On Trademarks

LAW OF GEORGIA

ON TRADEMARKS

Chapter I - General Provisions

Article 1 - Purpose of the Law

The purpose of this law is to regulate relations related to the registration, protection and use of trade, service, collective and certification marks.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 2 - Definition of terms used in the Law

The terms used in this Law have the following meanings:

a) the National Intellectual Property Centre Sakpatenti ('Sakpatenti') - the legal entity under public law determined by the Patent Law of Georgia;

b) Paris Convention - the Paris Convention for the Protection of Industrial Property, signed in Paris, France on 20 March 1883 (revised in Stockholm, Sweden on 14 July 1967, and amended on 28 September 1979);

c) Madrid Protocol Treaty - the Madrid Protocol Treaty for the international registration of trademarks, signed in Madrid, Spain on 27 June 1989;

d) international classification - the international classification of goods and services approved on the basis of signing the Nice Agreement on 15 June 1957 (revised in Stockholm, Sweden on 14 July 1967, and in Geneva, Switzerland on 13 May 1977);

d¹) Convention on International Exhibitions – Paris Convention on International Exhibitions of 22 November 1928 (revised on 30 November 1972);

e) certificate - a document issued in the name of a trademark holder in accordance with this Law certifying the exclusive rights of its holder;

f) application - a set of documents necessary for issuing certificates that are drafted in accordance with the set requirements;

g) applicant - a natural or legal person applying for a certificate;

h) priority - a preference that is given to an application as compared with one that has been submitted earlier;

i) convention priority - the priority established in accordance with Article 4 of the Paris Convention;

i) exhibition priority - the priority established in accordance with Article 11 of the Paris Convention;

k) (deleted);

l) of Appeals - the agency that considers litigations in relation to disputes arising in connection with the acquisition of industrial property rights;

m) association - any association of entrepreneurs established under the legislation of Georgia or of its country of origin;

n) unprotected elements of a trademark -- an element of a trademark to which exclusive rights of holders do not apply.

o) the goods bearing a sign affixed by violation of exclusive rights to a trademark – the goods containing an identical or similar sign of a registered trademark or bearing an identical or similar sign of a registered trademark, or having an identical or similar form of a registered three-dimensional trademark and the production, the import to the territory of Georgia, the storage, the inclusion in civil circulation of which, or for this purpose, the storage of which (the placement for temporary storage) and/or any other use thereof results in the infringement of the exclusive right of the holder of the registered trademark, irrespective of the place of marking.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 3159 of 28 June 2010 - LGH I, No 35, 12.7.2010, Art. 206

Law of Georgia No 1922 of 23 December 2017 - website, 11.1.2018

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 3 - Trademark

1. A trademark is any symbol or combination of symbols that is entered in the trademark register, is clearly and distinctly formed, and is capable of distinguishing the goods and/or services of one enterprise from the goods and/or services of another enterprise (the goods).

2. A symbol or combination of symbols may be a word(s), name(s), letter(s), digit(s), sound(s), image, colour(s), shape of goods or packaging.

3. Trademarks are protected on the basis of their registration with the Sakpatenti or on the basis of international agreements.

4. Well-known trademarks in Georgia are protected without registration, in accordance with Article 6^bis of the Paris Convention

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 4 - Absolute grounds for refusal of trademark registration

1. A symbol or a combination thereof shall not be registered as a trademark if it:

a) does not meet the requirements of Article 3(1) of this Law;

b) is not capable of distinguishing appropriate goods;

c) is a descriptive mark of goods for which registration thereof is requested, and which consists of symbols that are designators of the kind, quality, quantity, properties, value, intended purpose, geographical origin, place of sale, the time of production or any other characteristics of the goods and/or if it is considered as such;

d) is universally used as a generic term for a certain type of goods, or is a term or symbol or combination of symbols characteristic of the goods in civil circulation for which its registration is requested;

e) contravenes public order or accepted principles of morality;

f) is of such nature as to deceive consumers with regard to the properties, quality, geographical origin and/or any other characteristic of the goods;

g) coincides, fully or in one of its constituent elements, with a symbol that is not subject to registration under Article 6ter of the Paris Convention, and there is no permission from the relevant competent authority for its use, or coincides, fully or in one of its constituent elements, with the existing/historical name of Georgia or its territorial unit and there is no consent from the Ministry of Culture for its use;

h) coincides, fully or in one of its constituent elements, with the coat of arms, the emblem, title, and the name of an organisation that is not protected under Article 6ter of the Paris Convention, however, there is a public interest in protecting the said mark in Georgia and there is no consent from the holder of the mark and/or other competent authority to use the said mark;

i) contains or coincides, in one of its constituent elements, with the name of a new plant species that is protected in Georgia under Georgian legislation or international law, and trademark registration is requested for the same or similar plant species;

j) designates only to the shape or other characteristic of the goods which is:

j.a) determined by the properties of the goods;

j.b) necessary to achieve technical results;

j.c) of such nature that gives essential values to the goods.

3. Sub-paragraphs (b) - (d) and (f) of paragraph 1 of this article shall not apply if, before making a decision to register a trademark, and as a result of its use in the civil circulation, the trademark has already been accepted as a distinctive symbol for the goods specified in the application.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 4556 of 25 November 2015 - website, 8.12.2015

Law of Georgia No 1636 of 7 December 2017 - website, 14.12.2017

Law of Georgia No 3054 of 5 July 2018 - website, 11.7.2018

Law of Georgia No 387 of 16 March 2021 - website, 18.3.2021

Law of Georgia No 3874 of 30 November 2023 - website, 15.12.2023

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Law of Georgia No 108 of 12 December 2024 - website, 28.12.2024

Article 5 - Relative grounds for refusal to register a trademark

A trademark shall not be registered if it:

a) is identical to a trademark registered for identical goods with an earlier priority;

b) is identical to a trademark registered in the name of a third party with an earlier priority, and the corresponding goods are so similar that there is a likelihood of confusion between these trademarks, including the likelihood of confusion as a result of association of these trademarks. This subparagraph shall not apply if the applicant submits the written consent of the holder of the registered trademark(s) with an earlier priority on the registration of the trademark;

c) is similar to a trademark registered in the name of a third party with an earlier priority, and the corresponding goods are identical or so similar that there is a likelihood of confusion between these trademarks, including the likelihood of confusion as a result of association of these trademarks. This subparagraph shall not apply if the applicant submits the written consent of the holder of the registered trademark(s) with an earlier priority on the registration of the trademark;

d) is identical to a design registered in Georgia with an earlier priority, except in cases where the registration of the trademark is requested by the holder of the exclusive right to that design. This subparagraph shall not apply if the applicant submits the written consent of the holder of the registered design(s) with an earlier priority on the registration of the trademark;

e) is identical or similar to, contains or creates a likelihood of confusion with, including confusion by association with, a geographical indication or a designation of origin protected in Georgia, and registration of the trademark is requested for identical or similar goods, or the application of this trademark will use the reputation of the geographical indication or designation of origin protected in Georgia. This subparagraph shall not apply if the geographical indication or designation of origin is included in the trademark of the person having the right to use it as an unprotected part thereof;

f) contains the name, pseudonym, facsimile or portrait of a person known in Georgia before the application for trademark registration was filed and its use is not subject to the consent of the said person or his/her heir, and if it belongs to the history and culture of Georgia, − the consent of the Ministry of Culture of Georgia;

g) contains the full or abbreviated name or image of a cultural heritage monument or museum of Georgia and there is no consent from the Ministry of Culture of Georgia for the use thereof.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 4556 of 25 November 2015 - website, 8.12.2015

