Annual Technical Report on Trademark Information Activities in 2016 submitted by the Estonian Patent Office
I. GENERAL OVERVIEW OF RECENT DEVELOPMENTS IN TRADEMARK INFORMATION ACTIVITIES CARRIED OUT BY THE OFFICE
In Estonia, it is possible to apply for the protection of trade marks under the Trade Marks Act that took effect on 1 May 2004 (the first Trade Marks Act entered into force in 1992). From 1 May 2004, the EU legal acts concerning trade marks are also valid in Estonia.
Since spring 2007, it has been possible to file the trade mark applications through the electronic filing portal. The portal enables to fill in and send trade mark registration applications to the Estonian Patent Office and to look at the applications filed earlier. Anyone can fill in the form, but only the applicant (or a patent attorney representing him/her) can sign it. Estonian ID-card and its reader are required. Upon request, the Office issues a notification about the acceptance of the application. The notification can be saved or printed. 66.7% of the Estonian applicants used the possibilities of e-filing in 2016. Other documents relating to the examination can be filed electronically with a digital signature.
There are four possibilities to obtain legal protection for a trade mark in Estonia:
- by registering it in the register of trade marks and service marks by filing an application with the Estonian Patent Office;
- by registering it with the International Bureau of the World Intellectual Property Organization (WIPO), requesting legal protection in Estonia;
- by making a trade mark well known in Estonia;
- by registering it as a Community trade mark with the Office for Harmonization in the Internal Market (OHIM).
1,157 trade mark registration applications were filed in 2016 (1,320 applications in 2015). Estonian applicants filed 975 applications (1,091 in 2015). International trade mark registrations designating Estonia numbered 923 (1,245 in 2015). In total 2,080 trade marks were filed for legal protection (2,565 in 2015).
At the end of the year, 1,325,796 European Union trade marks were valid in Estonia (including 1,826 trade marks from Estonia), 27,496 registered national trade marks and 29,474 international trade marks with legal protection extended to Estonia.
Estonian applicants filed 22 international trade mark registration applications for forwarding to WIPO (42 in 2015). There were more than 20 countries among the countries designated for protection, USA, Latvia and Lithuania being the first three.
In 2015, Estonian applicants made up 47% of the total of trade mark applications. Among other states Russia was the most interested in gaining legal protection in Estonia. Applications and international registrations from Russia formed 5.4% of the total of applications, followed by China (4.6%), Switzerland (4%) and USA (3.2%).
The most popular goods for which legal protection was applied in 2016 were pharmaceutical preparations (5.8%), foodstuffs (4.5%), electronic and computing apparatus (4.4%), and alcoholic beverages (3.9%).
The most popular services were advertising, business management and office functions (10%), followed by education, training, entertainment, cultural and sports activities (6.8%), services for providing food and drink; temporary accommodation (4.3%).
For those who are interested, including the Customs Authorities, Police and Commercial Register, the Trademark Database is available on the Office’s web page. This contains data about registered and pending trade marks, as well as international registrations designating Estonia. The database is updated every day, so the data is always up to date.
Trade mark applications are fully examined on both absolute and relative (prior right) grounds. The average duration of the examination of trade mark applications and international registrations is 9.2 months. The examination of national applications from filing an application until making the decision took approximately 9.3 months.
Trade marks are published in the Estonian Trade Mark Gazette twice – first, in Part I when the decision on trade mark registration has been made, and second, in Part III after the trade mark has been entered into the register of trade marks and service marks. International registrations are published for appeal in Part II of the Gazette.
Disputes concerning trade marks are resolved in the Industrial Property Board of Appeal, and in court.
In 2016, 9 appeals and 14 oppositions were granted in the Industrial Property Board of Appeal. Out of all the decisions that were made during examination, granted appeals and oppositions make up less than 1.2%.
Outline of main policies and plans aimed at development of trademark information activities and expected time frames for their realization
New projects launched or resumed this year in the context of the policies and plans mentioned above, short description: aims, partners, tasks
Main areas of trademark information activities and related information and communication technology (ICT) practices which were in the focus of attention last year
Statistics: changes in terms of application filings and registrations with respect to previous year; trends or areas experiencing rapid changes
Other matters and useful links (URLs): annual report of the Office, news page, statistics, etc.
http://www.epa.ee/sites/www.epa.ee/files/elfinder/dokumendid/aasta2016.pdf
II. SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE
http://www.epa.ee/en/additional-info/free-consultations
Information and support provided by the Office to applicants regarding filing on paper and/or e-filing (instructions, seminars, etc.) - URLs
http://www.epa.ee/en/how-protect-your-trade-mark/how-protect-your-trade-mark-estonia
Availability of the application dossier in electronic form
Matters concerning classifying
(i) Classification and reclassification activities; classification systems used, e.g., International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), International Classification of the Figurative Elements of Marks (Vienna Classification), other classification
(ii) Use of electronic classification systems and pre-defined terms of the classification applied
Matters concerning processing of different types of non-traditional marks (e.g., three-dimensional, motion, hologram, color mark, etc.)
Other activities
http://www.epa.ee/sites/www.epa.ee/files/elfinder/dokumendid/aasta2016.pdf
III. SOURCES OF TRADEMARK INFORMATION PROVIDED BY THE OFFICE
Main types of publications in the field of trademark information, outline of the content and medium (on paper, on CDs, online - URLs)
Official Gazettes: main types of announcements, frequency of publication, medium (on paper, on CDs, online, URL), etc.
Information products (coverage, medium, etc.) available to examiners, including external documentation and databases
Information products (coverage, medium, etc.) and services available to external users; conditions of access (e.g., free of charge, subscription, etc.)
Legal status information (kind of information, coverage, medium, etc.)
