On Trademarks

On Trademarks

Law of Georgia

On Trademarks

Article 1. Purpose of the Law🔗

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

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024.

Article 2. Definition of the terms used in this Law🔗

The terms used in this Law have the following meaning:

a) National Intellectual Property Center "Sakpatenti" (hereinafter – Sakpatenti) – a legal entity of public law defined by the Patent Law of Georgia;

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

c) Protocol to the Madrid Agreement – "Protocol to the Madrid Agreement Concerning the International Registration of Marks signed on 27 June 1989;"

d) International Classification – the International Classification of Goods and Services adopted and signed by the Nice Agreement on 15 June 1957 (revised in Stockholm on 14 July 1967, in Geneva on 13 May 1977);

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

e) certificate – a document issued in the name of the owner of a trademark in accordance with this Law, which confirms his exclusive rights;

f) application – a set of documents necessary for the grant of a certificate, drawn up in accordance with the established requirements;

g) applicant – a natural or legal person who requests a certificate;

h) priority – the advantage enjoyed by an application compared with an application filed later;

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

j) exhibition priority – priority established in accordance with Article 11 of the Paris Convention;

k) (deleted);

l) Chamber of Appeals – the body existing at "Sakpatenti" that hears a dispute arising in connection with the acquisition of rights to industrial property objects;

m) association – any association of entrepreneurs created in accordance with the legislation in force of Georgia or of its country of origin;

n) unprotected part of a trademark – a part of a trademark to which the exclusive rights of the owner do not extend;

o) goods marked in violation of the exclusive right to a trademark – goods which contain an identical or similar sign to a registered trademark or on which an identical or similar sign to a registered trademark is affixed, or which have an identical or similar form to a registered three-dimensional trademark and the production, importation into the territory of Georgia, storage, putting into civil circulation or storage/stockpiling for this purpose (placing for temporary storage) and/or any other use of which entails a violation of the exclusive right of the owner of the registered trademark, regardless of the place of marking.

Law of Georgia of 20 December 2005 No. 2380 – LHG I, No. 1, 04.01.2006, Art. 3

Law of Georgia of 28 June 2010 No. 3159 – LHG I, No. 35, 12.07.2010, Art. 206

Law of Georgia of 23 December 2017 No. 1922 – website, 11.01.2018

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024

Article 3. Trademark🔗

1. A trademark is any symbol or combination of symbols that is entered in the Register of Trademarks, is represented clearly and precisely, and is capable of distinguishing the goods and/or services of one enterprise from the goods and/or services of another enterprise (hereinafter – goods).

2. A symbol or combination of symbols may be a word (words), a name (names), a letter (letters), a numeral (numerals), a sound (sounds), an image, a colour (colours), the shape of goods or their packaging.

3. A trademark is protected on the basis of its registration with Sakpatenti or an international agreement.

4. A well-known trademark in Georgia is protected without registration, in accordance with Article 6bis of the Paris Convention.

Law of Georgia No. 2380 of 20 December 2005 - LHG I, No. 1, 4 January 2006, Art. 3

Law of Georgia No. 4048 of 21 February 2024 – website, 7 March 2024.

Article 4. Absolute grounds for refusal of registration of a trademark🔗

1. A trademark shall not be registered if the respective symbol or combination of symbols:

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

b) is devoid of distinctive character in respect of the respective goods;

c) is descriptive in respect of the goods for which its registration is requested, designates or/and is considered to designate only the type, quality, quantity, property, value, purpose, geographical origin, place or time of sale or another characteristic of the goods;

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

e) is contrary to public order or recognised principles of morality;

f) enables the consumer to be misled as to the quality, property, geographical origin or/and another characteristic of the goods;

g) wholly or in any part coincides with a symbol which, on the basis of Article 6ter of the Paris Convention, is not subject to registration, and there is no permission of the respective competent authority for its use, or wholly or in any part coincides with the existing/historical name of Georgia or of its territorial unit and there is no consent of the Ministry of Culture of Georgia for its use;

h) wholly or in any part coincides with a coat of arms, emblem, name or sign of an organisation which is not protected in accordance with Article 6ter of the Paris Convention, but there is a public interest in Georgia in the protection of the said sign and there is no consent of the owner of this sign or/and of another competent authority for its use;

i) contains or in any part coincides with the denomination of a new plant variety which, on the basis of the legislation of Georgia or international legislation, is protected in Georgia, and registration of the trademark is requested for the same or a similar plant variety;

j) designates only the shape or another characteristic of the goods which:

j.a) results from the nature of the goods;

j.b) is necessary to obtain a technical result;

j.c) gives substantial value to the goods.

2. The subparagraphs "b"–"d" and "f" of paragraph 1 of this Article shall not apply if, before the decision on the registration of the trademark is taken, this trademark, as a result of its use in civil circulation, has become established as a distinctive symbol in respect of the goods indicated in the application.

