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Trademark
In the case of legal protection of industrial property, the so-called principle of territory is employed, meaning that legal protection is granted to an industrial property object only in the country it has applied for registration.

There are various options of legal protection for trademarks. The choice is often individual and depends on the needs and financial possibilities of the applicant, the target market, trademark strategy and other factors. Below are described three different possibilities:

1. national trademark in a certain country;
2. international trademark under the Madrid Protocol;
3.
European Community trademark.

1. National trademark in a certain country. A trademark shall be granted legal protection upon filing a registration application with the Patent Office of the respective country. For example, submitting a trademark application with the Estonian Patent Office, when registered, the trademark will have legal protection only in Estonia. For legal protection in foreign countries, separate registration applications must be filed with the Patent Offices of the respective countries.

The following factors speak in favour of this system:

  • it is financially reasonable if the trademark needs to be registered only in some foreign countries; * if it is known beforehand that there might be a trademark conflict or grounds for refusing registration in a certain country which exclude the use of another registration alternative, the trademark can be registered without any obstacles in other countries of interest;
  • it is the only option if the person uses trademarks in different languages and/or of different style in different countries;
  • trademarks registered in different countries are independent of each other, also the examination at the patent offices is carried out independently of the patent offices of other countries;
  • one and the same trademark may have different list of goods and/or services in different countries.

The following factors speak against this system:

  • relatively expensive - a trademark registration application has to be filed with the Patent Office of the respective foreign country. To do that, the help of a patent attorney in that certain country has to be used which makes the registration in total rather costly (especially if there are several countries where protection is sought).

2. International trademark under the Madrid Protocol. Estonia is a member to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks which enables Estonian citizens/companies to apply for registration of their trademarks already registered or pending for registration in Estonia and also in other member countries of the Madrid Protocol of interest to the person (72 countries as by 15. 01. 2007).

The following factors speak in favour of this system:

  • it is relatively cheap in comparison to the national registration system - there is no difference in costs when obtaining legal protection in only few countries as compared to the national registration system, however costs will be different significantly with the increase in the number of countries;
  • simple procedure - one registration provides legal protection in many countries of interest to the applicant;
  • registrations obtained in foreign countries are independent of each other.

The following factors speak against this system:

  • it requires an already registered trademark or one pending for registration at the Estonian Patent Office;
  • the scope of legal protection of international trademarks (identical reproduction of the trademark, the list of goods and/or services cannot be extended) is determined with the main registration in Estonia;
  • the international registration is dependent on the Estonian main registration for five years - if the Estonian main registration should loose its validity within this period of time, so will the international registration;
  • individual countries do not issue a separate certificate of trademark registration - an international registration certificate is issued upon registration, also a note in the international and/or in the national data base of a certain country is made to constitute that the countries have not refused providing legal protection and that the decision on registration has been made;
  • upon manifestation of grounds excluding legal protection in a certain country, an opposition has to be filed with the Patent Office of the certain country via a local patent attorney which entails additional costs.

3. European Community trademark. With the registration of a European Community trademark, legal protection is obtained with just one application automatically across the whole territory of the European Union (in 27 European Union member states, including Estonia).

The following factors speak in favour of this system:

  • it is relatively cheap in comparison to the national and also the international registration system (considering the fact that legal protection is granted in 27 countries simultaneously);
  • simple procedure - one registration in one language provides legal protection in all the member states of the European Union.

The following factors speak against this system:

  • trademark vulnerability - if there are grounds for refusing registration even in only one member state or the trademark registration is opposed, the entire registration automatically loses its validity (inducing protection in all the other member states);
  • it does not provide legal protection in all European countries (for example Norway, Switzerland) and other neighbouring countries of interest to Estonian entrepreneurs (Russia, Ukraine, etc).
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