide trade mark applications and registrations.
Recommendations if your trade mark has been registered
The legal protection of a registered trade mark is valid for a period of 10 years, both in Estonia and in the European Union, and can be renewed for additional periods of 10 years on payment of a fee. With continuous renewal, the protection of a trade mark may continue indefinitely.
Suppose you discover that a later registered trade mark is identical or too similar to yours. In that case, you, as the proprietor of the earlier trade mark, have the right to challenge the decision to register the newer trade mark if you think it infringes your rights.« Back to articles