Law of Georgia of 20 December 2005 No. 2380 - LHG I, No. 1, 04.01.2006, Art. 3

Law of Georgia of 25 November 2015 No. 4556 - website, 08.12.2015

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

Law of Georgia of 5 July 2018 No. 3054 - website, 11.07.2018

Law of Georgia of 16 March 2021 No. 387 – website, 18.03.2021

Law of Georgia of 30 November 2023 No. 3874 – website, 15.12.2023

Law of Georgia No. 4048 of 21 February 2024 – website, 7 March 2024.

Law of Georgia No. 108 of 12 December 2024 - website, 28 December 2024.

Article 5. Relative grounds for refusal of registration of a trademark🔗

A trademark shall not be registered if it:

a) is identical to a registered trademark with an earlier priority in respect of identical goods;

b) is identical to a registered trademark with an earlier priority registered in the name of a third person, and the respective goods are so similar that a likelihood of confusion of these trademarks arises, including confusion resulting from association. This subparagraph shall not apply if the applicant submits the written consent of the holder of the registered trademark(s) with an earlier priority to the registration of the trademark;

c) is similar to a registered trademark with an earlier priority registered in the name of a third person, and the respective goods are identical or so similar that a likelihood of confusion of these trademarks arises, including confusion resulting from association. This subparagraph shall not apply if the applicant submits the written consent of the holder of the registered trademark(s) with an earlier priority to the registration of the trademark;

d) is identical to a design registered in Georgia with an earlier priority, except 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 to the registration of the trademark;

e) is a trademark in respect of which there exists a ground provided for by paragraph 1 of Article 18 of the Law of Georgia "On Appellations of Origin and Geographical Indications of Goods";

f) contains the name, pseudonym, facsimile or portrait of a person known in Georgia before the filing of the application for registration of the trademark, and there is no consent of that person or of his/her successor to its use, and if it is an asset of the history and culture of Georgia, − no consent of the Ministry of Culture of Georgia;

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

Law of Georgia of 20 December 2005 No 2380 - LHG I, No 1, 04.01.2006, Art. 3

Law of Georgia of 25 November 2015 No 4556 - website, 08.12.2015

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

Law of Georgia of 5 July 2018 No 3054 - website, 11.07.2018

Law of Georgia of 16 March 2021 No 387 – website, 18.03.2021

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

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

Law of Georgia of 21 February 2024 No 4048 – website, 07.03.2024

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

Article 6. Exclusive right🔗

1. The exclusive right of the owner to a trademark protected by registration arises from the date of registration of that mark.

2. A person holding the exclusive right may prohibit a third party, without his consent, from using in civil circulation a sign which, in relation to the protected trademark of the person holding the exclusive right, is:

a) identical and the goods are also identical;

b) identical, while the goods are so similar that there is a likelihood of confusion of these signs, including likelihood of confusion resulting from association;

c) similar, while the goods are identical or so similar that there is a likelihood of confusion of these signs, including likelihood of confusion resulting from association;

d) identical or similar and which enjoys a reputation in Georgia, regardless of the identity or similarity of the goods, if the use of this sign by a third party unfairly creates favourable conditions for the third party or damages the reputation or distinctive character of the protected trademark.

3. In the cases provided for by paragraph 2 of this Article, in addition to other possible prohibitions, the following shall be prohibited:

a) affixing the trademark to the goods or to their packaging;

b) offering, putting into civil circulation or storing in a warehouse for this purpose, importing or exporting goods marked with this sign, except where this action is carried out with goods marked by the person holding the exclusive right to the trademark;

c) offering or providing services using the trademark;

d) using the trademark for advertising or on business papers;

e) using the trademark as a firm name or as part thereof.

4. Without the permission of the trademark owner, a third party shall be prohibited from:

a) affixing a sign identical or similar to this trademark on the packaging, label, tag or any other means on which the trademark may be affixed;

b) offering for sale, putting into civil circulation, selling, preparing for sale, storing, importing or exporting packaging material, packaging, label, tag or any other means marked with a sign identical or similar to this trademark, on which this trademark is affixed.

Law of Georgia of 20 December 2005 No. 2380 - LHG I, No. 1, 04.01.2006, Art. 3

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024.

Article 7. Scope of the Exclusive Right🔗

1. A person holding the exclusive right to a trademark shall not have the right to prohibit a third party from using in civil circulation as a trademark:

a) one's own name and/or address, if the third party is a natural person;

b) a symbol or a combination of symbols that lacks distinctive character or is an indication of the kind, quality, quantity, property, value, purpose, geographical origin, place or time of sale, or other characteristic of the goods;

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

2. A person holding the exclusive right to a trademark shall not have the right to prohibit a third party from using this protected trademark in relation to goods that have been put into civil circulation directly by the trademark owner or on the basis of his/her consent. This rule shall not apply if the properties of the goods have been changed, the quality has deteriorated, or there is another significant ground for this prohibition.