Law of Georgia No 1636 of 7 December 2017 - website, 14.12.2017

Law of Georgia No 3054 of 5 July 2018 - website, 11.7.2018

Law of Georgia No 387 of 16 March 2021 - website, 18.3.2021

Law of Georgia No 3494 of 21 September 2023 - website, 10.10.2023

Law of Georgia No 3874 of 30 November 2023 - website, 15.12.2023

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Law of Georgia No 108 of 12 December 2024 - website, 28.12.2024

Article 6 - Exclusive rights

1. The exclusive rights of a proprietor in a registered trademark shall arise from the date of registration of the trademark.

2. A person holding exclusive rights shall be entitled to prevent a third party from using a trademark in the course of trade without his/her permission if, with regard to the protected trademark of the person holding exclusive rights, this trademark:

a) is identical and the goods are also identical;

b) is identical and the goods are so similar that there is a likelihood of confusion due to the similarity, including the likelihood of confusion as a result of association;

c) is similar and the goods are identical or so similar that there is a likelihood of confusion due to the similarity, including the likelihood of confusion as a result of association;

d) is identical or similar and has a reputation in Georgia, regardless of the identity or similarity of the goods, if the use of the mark creates unfair advantage for a third party or harms the reputation or distinctive character of the protected trademark.

3. In instances provided for in the second paragraph of this article, the following shall be prohibited, in addition to any other potential prohibitions, to:

a) affix a trademark to the goods or to the packaging thereof;

b) offer the goods, to put them in the course of trade or to stock them for these purposes, to import or export the goods under this sign, except when such action is performed for the goods bearing a sign affixed by a person holding exclusive rights thereto;

c) to offer or provide services using a trademark;

d) use a trademark in advertising or on business papers;

e) use a trademark as a trade name or a part thereof.

4. Without the permission of a trademark holder, a third party shall be prohibited to:

a) affix a sign identical or similar to this trademark on the packaging, label, tag or any other means of displaying the trademark on the goods;

b) offer for sale, put into civil circulation, sell, prepare for sale, store, import or export packaging material, packaging, labels, tags or any other means bearing the trademark marked with a sign identical or similar to the said trademark.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 7 - Scope of exclusive rights

1. A holder of exclusive rights in a trademark shall not be authorised to prevent a third party from applying the following as a trademark in the civil circulation:

a) a personal name and/or address if the third party is a natural person;

b) a symbol or any combination thereof that is non-distinctive or a designator of the kind, quality, quantity, properties, value, intended purpose, geographical origin, place of sale, the time of production or any other characteristic of the goods;

c) a protected trademark if it is necessary for the identification of goods or for reference to the goods, in particular for indicating the intended purpose of the goods, including if the goods marked with this trademark are used as a component or spare part.

2. A holder of exclusive rights in a trademark shall not be authorised to prevent a third party from using a protected trademark for goods that have been put into the course of trade directly by a trademark holder or with his/her permission. This rule shall not apply if the properties of the goods have changed, the quality has deteriorated or if there are any other significant grounds for prohibition.

3. The restrictions provided for in paragraph 1 of this article shall apply only if the third party uses the trademark in accordance with the principle of good faith in the conduct of entrepreneurial activities.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 8 - Publication of a trademark in reference literature

If the reproduction of a trademark in a dictionary, encyclopaedia or in any other reference literature creates the impression that the trademark represents a generic concept for the goods for which it has been registered, or the registration of which is requested, a publisher, upon request of the holder, is obliged to note in subsequent editions of the said reference literature that the published sign represents a registered trademark.

Chapter II - Acquisition and Retention of Exclusive Rights in a Trademark

Article 9 - Application for the registration of a trademark

1. Applications for the registration of trademarks shall be submitted to the Sakpatenti by applicants or their representatives.

2. Applications shall be completed in accordance with established procedures, in the Georgian language.

3. (Deleted).

4. A single application shall be completed for each trademark.

5. An application shall include:

a) a request for registration of the trademark;

b) the full name (title) and legal address of an applicant;

c) an image of the trademark;

d) a listing of goods for which the registration of a trademark is requested. The listing of goods may be submitted in a foreign language as an attachment provided that a Georgian translation of the listing is submitted to the Sakpatenti within one month after the date of filling the application;

e) the identity and address of a representative if an application has been filed by a representative;

f) the signature of an applicant or his/her representative.

6. A list of other data and documents necessary for the examination of applications, and terms and conditions for the submission thereof shall be defined by the legislation of Georgia.

Law of Georgia No 3159 of 28 June 2010 - LGH I, No 35, 12.7.2010, Art. 206

Article 10 - The date of filing an application with the Sakpatenti

The date of filing an application with the Sakpatenti shall be the day when the application was submitted to the Sakpatenti if the application complies with the requirements provided for in Article 9 (2) and (5) of this Law.

Article 11 - Priority

1. The priority of a trademark shall determined by the date of filing the relevant application with Sakpatenti, if the fee established for the examination of the formal requirements of the application is paid no later than 15 calendar days after the filing of the application.

2. A right of priority for a trademark may be established on the date of filing the first application in a state that is a party to the Paris Convention (convention priority) if not more than 6 months have elapsed from this date to the date of filing the application with the Sakpatenti

3. The priority of a trademark used on an exhibit presented at an official or officially recognised international exhibition organised by a state party to the Paris Convention, as determined by the Convention on International Exhibitions, shall be established from the first day of presentation of the exhibit at the exhibition (exhibition priority), if no more than 6 months have passed from this day to the date of filing the relevant application with Sakpatenti. Exhibition priority and convention priority shall not extend each other's term.

4. Applicants intending to use convention or exhibition priorities are obliged to notify the Sakpatenti about their intentions within one month after the date of filing an application and to submit documents certifying the right to request such priorities within three months after the date of filing the application.

5. Fees for requesting convention or exhibition priorities as prescribed by established procedures, shall be payable within one month after the date of filing an application with the Sakpatenti.

5¹. Different goods specified in the application may be assigned different priorities.

6. If there is one and the same priority established for several trademarks, preference shall be given to the trademark, the actual use of which has started earlier in the territory of Georgia

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 11¹ - Indication and classification of goods

1. Goods for which trademark registration is requested must be classified in accordance with the international classification.

2. The application shall specify the goods in such a way that it is possible to determine precisely and clearly the scope of protection sought for the trademark.

3. The application may include general indication of goods (including the general indication used in the title of the International Classification) if these indications meet the requirements under paragraph 2 of this article.

4. If the list of goods specified in the application is vague and/or general, the applicant shall clarify the list of goods within a reasonable time limit determined by Sakpatenti in accordance with the requirements of paragraph 2 of this article. Otherwise, Sakpatenti shall decide to leave the application for the said goods unexamined.

