Industrial Property Board of Appeal

The Board of Appeal is an independent pre-trial institution that solves appeals filed to contest the decisions made by the Patent Office in cases prescribed in the legal acts: complaints concerning the decision, registration procedure, refusal or delay of the registration procedure, and disputes between the third party and the applicant or owner, based on the third person’s opposition, request for the invalidation or termination of the exclusive right, request for the revocation of the right granted to the object of industrial property, or other request.

The Board is located at the Patent Office, but is independent in its activities. As a permanent member and chairman of the Commission, Tanel Kalmet has been appointed by the Minister of Justice since 25 October 2019, and Sulev Sulsenberg has been appointed by the Minister of Justice as a member and vice-chairman of the Board since 13 April 2020. Where the law provides for a collegiate decision of the Board, one or two additional members from the experts in the field shall be included in the decision-making body. The list of additional members has been approved by the Minister of Justice from among Patent Office officials, patent attorneys and other experts in the field. A total of 38 additional members are on the list, 20 of them active in the trade mark area. The duties of Board secretary are carried out by Marit Soomets from 2019.

The web page toak.epa.ee of the Board of Appeal has been updated in 2020 with sub-pages (pending appeals and oppositions and initiated final procedures and decisions) and now contains information on the subject and nature of the procedures. References to the relevant records in the trade mark database of the Patent Office have also been added to the Board’s web site. The collegial decisions of the previous composition of the Board can be found on a separate page.

The appeals and requests filed with the Board in 2020, and the collegial and exclusive decisions taken, concerned trade marks exclusively. A total of seven appeals (7 in 2019) and 94 requests (90 in 2019) were filed with the Board during the year. The vast majority of the requests submitted (82) were oppositions, fewer requests were filed for the declaration of invalidity (6) and for the declaration of termination of the exclusive right. The four appeals and 69 requests concern Estonian national trade marks, the rest international trade marks. By month, the most requests were received in April (13), the least in June (2). As regards the 15 requests submitted last year, the Board has taken a collegial decision, in 26 cases the request procedure has been completed by an exclusive decision for various reasons (includes exclusive grant, rejection, withdrawal of the request, etc.). The procedure continues in respect of 61 appeals or requests submitted in 2020, in addition to the appeals and requests previously filed (38). The procedure for the four requests submitted in 2020 has been suspended; in total, 23 procedure have been suspended in the Commission.

Year 2016 2017 2018 2019 2020
Appeals and oppositions filed 42 55 43 97 101
Decisions of the Board of Appeal 33 51 48 31 53

With the decision, the Board of Appeal either dismisses the appeal or opposition, or grants it in full or in part. In 2020, the Board made 53 collegial decisions. The Board of Appeal fully granted 39 requests (including one request for termination of the exclusive right; the rest are opposition requests) and dismissed 6 requests. 33 decisions were taken in an accelerated procedure, i.e. in a situation where the applicant or the owner had not indicated their intention to oppose the request. The Board also granted four complaints and dismissed also four complaints.

In general, the resolution of the dispute takes place in a written examination and a session will be arranged only in exceptional cases. In 2020, one dispute was discussed at a session.

Author

Tanel Kalmet
Tanel Kalmet

Chairman of Industrial Property Board of Appeal