Other sources
IV. ICT SUPPORT TO SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE
In 2016, the most important event on the field of IT in the Estonian Patent Office was the introduction of new software package Back Office for trade marks and designs. Said system was developed by the OHIM Cooperation Fund and customized to meet the neeeds of the Estonian Patent Office. Back Office replaces Common Software that was in use since 1996, and enables to carry out electronic examination of trade marks and industrial designs. The system is linked to many IT-interfaces and X-road solutions. The new system enables to send digitally signed documents, to check data in the business register and population register, to use the address register to enter Estonian addresses, to check a person’s data in the European Union and United Nations consolidated list. It is also linked to a financial service which is a subsystem of the register of taxable persons – a register that administers the financial claims of the country and keeps account how these are fulfilled.
The new information system for trade marks and industrial designs is connected to the portal of e-services (teenused.epa.ee), at the portal applications concerning the registration, period of validity, changes in data and transfer of rights and ownership of trade marks and designs can be filed with the Patent Office.
The use of e-services should simplify and encourage people to offer innovational solutions. At the Office’s web page (www.epa.ee), through a portal (online.epa.ee) online applications concerning the enforcement of patents, utility models and European patents can be filled in and filed with the Patent Office. During the next few years we also aim to modernize the information systems of inventions.
Raising publis awareness is extremely important. Services of electronic search databases can be also used on our web page (http://www.epa.ee/en/additional-info/databases). The trade mark database and industrial designs’ database got a modern, mobile-friendly look this year. The trademark database is the most visited, but visits to the inventions’ and industrial designs’ databases are also frequent according to user statistics. We also display the overview of supplementary protection certificates for medicinal products and plant protection products (SPC) on our web page.
The Patent Office is also responsible for forwarding the data concerning the subjects of legal protection of industrial property of Estonia to international databases. Information is available on international trade mark search portal TMView (www.tmdn.org/tmview/welcome) and WIPO database Global Brand (www.wipo.int/branddb); industrial designs can be searched in portal DesignView (www.tmdn.org/tmdsview-web/welcome); patents and utility models in worldwide database of patents Espacenet (worldwide.espacenet.com).
Specific software tools supporting business procedures within the Office: general description, characteristics, advantages, possible improvements
Hardware used to supporting business processes of the Office
Internal databases: coverage, updates, interlinks with external sources
Establishment and maintenance of electronic search file: file building, updating, storage, documents from other offices included in the search file
Administrative management electronic systems (register, legal status, statistics, and administrative support)
Other matters
V. PROMOTION ACTIVITIES AIMED TO SUPPORT USERS IN ACCESS AND EFFICIENT USE OF TRADEMARK INFORMATION
In 2016, the Estonian Patent Office arranged or helped arrange 27 information events in order to raise the awareness of intellectual property. Regular seminars concerning the protection of inventions, trade marks and industrial designs took place in the classroom of the Patent Office and round table meetings was arranged with the patent attorneys.
In 2016 the cooperation with county development centres (Järva County Development Centre, Rapla County Development Centre, Harju County Entrepreneurship and Development Consultancy, Saaremaa Development Centre) and Tallinn City Enterprise Department became more extensive – joint events were organized where the importance of intellectual property protection was empathized. The products and experience in the field of IP protection of several enterprises (Ulaelu Ltd., Creative Woodworks Ltd., Leisi Lapikoda Ltd. and Digimist Ltd.) were also introduced.
The year 2016 was an exceptionally busy year in terms of international cooperation – two seminars were held for interested people. In October, in collaboration with the United States Patent and Trademark Office and Finnish Patent and Registration Office a seminar was arranged for the users of the Patent Prosecution Highway, and in November, in collaboration with WIPO, a seminar introducing the services of WIPO.
Moreover, in autumn 2016, WIPO started a pilot project called “Baltic States Pilot Project for the Development of a Regional Pool of IP Commercialization Experts” where 17 universities from Latvia, Lithuania and Estonia take part. This is a capacity building program for regional professionals to develop necessary competences in the area of knowledge transfer and IP commercialization. As a result, a regional pool of experts and a cooperation network between Baltic universities will be established. The project will be carried out from 2016 to 2017.
Office's library (if deals with trademark information): equipment, collection management, network of libraries in the country, cooperation with foreign libraries
Publications related to different business procedures and trademark information sources available to users, for example, books, brochures, Internet publications, etc.
http://www.epa.ee/en/publications/methodical-publications
Cooperation with universities, technology and innovation support centers, etc.
Education and training: training courses, e-learning modules (URLs), seminars, exhibitions, etc.
http://www.epa.ee/et/seminarid in Estonian
Other activities
In 2015, the specialists of the Estonian Patent Office continued to provide free consultations on the compilation of trade mark, industrial design and utility model applications as well as patent applications.
57 people were interested in industrial design consultations (36 in 2015) and they were consulted for 47 hours (25 in 2015). In addition, many more received advice by phone or e-mail. Presentations on legal protection of industrial designs were also given in the Patent Office, but also for example in Kuressaare.
The examiners of trade mark department consulted 116 people for 60 hours in 2016, many more received trade mark advice by phone or e-mail. Presentations on trade marks were given at the regular trainings in the Patent Office, but also in the framework of the intellectual property day and at the seminars in Kuressaare and Rapla. Presentations were also given at the Järva County Development Centre.
238 people received 169 hours of advice on inventions.
E-mail enquiries are mostly received via info@epa.ee and helpdesk@epa.ee. We also provide phone consultations and consultations at the office.
VI. INTERNATIONAL COOPERATION ACTIVITIES IN THE FIELD OF TRADEMARK INFORMATION
International exchange of trademark information in machine-readable form (e.g., Official Gazettes)
Participation in international or regional activities and projects related to trademark information
Assistance to developing countries
Other activities