5. When referring to general indications of goods (including general indications used in the title of the International Classification) in an application, the scope of the list of goods in the application shall be determined by the literal meaning of these indications. The protection claimed for a trademark by general indications of goods shall not extend to goods not covered by the content of these indications.

6. If trademark protection is sought for goods falling within more than one class of the International Classification, the application shall group the relevant goods by class and indicate the corresponding class number.

7. Goods may not be considered similar solely on the grounds that they are grouped in the same class of the International Classification. Likewise, goods may not be considered different solely on the grounds that they are grouped in different classes of the International Classification.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 12 - Examination of applications for trademarks

1. Examination of formal requirements with regard to applications for trademarks and their substantive examinations shall be conducted by the Sakpatenti.

2. The Sakpatenti shall have the right to request additional materials from the applicant for examination. Additional materials shall be submitted to the Sakpatenti within a period determined by it, which may not exceed 2 months. The period shall be counted from the date of delivery of the relevant notification to the applicant. In case of violation of the period, the Sakpatenti shall make a decision to refuse to consider the application.

3. An application containing two or more names of goods may, at the request of the applicant before the registration of the trademark, be divided into two or more applications by allocating the goods specified in the first application to each application, upon payment of the fee determined in accordance with the established procedure. The goods shall be distributed in the applications in such a way that there is no overlap between the lists of goods specified in the divided applications. The divided applications shall retain the date of filing of the first application.

3¹. The applicant shall have the right to request the consolidation of two or more applications for identical trademarks filed for different goods. When the applications are consolidated, the goods specified in each application shall retain the priority date of the respective application.

4. The information related to a trademark shall be public upon filing of the relevant application.

5. An applicant shall be authorised to:

a) request the suspension of review of his/her application at any stage of examination after the payment of a prescribed fee is made. A total period of suspension shall not exceed three months;

b) review materials used during the examination and request copies of them;

c) complete, change, amend or verify application materials before the application priority is established. After the priority is established, said amendments shall be allowed only after the prescribed fee is paid, but not later than the date of registration of the trademark. However, when trademarks are changed, only minor changes may be allowed that do not expand the scope of trademark protection, and when a list of goods is changed, only a limitation or specification of the list may be allowed;

d) withdraw the application before the registration of a trademark;

e) reopen prosecution after payment of a prescribed fee is made. Reopening of prosecution may be allowed if the termination thereof took place before the publication of application data, in accordance with Article 15 of this Law.

6. Procedures for preparing, filing and examining applications, and appealing the expert's opinion on examination, as well as procedures for suspending, extending and restoring procedural periods, and any other procedures related to the registration of trademarks shall be defined by the specification on 'Procedures for the Submission of Trademark Applications and for their Registration' issued by the Chairperson of the Sakpatenti in accordance with the procedure established by the legislation of Georgia.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 3743 of 26 October 2010 - LGH I, No62, 5.11.2010, Art. 383

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 13 - Examination of formal requirements for applications

1. An examination of formal requirements for applications shall be conducted within 1 month after filing of the application, except where:

a) an applicant claims convention priority or exhibition priority, the examination of the formal requirements of the application shall be conducted within 10 days after the expiry of the period provided for by Article 11(4) of this Law.

b) the registration of a certification mark is requested, the examination of the formal requirements of the application shall be conducted within 10 days from the expiry of the period provided for by Article 38²(1) of this Law;

c) the registration of a collective mark is requested, the examination of the formal requirements of the application shall be conducted within 10 days after the expiry of the period provided for by Article 32(1) of this Law;

d) an applicant has been sent a notification requesting additional materials necessary for the examination, the examination of the formal requirements of the application shall be suspended until a response to the notification is received, but no later than the period provided for by Article 12(2) of this Law.

2. The examination of formal requirements shall ascertain whether applications are registered according to this Law.

3. If an application meets the requirements of Article 9 (2) and (5) of this Law, a certificate shall be issued in the name of an applicant regarding verification of the date of filing application, indicating the record number and a list of filed documents. Otherwise, the applicant shall be notified about reasonable refusal to accept his/her application materials.

4. If, within 15 calendar days from the date of filing the application, the fee specified in the established procedure for the examination of the formal requirements of the application is not paid or the amount paid is less than the amount set for the submission of one class of goods, the Sakpatenti shall make a decision to refuse to consider the application. If, within this period, the fee is less than the amount set for the submission of the classes of goods specified in the application, but not less than the amount sufficient for the submission of one class, the said examination shall be conducted on the classes selected by the applicant, and in the case where no class is selected, on the first as many classes for which the fee paid is sufficient.

5. On the basis of an examination of formal requirements, the Sakpatenti shall make a decision to accept the application for review and to verify priorities, or to refuse to accept the application for review, and shall notify the applicant thereof.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 14 - Substantive examination

1. A substantive examination shall be conducted within six months after the examination of the formal requirements is completed.

2. A substantive examination it shall verify if there are grounds provided for in Articles 4 and 5 of this Law for refusing the registration.

3. On the basis of a substantive examination, a decision on the registration of the trademark shall be sent to an applicant or on the refusal to accept the trademark for registration with regard to a complete list of goods or of a part thereof.

Law of Georgia No 1922 of 23 December 2017 - website, 11.1.2018

Article 15 - Publication

1. Within one month after making a positive decision on a trademark registration on the basis of a substantive examination, the Sakpatenti shall publish the application data in the Official Bulletin of Industrial Property (the Bulletin).

2. If an applicant enjoys the right provided for in Article 16(2) of this Law, the Sakpatenti shall publish the application data in the Bulletin within one month after the date of making the appropriate decision by the Chamber of Appeals.

2¹. If on the basis of a substantive examination a negative decision on a trademark registration with regard to a complete list of goods or a part thereof is changed into a positive decision on the basis of an enforceable court ruling, the Sakpatenti shall publish the application data in the Bulletin.

3. A trademark image, particulars and an address of a holder, a list of goods grouped according to the international classification for which a trademark registration is requested, and a trademark priority shall be published in the Bulletin.

4. From the date of publishing a trademark application to the date of its registration, an applicant shall be provisionally granted the same rights that would have been granted to him/her after the registration. If the trademark has not been registered, the said rights shall not be construed as conferred.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 3159 of 28 June 2010 - LGH I, No 35, 12.7.2010, Art. 206

Article 15¹ - Accelerated registration procedure for a trademark

1. During an accelerated registration procedure for a trademark, the rules under Chapter II of this Law shall be applied unless otherwise determined by this article.

2. An applicant shall have the right, when filing the application or at any time after filing the application, but no later than 3 months from the date of receipt of the notification of acceptance of the application for consideration, to request an expedited examination of the application.

3. All documents defined in Article 9 of this Law shall be attached to the application for accelerated examination, and a power of attorney, if any, and fees prescribed for accelerated examination of the trademark application and for the trademark registration shall be paid.

4. If an applicant intends to use the priority defined in Article 11(2) and (3) of this Law or in Article 9 quinquies of the Madrid Protocol Treaty, the application for accelerated examination a document certifying the entitlement to priority shall be attached, and a fee payable for requesting the priority shall be paid.

