Pöördumine

Commission européenne/Europese Commissie, 1049 Bruxelles/Brussel, BELGIQUE/BELGIË – Tel. +32 22991111

Office: N105 01/039 – Tel. direct line +32 229-61662

[email protected]

EUROPEAN COMMISSION DIRECTORATE-GENERAL INTERNAL MARKET, INDUSTRY, ENTREPRENEURSHIP

AND SMES Competitiveness Coordination

D.3 – Intellectual Property

Brussels GROW.D.3/TE

Ministry of Justice and Digital

Affairs of Estonia

Attention of Mr. Kärt Nemwalts

Head of Intellectual Property and

Competition Law Division

By e-mail to:

[email protected]

Subject: Transposition of the Trade Marks Directive (EU) 2015/2436 – definition

of “third countries” in § 14(2) of the Estonian Trade Marks Act

Dear Mr Nemwalts,

We are currently looking into some issues concerning the transposition of the Trade Marks

Directive (EU) 2015/2436 (TM Directive) into national law, which have remained open

due to the recent Design law reform.

As far as transposition by Estonia is concerned, we understand that Article 10(4) of the

TM Directive on counterfeit goods in transit and other customs situations has been

transposed by § 14(2) of the Estonian Trade Marks Act. While the latter provision seems

to be litterally almost identical with the corresponding provision in the TM Directive, it is

noted, however, that in contrast to the text of Article 10(4) TM Directive covering

counterfeit goods coming from “third countries”, the new right to prevent third parties from

bringing relevant counterfeit goods into Estonia under § 14(2) of the Estoninan Trade

Marks Act is surprisingly limited to goods or their packaging that “come from outside the

states which are Member States of the European Economic Area”.

In our understanding, Article 10(4) of the TM Directive requires that relevant goods

including their packaging come from third countries and have not been released for free

circulation in the EU. The relevant goods must therefore be non-Union goods. „Third

countries” as referred to both in Article 10(4) of the TM Directive and in Article 9(4) of

the EUTM Regulation (EU) 2017/1001 are thus to be considered as all those countries

2

which do not form part of the customs territory of the Union as defined in Article 4 of

Regulation (EU) No 952/2013 laying down the Union Customs Code.

The correctness of the above understanding is in our view further confirmed by the fact

that the scope of the IP Customs Border Regulation (EU) No 608/2013, which the second

sub-paragraph of Article 10(4) of the TM Directive refers to, is limited to the (customs)

territory of the Union as well and does explicitly not cover infringements resulting from

so-called illegal parallel trade (for which actually the territory of the European Economic

Area would be relevant).

Therefore, it is our understanding that the countries Iceland, Liechtenstein and Norway

that are members of the European Economic Area but not part of the EU are in fact also to

be regarded as “third countries” within the meaning of Article 10(4) of the TM Directive

(and Article 9(4) of the EUTM Regulation).

We would therefore be very grateful if we could receive your comments on this issue of

transposition into Estonian law, including information also as to whether there are possibly

any plans to have the relevant provision in § 14(2) of the Trade Marks Act amended in the

near future.

Yours sincerely,

Kamil KILJANSKI

Head of Unit

Contact: Mr Tomas Lorenzo Eichenberg, Senior Expert, phone +32-2-296162,

[email protected]

Cc: Ms Annika Talmar, Counsellor for Judicial Affairs, PermRep of Estonia,

[email protected]

Electronically signed on 27/03/2026 14:24 (UTC+01) in accordance with Article 11 of Commission Decision (EU) 2021/2121

Commission européenne/Europese Commissie, 1049 Bruxelles/Brussel, BELGIQUE/BELGIË – Tel. +32 22991111

Office: N105 01/039 – Tel. direct line +32 229-61662

[email protected]

EUROPEAN COMMISSION DIRECTORATE-GENERAL INTERNAL MARKET, INDUSTRY, ENTREPRENEURSHIP

AND SMES Competitiveness Coordination

D.3 – Intellectual Property

Brussels GROW.D.3/TE

Ministry of Justice and Digital

Affairs of Estonia

Attention of Mr. Kärt Nemwalts

Head of Intellectual Property and

Competition Law Division

By e-mail to:

[email protected]

Subject: Transposition of the Trade Marks Directive (EU) 2015/2436 – definition

of “third countries” in § 14(2) of the Estonian Trade Marks Act

Dear Mr Nemwalts,

We are currently looking into some issues concerning the transposition of the Trade Marks

Directive (EU) 2015/2436 (TM Directive) into national law, which have remained open

due to the recent Design law reform.

As far as transposition by Estonia is concerned, we understand that Article 10(4) of the

TM Directive on counterfeit goods in transit and other customs situations has been

transposed by § 14(2) of the Estonian Trade Marks Act. While the latter provision seems

to be litterally almost identical with the corresponding provision in the TM Directive, it is

noted, however, that in contrast to the text of Article 10(4) TM Directive covering

counterfeit goods coming from “third countries”, the new right to prevent third parties from

bringing relevant counterfeit goods into Estonia under § 14(2) of the Estoninan Trade

Marks Act is surprisingly limited to goods or their packaging that “come from outside the

states which are Member States of the European Economic Area”.

In our understanding, Article 10(4) of the TM Directive requires that relevant goods

including their packaging come from third countries and have not been released for free

circulation in the EU. The relevant goods must therefore be non-Union goods. „Third

countries” as referred to both in Article 10(4) of the TM Directive and in Article 9(4) of

the EUTM Regulation (EU) 2017/1001 are thus to be considered as all those countries

2

which do not form part of the customs territory of the Union as defined in Article 4 of

Regulation (EU) No 952/2013 laying down the Union Customs Code.

The correctness of the above understanding is in our view further confirmed by the fact

that the scope of the IP Customs Border Regulation (EU) No 608/2013, which the second

sub-paragraph of Article 10(4) of the TM Directive refers to, is limited to the (customs)

territory of the Union as well and does explicitly not cover infringements resulting from

so-called illegal parallel trade (for which actually the territory of the European Economic

Area would be relevant).

Therefore, it is our understanding that the countries Iceland, Liechtenstein and Norway

that are members of the European Economic Area but not part of the EU are in fact also to

be regarded as “third countries” within the meaning of Article 10(4) of the TM Directive

(and Article 9(4) of the EUTM Regulation).

We would therefore be very grateful if we could receive your comments on this issue of

transposition into Estonian law, including information also as to whether there are possibly

any plans to have the relevant provision in § 14(2) of the Trade Marks Act amended in the

near future.

Yours sincerely,

Kamil KILJANSKI

Head of Unit

Contact: Mr Tomas Lorenzo Eichenberg, Senior Expert, phone +32-2-296162,

[email protected]

Cc: Ms Annika Talmar, Counsellor for Judicial Affairs, PermRep of Estonia,

[email protected]

Electronically signed on 27/03/2026 14:24 (UTC+01) in accordance with Article 11 of Commission Decision (EU) 2021/2121