5. Within three days after an accelerated examination is requested, the Sakpatenti shall verify whether the application complies with the requirements of paragraphs 3 and 4 of this article. If any document required by paragraphs 3 and 4 of this article is missing, the applicant is obliged to submit the missing document within 15 days. Otherwise, the Sakpatenti shall make a decision to refuse to conduct an accelerated examination and shall review the application in accordance with the procedures prescribed under Chapter II of this Law.

6. If an application for accelerated examination meets the requirements paragraphs 3 and 4 of this article, the Sakpatenti shall, within seven working days, determine if there are grounds to refuse registration of the trademark provided for in Articles 4 and 5 of this Law, and if a positive decision is made, it shall register the trademark in the Trademark Registry, publish data on the registered trademark in the Bulletin and shall issue a certificate.

7. Within three months after publication of trademark registration data in the Bulletin, any concerned person may file an appeal with the Chamber of Appeals requesting cancellation of the trademark registration on the ground that the requirements of Articles 4 and 5 of this Law have not been fulfilled.

8. If after the registration of a trademark through an accelerated procedure, an application for the right to use an earlier priority is filed with the Sakpatenti, and if, with regard to trademarks registered through the accelerated procedure, there are grounds provided for in Article 5 of this Law to refuse registration of the trademark, the Sakpatenti shall make a decision to cancel the trademark registration performed through the accelerated procedure and shall publish information in the Bulletin.

9. A decision to cancel a trademark registration performed through an accelerated procedure shall be appealed according to the procedures provided for in Article 16(2) of this Law.

Law of Georgia No 3159 of 28 June 2010 - LGH I, No 35, 12.7.2010, Art. 206

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 16 - Filing an appeal to the Chamber of Appeals against a decision of the examination

1. An applicant may file an appeal with the Chamber of Appeals against a decision of the examination of formal requirements for refusing to review the application within three months after such decision is made.

2. An applicant may file an appeal with the Chamber of Appeals against a decision of substantive examination on refusing a trademark registration with regard to a complete list of goods or a part thereof, within three months after such decision is made.

3. (Deleted).

4. A decision on the registration of a trademark may be appealed to the Chamber of Appeal within 3 months from the publication of the application data in the bulletin, if:

a) the registration of the trademark violates the requirements of Article 4 of this Law;

b) the registration of the trademark violates the requirements of Article 5 of this Law;

c) there are grounds provided for in Article 28(1)(b-i) of this Law.

4¹. It shall not be permissible to appeal a decision on trademark registration based on a court decision that has entered into legal force to the Chamber of Appeals with the same request and on the same grounds.

4². In the case provided for by paragraph 4 of this Article, the following persons shall have the right to file an appeal with the Chamber of Appeals:

a) any person on the grounds provided for by subparagraph (a) of the same paragraph and Article 5(g) of this Law;

b) a prior holder of the right on the grounds provided for by subparagraph (b) of the same paragraph, except for the grounds provided for by Article 5(g) of this Law;

c) a person determined by Article 28(3) of this Law on the grounds provided for by subparagraph (c) of the same paragraph.

4³. At the request of the applicant, the prior trademark holder who appeals a positive decision made by Sakpatenti on the registration of a trademark is obliged, if more than 5 years have passed since the date of registration of the trademark provided for in this decision, to submit to the Chamber of Appeals the evidence that the trademark has been actually used in Georgia for the goods for which the trademark has been registered during the last 5 years prior to the filing date or priority date of the trademark provided for in the appealed decision and which the owner of the earlier trademark indicates as the grounds for the appeal. In the event of failure to provide evidence of actual use of the trademark or failure to provide a valid reason for its non-use, the proceedings on the appeal shall be terminated. If the prior trademark was used in respect of only part of the registered goods, for the purposes of the appeal proceedings, the prior trademark shall be deemed to be registered in respect of only the relevant part of the goods.

5. The Chamber of Appeals shall examine an appeal within three months after the date of its filing.

6. A decision of the Chamber of Appeals may be appealed in court.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 17 - Registration of trademarks

1. If a petition for appeal is not filed with the Chamber of Appeals within the time limit specified under Article 16(4) of this Law, or if the Chamber of Appeals makes a decision on trademark registration on the basis of an appeal filed in accordance with Article 16(4), the Sakpatenti shall register the trademark in the Trademark Registry (the Registry) and shall publish data on the registered trademark in the Bulletin.

2. The following shall be recorded in the Registry: images of trademarks, information on the holders of trademarks, dates of trademark priorities, dates of trademark registration, a list of goods grouped on the basis of international classification and with regard to which the trademarks have been registered, and any other information related to the registration.

3. Any person concerned may obtain information from the Registry after an appropriate application to the Sakpatenti is filed and may request the certified extract from the Registry.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Article 18 - Trademark certificate

1. After a trademark is registered in the Registry, the Sakpatenti shall issue a trademark certificate.

2. The certificate shall confirm the registration of a sign as a trademark, the date of trademark priority, and the exclusive right of the holder to said trademark and the validity of trademark registration.

Article 19 - Making changes and amendments to the Registry

1. Every single amendment of data that is obligatory for the registration provided for in Article 17(2) of this Law shall be recorded in the Registry on the basis of an application of a trademark holder or his/her representative. However, when trademarks are changed, only minor changes may be allowed that do not expand the scope of trademark protection, and when a list of goods is changed, only limitation or specification of the list may be allowed; changes shall enter into force only after their registration.

2. Amendments made to the Registry shall be published in the next Bulletin.

3. Changes and amendments shall be also recorded in the certificate.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Article 19¹ – Division of the trademark

1. A trademark may be divided into two or more identical trademarks by assigning them independent registration numbers, provided that there is no overlap between the lists of goods covered by the trademarks resulting from the division.

2. If, in the case provided for by paragraph 1 of this article, there is an overlap between the lists of goods of the respective trademarks arising from the division, the Sakpatenti shall set a reasonable time limit for the trademark holder to eliminate the said deficiency. If the deficiency is not eliminated within this time limit, the Sakpatenti shall make a decision to refuse to satisfy the relevant request.

3. A prescribed fee shall be paid for the division of a trademark. Failure to pay the fee shall result in the request being rejected.

4. The decision on the division of a trademark shall enter into force from the date of entry of the relevant data in the register.

5. All fees paid and all relevant requests filed prior to filing of the application for division of a trademark shall be deemed to have been paid for each trademark resulting from the division.

6. Trademarks resulting from the division of a trademark shall retain the dates of filing original trademark application and the priority dates.

7. Upon payment of the prescribed fee, trademarks arising from division may be combined into a single trademark.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 20 - Validity of trademark registration

1. The validity of trademark registration is 10 years from the date of registering the trademark with the Sakpatenti.

2. The validity of a trademark registration may be extended once every 10 years without limitation on the periods of such extensions. The validity of trademark registration shall be extended by the Sakpatenti on the basis of an application of the holder of that trademark submitted to the Sakpatenti, after the fee prescribed in accordance with established procedures is paid. The aforementioned application shall be submitted to the Sakpatenti and the respective fee shall be paid during the last year of validity of the registration.

3. A record on the extension of the validity of a trademark registration shall be made in the Registry and in the certificate, and shall be published in the Bulletin.

4. If an application for extension of a trademark registration is not submitted to the Sakpatenti, or a fee is not paid within the term provided for in paragraph 2 of this article, a trademark holder may pay the abovementioned fee within six months after the expiry of validity of the trademark registration. If this term is missed, the trademark registration shall be cancelled from the date of expiry of the validity of registration without the right to restore it, and notice thereof shall be published in the Bulletin.

5. (Deleted – 21.9.2023, No 3494).

6. If a trademark registration is cancelled at the request of its holder, the registration may not be restored.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 3494 of 21 September 2023 - website, 10.10.2023

Article 21 – (Deleted)

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Article 22 - Fees

A fee shall be paid for the examination of formal requirements of an application, substantive examination, expedited examination, priority claim, appeal of an examination decision, registration of a trademark, registration of amendments, publication, issuance of a certificate, issuance of an extract from the register, suspension of procedural deadlines related to registration, restoration and extension, division of a trademark, consolidation of trademarks arising on the basis of division and other actions related to the legal protection of a trademark, as provided for by the legislation of Georgia, the amount of which shall be determined by an ordinance of the Government of Georgia.

Law of Georgia No 3159 of 28 June 2010 - LGH I, No 35, 12.7.2010, Art. 206

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 23 – (Deleted)

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Chapter III - Use of Trademarks and Assignment of Rights Derived from the Registration of Trademarks

Article 24 - Use of trademarks

1. Use of a trademark shall be considered to be its use by the trademark holder, as well as by a licensee and, with the consent of the trademark holder, by a third party.

2. (Deleted – 21.9.2023, No 3494).

3. For the purposes of paragraph 1 of this article, the following shall also be considered use of a trademark:

a) use of a registered trademark with slightly different elements that do not alter the distinctive character of the trademark, regardless of whether the trademark is registered in the form in which it is used;

b) affixing a trademark on goods intended for export or on their packaging in the territory of Georgia.

4. The use of a trademark in which a geographical indication or appellation of origin protected in Georgia is included as an unprotected part is permitted with the consent of the relevant competent authority.

5. The actions provided for by paragraphs 1 and 3 of this article shall be carried out to the extent that their implementation is considered to be actual use of the trademark on the market.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 3494 of 21 September 2023 - website, 10.10.2023

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 25 - Assignment of rights derived from the registration of trademarks

1. Rights derived from the registration of a trademark may be assigned to other natural or legal persons in accordance with procedures under the legislation of Georgia.

2. Trademarks shall be transferred to other persons with or without an enterprise.

3. The assignment of rights derived from the registration of trademarks applies to a complete list of goods or to a part thereof.

4. The transfer of an enterprise also implies the transfer of a trademark unless otherwise provided for in an agreement for transfer.

5. An agreement on transferring a trademark shall be entered into in writing. An agreement shall not have legal force unless it is in writing.

6. (Deleted – 21.9.2023, No 3494).

6¹. (Deleted – 21.9.2023, No 3494).

6². If the transfer of rights to a trademark concerns only part of the list of registered goods, the transfer of the trademark shall not result in an overlap between the lists of goods corresponding to the principal trademark and the partially transferred trademark.

7. When transferring a trademark, relevant amendments shall be made in the Registry and shall be published in the Bulletin after the prescribed fees have been paid.

8. A new holder of a trademark may not use the rights derived from the registration of a trademark against a third party until the relevant amendments regarding the transfer of the trademark are made in the Registry.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 3494 of 21 September 2023 - website, 10.10.2023

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 26 - License agreement

1. Trademark proprietors (licensors) may confer the right to use trademarks to other persons (licensees) under a license agreement. A license agreement may be concluded for a complete list of goods or for a part thereof.

2. A license may be exclusive or non-exclusive.

3. If an agreement does not specify the nature of a license, the license is non-exclusive. In such case, licensors are authorised to use trademarks themselves and to enter into other license agreements.

4. An exclusive license shall not allow licensors to enter into other license agreements and to use trademarks unless otherwise provided for in the agreement. Rights derived from an exclusive license shall apply during the validity of the trademark registration unless otherwise provided for in the agreement.

5. Licensees may not assign rights derived from a license agreement or assign such rights on the basis of a sub-license unless they are derived directly from the agreement.

6. If a license agreement is breached, a trademark proprietor may use his/her exclusive rights under this Law against a licensee if such breach is related to the term of agreement, the manner of trademark use, the list of goods for which the license has been issued, the territory where the trademark may be used or to the quality of goods.

7. Entering into a trademark license agreement shall be registered with the Sakpatenti and appropriate information shall be published in the Bulletin after payment of the prescribed fee.

8. In the event of infringement of trademark rights, the licensee may bring an action only with the consent of the trademark holder. The holder of an exclusive license may bring an action without the consent of the trademark holder if the trademark holder does not bring an action within a reasonable time after receiving official notification.

9. The licensee may participate in court proceedings for the purposes of recovering damages suffered as a result of the infringement of trademark rights.

10. The assignment of trademark rights or the transfer of a license shall not apply to a license granted earlier to a third party.

11. (Deleted – 21.9.2023, No 3494).

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 3494 of 21 September 2023 - website, 10.10.2023

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Chapter IV - Loss of Exclusive Rights to Trademarks

Article 27 - Grounds for cancellation of trademark registration

1. A trademark registration shall be cancelled by the Sakpatenti:

a) at the request of the trademark holder. If a license agreement is registered for a trademark, cancellation of the trademark shall be permissible if the trademark holder provides evidence that the licensee has been notified of such intention prior to requesting cancellation of the trademark;

b) if a natural person holding a trademark dies and he/she has no heir, or if a legal person is liquidated and there is no legal successor of such legal person;

c) on the basis of Article 15^​​​1(8) of this Law.

2. A trademark registration shall be cancelled by a court at the request of a third party if:

a) the trademark has not been in actual use for a continuous period of 5 years in relation to the goods for which the trademark is registered in Georgia. If the use of the trademark has commenced or been renewed between the expiry of the said 5-year period and the request for cancellation of the trademark registration, the cancellation of the trademark registration shall not be permitted;

b) a trademark has become a generic concept for the goods for which it has been registered;

c) the use of trademark by a trademark proprietor or the use thereof with his/her permission confuses consumers with regard to the type, properties, quality, value, geographical origin or other characteristics of the goods.

3. Sub-paragraph (a) of paragraph 2 of this article shall not apply unless the trademark proprietor refuses to use a trademark due to circumstances that are beyond his/her control. Such circumstances may include import restrictions imposed on the goods protected by trademarks or other requirements determined by the government.

4. If there are grounds for cancellation of a trademark registered for a part of a list of goods, the registration shall be cancelled only with regard to that part.

5. If a trademark registration is cancelled with regard to a complete list of goods or to a part thereof, relevant amendments shall be made in the Registry and appropriate information shall be published in the Bulletin.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 3159 of 28 June 2010 - LGH I, No 35, 12.7.2010, Art. 206

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 28 - Cancellation of trademark registration

1. A court shall declare a trademark registration as cancelled at the request of a third party if:

a) a trademark has been registered by breaching requirements of Articles 4 and 5 of this Law;

b) a trademark has been registered with a dishonest intention;

c) a trademark has been registered in the name of the representative or agent of the trademark holder in one of the countries to the Paris Convention, without the consent of the trademark holder and the trademark holder's representative or agent fails to provide appropriate justification;

d) a trademark contains a brand name, the rights to which have been acquired before filing the application for the registration of the trademark when there is the likelihood of confusion;

e) the registration of the trademark and/or use of the trademark infringes the copyrights of a third party that arose before the priority date established for the trademark;

f) it is identical to a trademark well-known in Georgia before the application for trademark registration was filed or is so similar that there is a likelihood of confusion, including confusion by association. This rule shall apply even if the list of goods is different, if the use of the trademark has an unfair advantage for its holder or is detrimental to the reputation or a distinctive character of the trademark well-known in Georgia;

g) the trademark is identical or similar to a trademark registered in the name of a third party, with an earlier priority, which has a reputation in Georgia, and the use of the trademark has an unfair advantage for the applicant or is detrimental to the reputation or distinctive character of the protected trademark. This rule shall apply even if the list of goods is different;

h) the trademark uses a distinctive symbol, rights to which arose before the date of filing or priority of the application for registration of the trademark, and, in accordance with the relevant legislation, the holder of the rights to this symbol has the right to prohibit the use of the trademark;

i) the use of a trademark may be prohibited pursuant to Article 18 of the Civil Code of Georgia.

2. A trademark may not be declared cancelled if it was registered in violation of the requirements of Article 4(1) (b-d) and (f) of this Law, but this trademark has become established as a distinctive symbol for the goods for which it is registered as a result of use in civil circulation.

3. The cancellation of a trademark may be requested by:

a) any person, on the grounds that the requirements of Article 4 or Article 5(g) of this Law have been violated;

b) only the prior holder of the right, on the grounds that the requirements of Article 5 (except for subparagraph (g) of the same article) have been violated;

c) only the prior holder of the right, if there are grounds provided for by paragraph 1(b-i) of this article.

4. In the case provided for by paragraph 1(c) of this article, the claimant shall have the right, instead of declaring the trademark registration as cancelled, to request the transfer of the disputed trademark registration to him/her.

5. If there are grounds for the cancellation of a trademark registration in respect of a part of the registered list of goods, its registration shall be cancelled only in respect of that part.

6. In the event of the cancellation of a trademark registration in respect of the entire list of goods or part thereof, the relevant amendments shall be made to the register and published in the Bulletin.

7. A trademark may not be declared cancelled if, prior to the filing of an action or counterclaim for the cancellation of the trademark, the holder of the prior right specified in paragraph 3 (b and c) of this article has given written consent to the registration of the trademark.

8. If the prior holder of the right specified in paragraph 3 (b and c) of this article has requested the cancellation of the trademark registration by a claim or counterclaim on the basis of the same article, he/she shall not have the right to apply to the court repeatedly and request the cancellation of the trademark registration on another grounds provided for in the same subparagraphs, if he/she could have requested the cancellation of the trademark registration on the relevant grounds within the framework of the first claim.

9. A person shall not have the right to request the cancellation of the registration of a trademark for the goods for which it is used, on the basis of a prior trademark, unless he/she applies to the court with an appropriate claim within 5 years after he/she became aware of the use of the disputed trademark in Georgia. This rule shall not apply to a case where the registration of the disputed trademark was carried out with bad faith.

10. In the case provided for in paragraph 9 of this article, the holder of the disputed trademark shall not have the right to request a prohibition on the use of the prior trademark, even though the prior holder of the trademark has lost the right to request the cancellation of the registration of the disputed trademark.

11. At the request of the holder of the disputed trademark, the prior holder of the trademark who requests the cancellation of the trademark registration shall, if more than 5 years have passed since the date of registration of the prior trademark, submit to the court evidence that the trademark was actually used for the goods for which this trademark was registered and which the prior holder of the trademark indicates as the grounds for the claim during the last 5 years prior to the filing date or priority date of the application for the disputed trademark. If evidence of actual use of the trademark is not presented or a valid reason for its non-use is not specified, the proceedings on the claim shall be terminated.

12. If, in the case provided for in paragraph 11 of this Article, the prior trademark was used in respect of only part of the registered goods, for the purposes of a dispute relating to the cancellation of the trademark registration, the prior trademark shall be deemed to be registered in respect of only the relevant part of the goods.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 29 - Consequences of cancellation or invalidation of a registration of trademarks

1. If a trademark registration has been cancelled in accordance with Article 27 of this Law, rights derived from the registration shall be considered terminated from the date of recording of the cancellation of registration in the Registry, unless any other date is specified in a court decision.

2. If the registration of a trademark is declared invalid in accordance with Article 28 of this Law, the rights arising from its registration shall be deemed terminated from the date of origin of these rights to the trademark.

3. A decision to invalidate a trademark registration shall not have retroactive effect:

a) against a court decision on infringement of exclusive rights to a trademark, if this decision entered into legal force before the decision on invalidation of the trademark registration entered into legal force;

b) with respect to transactions concluded and executed before the entry into force of this decision.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Chapter V - Collective Marks

Article 30 - Rights in collective marks

1. A collective mark is a sign, or a combination thereof, that may be protected as a trademark in accordance with Article 3 of this Law and that distinguishes the goods of members of an association holding the collective mark from the goods of other persons by geographical origin, similar qualitative characteristics or other properties.

2. Only associations or legal entities under public law may be applicants and proprietors of collective marks.

3. (Deleted – 21.2.2024, No 4048).

4. Rules under this Law are applied with regard to all collective marks unless otherwise determined in this Chapter.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 31 - Use of an indication of geographical origin as collective marks

1. As an exception to the prohibition provided for by Article 4 (1)(c) of this Law, it is permissible to register as a collective mark a symbol that is an indication of the geographical origin of goods (the name of a place, district, region, country or other indication specifying the geographical origin of goods).

2. Indications of geographical origin shall not be used as collective marks for goods that have not originated from the respective geographical location, district or region, and that may cause confusion regarding the origin of goods.

3. If an indication of geographical origin specifies special characteristics and quality of goods, such sign shall be used as a collective mark for the goods with similar origin having respective properties and quality.

4. Paragraphs 2 and 3 of this article also apply to those names, indications and signs that are similar to the signs of geographical origin.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2005, Art. 3

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 32 - Provisions for collective marks

1. An application for a collective mark shall meet the requirements of Article 9 of this Law. The application shall be accompanied by a statement of the collective mark. An applicant is obliged to submit the statement of the collective mark to the Sakpatenti no later than 2 months after filing the application.

2. The regulations for collective marks shall contain:

a) the name of the association;

b) the names and legal addresses of association members;

c) the purposes of the association;

d) the conditions for the use of collective marks and supervision of the use thereof;

e) the rights and obligations of association members with regard to an infringement of rights to collective marks;

f) a list and general characteristics or indicators of the goods, for which collective marks are designated

3. If a collective mark contains a geographical name, the provisions thereof shall ensure that any person whose goods have originated in the given geographical region and who meet the conditions for the use of collective marks determined in the provisions, may become a member of the association and have the right to use the collective marks.

4. Any concerned person has the right to review the provisions for collective marks.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 33 - Examination of application for a collective mark

A substantive examination of an application for a collective mark shall determine if the application complies with the requirements of Article 30(1) and (2) and Article 32, in addition to the verification of requirements under Article 14(2). However, a negative decision on the registration of collective marks shall not be made as a result of an examination if an applicant corrects the provisions for collective marks in such manner so that there are no grounds for refusal to register the collective marks.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Article 34 - Restriction on the protection of collective marks

The registration of a geographical name as a collective mark shall not entitle its proprietor to prevent a third party from the use of this name in the course of trade unless this breaches the norms of fair competition, and the third party has reasonable grounds to use this name.

Article 35 - Appeal

A person who is authorised to use a collective mark may file an action in court for infringement of this right only with the consent of association holding the collective marks, unless otherwise provided for in the provisions for collective marks.

Article 36 - Making amendments to the regulations for collective marks

1. A proprietor of a collective mark is obliged to notify the Sakpatenti of any amendments made to the provisions for collective marks.

2. When making amendments to the provisions for collective marks, the requirements of Article 31 and 32 of this Law shall be taken into consideration.

Article 37 - Cancellation of the registration of collective marks

Registration of collective marks shall be cancelled:

a) in accordance with Article 27 of this Law;

b) if a proprietor of the collective mark uses it in breach of the provisions for collective marks.

Article 38 - Invalidation of the registration of collective marks due to the existence of absolute grounds for the refusal of registration

Apart from the grounds referred to in Article 28 of this Law, the registration of a collective mark shall be invalidated if it has been registered in breach of the requirements of Article 33 of this Law. If the grounds for the invalidation are related to the provisions for collective marks, the registration shall not be declared invalid if within two months after the day when a collective mark proprietor has learned about the necessity to make amendments, he/she amends the provisions so that the grounds for such invalidation no longer exist.

Chapter V^I - Certification Mark

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 38¹ – Certification mark

1. A certification mark is a type of trademark that distinguishes certified goods from non-certified goods based on the goods' material, production process, quality, accuracy, or other characteristic (other than the geographical origin of goods).

2. The holder of a certification mark may be any natural person or legal entity (including a legal entity under public law), if its activities are not related to the production or supply of the goods for which protection of the certification mark is requested.

3. The requirements established for trademarks under this Law shall fully apply to the certification mark, unless otherwise provided for in this Chapter.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 38² – Certification mark regulation

1. An applicant is obliged to submit the certification mark regulation to the Sakpatenti no later than 2 months after filing the application for the certification mark.

2. The certification mark regulation shall determine the persons entitled to use the certification mark, the conditions for using the certification mark, the relevant goods, the rules for verifying the conditions required for using the certification mark and monitoring its use, as well as the sanctions imposed for violating the conditions for using the certification mark.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 38³ – Grounds for refusal to register a certification mark

1. Except for the cases of grounds for refusal of trademark registration provided for in Articles 4 and 5 of this Law, a certification mark shall not be registered if:

a) the application for a certification mark does not meet the requirements of Articles 38¹ and 38² of this Law;

b) the regulations of the certification mark is contrary to public order or recognised principles of morality;

c) it is possible that a certification mark may mislead consumers with regard to its meaning or content.

2. Paragraph 1 of this article shall not apply if the applicant makes such changes to the regulations of the certification mark that eliminate the grounds for refusal to register the certification mark.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 38⁴ - Grounds for appealing a decision on the registration of a certification mark to the Chamber of Appeals

Except for the cases of existence of the grounds provided for in Article 16 of this Law, a third party may appeal the decision on the registration of a certification mark to the Chamber of Appeals if the requirements of Article 38³ of the same Law have been violated.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 38⁵ - Use of the certification marks

The use of a certification mark shall be considered its use by an authorised person determined by the certification mark regulation provided for in Article 38² of this Law, if other requirements related to the use of a trademark established by the same Law are met.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 38⁶ - Amendments to the certification mark regulations

1. The holder of a certification mark is obliged to register any amendments made to the regulations of the certification mark with the Sakpatenti.

2. Amendments to the regulations of the certification mark shall meet the requirements of Articles 38² and 38³ of this Law.

3. The Sakpatenti's decision on amendments to the certification mark regulations may be appealed to the Chamber of Appeals within 3 months of its publication in the Bulletin if the requirements of Article 38³ of this Law have been violated.

4. Amendments to the certification mark regulations shall enter into force from the date of entry of the relevant data into the register.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 38⁷ - Transfer of rights to a certification mark

1. The certification mark may be awarded only to a person who meets the requirements of Article 38¹(2) of this Law.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 38⁸ - Protection of rights to the certification mark

1. The holder of the certification mark or a person authorised by him/her shall have the right to file a lawsuit in case of infringement of rights to the certification mark.

2. The holder of a certification mark shall have the right to claim compensation for damage caused by unauthorised use of the certification mark on behalf of persons entitled to use the certification mark.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 38⁹ - Grounds for cancellation of registration of a certification mark

Except for the cases of existence of the grounds provided for in Article 27 of this Law, the court shall cancel the registration of a certification mark if:

a) the holder of the certification mark no longer meets the requirements of Article 38¹ (2) of this Law;

b) the holder of the certification mark does not take appropriate measures to ensure that the certification mark is used in accordance with the conditions for use of the certification mark specified in the certification mark regulations;

c) the use of the certification mark creates a misleading impression on the consumer;

d) the amendments made to the certification mark regulations contravene the requirements of Article 38⁶(2) of this Law, and the certification mark holder shall not make such amendments to the certification mark regulations that would eliminate the aforementioned basis.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 38¹⁰ - Grounds for invalidation of registration of a certification mark

Except for the cases of existence of the grounds provided for in Article 28 of this Law, the court shall declare the registration of a certification mark invalid if it was registered in violation of the requirements of Article 38⁶ of the same Law and the holder of the certification mark does not make such changes to the provisions of the certification mark that eliminate the said grounds.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Chapter VI - Protection of Trademarks According to the Madrid Protocol Treaty

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Article 39 - Application for the international registration of trademarks

1. This Law applies to those trademarks the protection of which is required by the Madrid Protocol Treaty, unless otherwise provided for by this Protocol or by this Chapter of this Law.

2. In accordance with Article 3 of the Madrid Protocol, an application for the international registration of trademarks shall be filed with the Sakpatenti.

3. An English translation of the list of goods grouped in accordance with the international classification, shall be attached to the application.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Article 40 - Record of an international registration

1. If an international registration is performed on the basis of an application filed with the Sakpatenti, the date and the registration number of the international registration shall be recorded in the application data.

2. If an international registration is performed on the basis of a trademark registration with the Sakpatenti, the date and the number of the international registration shall be recorded in the Registry.

3. If an international registration is performed in the cases provided for in paragraph 1 of this article, the date and number of the international registration shall be recorded in the Registry after a trademark with the Sakpatenti has been registered.

Article 41 - Examination of trademarks used in Georgia on the basis of an international registration in accordance with the Protocol of the Madrid Agreement

1. Only a substantive examination shall be conducted on a trademark for which protection is sought in Georgia on the basis of its international registration under the Protocol of the Madrid Agreement (the international trademark) and the compliance of the list of goods with the requirements of Article 11¹ of this Law shall be verified.

2. The term ‘protection’ shall be used instead of the term ‘registration’ used in Chapters I–V¹ of this Law with respect to an international trademark.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 45¹ - Relationship between registered, conflicting trademarks

1. In the event of infringement of trademark rights, the trademark holder shall not have the right to request a prohibition on the use of a later registered trademark if a request for the invalidation of the registration of a later registered trademark is inadmissible on the basis of paragraphs 7, 8, 9 or 11 of Article 28 of this Law.

2. In the case provided for in paragraph 1 of this article, the holder of a later registered trademark shall not have the right to prohibit the prior holder of the trademark from using the trademark.

Law of Georgia No 4048 of 21 February 2024 - website, 7.3.2024

Article 42 - Publication and filing an appeal

1. Data of an international registration of trademarks are published in the Gazette of International Bureau of the World Intellectual Property Organisation (WIPO).

2. If a positive decision is made to grant protection to trademarks in Georgia, the date and the number of the international registration shall be additionally published in the Bulletin within one month after the decision was made.

3. The term for filing an appeal provided for in Article 16(4) of this Law shall be calculated from the moment when the date and number of the international registration of a trademark has been published in the Bulletin.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Article 43 – (Deleted)

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Article 44 - Submission of a national application on the basis of a cancelled international registration

1. In accordance with Article 9 quinquies of the Madrid Protocol Treaty, on the basis of a cancelled international registration, an applicant, together with a national application, shall submit a document certified by the International Bureau of WIPO confirming that the international registration has been applied to Georgia before its cancellation.

2. If the Sakpatenti has made a decision to grant protection to an appropriate international trademark for the date of filing a national application referred to in paragraph 1 of this article, the national application shall not be subject to a substantive examination.

3. If at the time of cancellation of the international registration, the international trademark has been granted the right to protection in Georgia, the Sakpatenti shall conduct only an examination of the formal requirements for the national application referred to in paragraph 1 of this article and then shall register the trademark in the Registry and publish data on the registered trademark in the Bulletin.

Law of Georgia No 2380 of 20 December 2005 - LGH I, No1, 4.1.2006, Art. 3

Chapter VII - Protection of Exclusive Rights in Trademarks

Article 45 - Penalties for the infringement of exclusive rights in trademarks

1. If exclusive rights in trademarks are infringed, a trademark holder of exclusive rights in a trademark shall be authorised to claim:

a) termination of the actions provided for by Article (2-4) of this Law;

b) removal from the course of trade the goods marked in violation of exclusive rights in trademarks, or removal of the goods imported to the territory of Georgia or stored (placed for storage) for the purpose of its inclusion in the course of trade;

c) destruction of the goods marked in violation of exclusive rights in trademarks, if it is impossible to remove a trademark from the goods, or if the trademark is affixed onto the goods;

d) destruction of any image, label, imprint, packaging, packaging material and advertisements or posters containing the trademark, or copies or imitations thereof, including deletion of such material or image placed in the internet that contain the trademark;

e) destruction of cliches, matrices, other devices and technical equipment and tools to be used for creating a trademark.

2. A holder of exclusive rights in a trademark shall be authorised, at his/her own discretion, to require the simultaneous implementation of several actions determined by paragraph 1 of this article.

3. Upon violation of exclusive rights to a trademark, based on the request of a holder of exclusive rights to a trademark, and on a court decision, the action provided for by sub-paragraph (a) of paragraph 1 of this article may also be carried out against those persons who were or should have been aware of the fact that their service is and/or was used for the violation of exclusive rights in trademarks in terms of commercial scale.

4. In special cases a court shall be authorised, based on the claim of a violator of exclusive rights in trademarks, to impose on the violator the payment of monetary compensation in exchange of actions under sub-paragraphs (b-e) of paragraph 1 of this article, if his/her actions were negligent, or if he/she suffers disproportionate damage by using appropriate security measures, and where the amount of monetary compensation determined by the court is acceptable for a holder of exclusive rights in trademarks.

5. Upon violation of exclusive rights to a trademark, a holder of exclusive rights in a trademark shall be authorised to claim the performance of one of the following actions, except for those provided for by paragraph 1 of this article:

a) compensation of damage (including the non-received income), if a violator of exclusive rights in trademarks was or should have been aware of the violation of exclusive rights in trademarks;

b) seizure of income received by a violator of exclusive rights in trademarks as a result of the violation of exclusive rights in trademarks in favour of a holder of exclusive rights in trademarks;

c) payment of the one-off monetary compensation.

6. During the determination of the amount of damage, the essence of the violation of exclusive rights in trademarks shall be taken into account, as well as income received by violation of exclusive rights in trademarks, property and non-property damage to a holder of exclusive rights in trademarks, and the possible income which might have been received by a holder of exclusive rights in trademarks if the trademark were used in a lawful manner.

7. A one-off monetary compensation amount shall be determined by no less than the amount, which would have been paid by a violator of exclusive rights in trademarks for obtaining the permit for the use of the trademark.

8. During the determination of the amount of the one-off monetary compensation, the volume of the goods marked in violation of exclusive rights in trademarks shall be taken into account, as well as the identical nature of the trademark used, the level of resemblance with the protected trademark, the trademark reputation applicable in Georgia, the intention of a violator, the scale, nature and other properties of services, which are offered in violation of exclusive rights in trademarks, and/or any other circumstance, which may be taken into account during the determination of the amount of compensation.

Law of Georgia No 1922 of 23 December 2017 - website, 11.1.2018

Chapter VIII - Transitional Provisions

Article 46 - Applications filed and certificates issued before the entry of this Law into force

1. Applications for the registration of trademarks filed before the entry of this law into force shall be reviewed in accordance with Ordinance No 304 of 16 March 1992 of the Cabinet of Ministers of the Republic of Georgia on the 'Approval and Enactment of the Statute on Trademarks'.

2. Certificates issued before the entry of this Law into force shall remain valid after the entry of this Law into force.

Chapter IX - Final Provisions

Article 47 - Invalid normative acts

Upon the entry of this Law into force, the following shall be construed as invalid:

a) Ordinance No 304 of 16 March 1992 of the Cabinet of Ministers of the Republic of Georgia on the 'Approval and Enactment of the Statute on Trademarks;

b) Ordinance No 483 of 25 June 1993 of the Cabinet of Ministers of the Republic of Georgia on 'Additional Measures for the Regulation of the Use of Trademarks in the Republic of Georgia'.

Article 48 - Entry of this Law into force

This Law shall enter into force three months after its promulgation.

President of Georgia                                            E. Shevardnadze

Tbilisi

5 February 1999

No1795-IIს