3. The restrictions provided for by paragraph 1 of this Article shall apply only if the third party uses the trademark in compliance with the principle of good faith in the conduct of entrepreneurial activity.

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024.

Article 8. Publication of a Trademark in Reference Literature🔗

If the reproduction of a trademark in a dictionary, encyclopedia or other reference literature creates the impression that the trademark constitutes a generic concept in respect of the goods for which it is registered or for which its registration is sought, the publisher, at the request of the owner of the said mark, shall be obliged to indicate in subsequent editions of this reference literature that the published symbol constitutes a registered trademark.

Article 9. Application for trademark registration🔗

1. An application for trademark registration shall be filed with "Sakpatenti" by the applicant or their representative.

2. The application shall be completed in accordance with the established procedure, in the Georgian language.

3. (Removed).

4. The application shall relate to only one trademark.

5. The application shall contain:

a) a request for trademark registration;

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

c) the representation of the trademark;

d) the list of goods for which trademark registration is requested. It shall be permissible to submit the list of goods in a foreign language in the form of an annex, the Georgian translation of which shall be submitted to "Sakpatenti" within one month from the date of filing the application;

e) the identity and address of the representative, if the application is filed by a representative;

f) the signature of the applicant or the representative on the application.

6. The list of other data and documents necessary for the examination of the application, the time limits and conditions for their submission shall be determined by the legislation of Georgia.

Law of Georgia No. 3159 of 28 June 2010 - LHG I, No. 35, 12.07.2010, Art. 206

Article 10. Date of filing the application with "Sakpatenti"🔗

The date of filing the application with "Sakpatenti" shall be the day of its delivery to "Sakpatenti", if the application meets the requirements provided for by paragraphs 2 and 5 of Article 9 of this Law.

Article 11. Priority🔗

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

2. Priority for a trademark may be established by the date of filing the first application in a State party to the Paris Convention (convention priority), if no more than 6 months have elapsed from that date to the date of filing the application with “Sakpatenti”.

3. The priority of a trademark used on an exhibit presented at an official or officially recognized international exhibition organized by a State party to the Paris Convention and defined by the “Convention on International Exhibitions” shall be established by the first day of presentation of the exhibit at the exhibition (exhibition priority), if no more than 6 months have elapsed from that day to the date of filing the relevant application with Sakpatenti. Exhibition priority and convention priority shall not extend each other’s term.

4. An applicant who wishes to enjoy convention or exhibition priority shall, within one month from the date of filing the application with “Sakpatenti”, notify Sakpatenti thereof and, within 3 months from the filing of the application, submit documents confirming the right to claim such priority.

5. The fee determined in accordance with the established procedure for claiming convention or exhibition priority shall be paid within one month from the filing of the application with “Sakpatenti”.

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

6. If the same priority has been established for several trademarks, preference shall be given to the trademark whose actual use on the territory of Georgia began earlier.

Law of Georgia of 20 December 2005 No. 2380 - LHG I, No. 1, 4 January 2006, Art. 3

Law of Georgia of 21 February 2024 No. 4048 – website, 7 March 2024

Article 11¹. Indication and Classification of Goods🔗

1. Goods for which registration of a trademark is requested shall be classified in accordance with the International Classification.

2. In the application, goods shall be indicated in such a form that it is possible to determine precisely and clearly the scope of protection claimed for the trademark.

3. In the application, general indications of goods (including the general indication used in the heading of the International Classification) may be indicated if these indications meet the requirement of paragraph 2 of this Article.

4. If the list of goods indicated in the application is vague and/or general, the applicant shall, within a reasonable time limit determined by Sakpatenti, clarify the list of goods in accordance with the requirement of paragraph 2 of this Article. Otherwise, Sakpatenti adopts a decision to leave the application without consideration in respect of the said goods.

5. When indicating general indications of goods in the application (including the general indication used in the heading of the International Classification), the scope of the list of goods given in the application shall be determined according to the literal meaning of these indications. The protection claimed for the trademark by general indications of goods shall not extend to goods that are not covered by the content of these indications.

6. If protection of a trademark is requested for goods falling within more than one class of the International Classification, the relevant goods in the application shall be grouped according to classes and the number of the corresponding class shall be indicated.

7. Goods may not be considered similar solely on the ground that these goods are grouped in the same class of the International Classification. At the same time, goods may not be considered different solely on the ground that these goods are grouped in different classes of the International Classification.

Law of Georgia No. 4048 of 21 February 2024 – website, 7 March 2024.

Article 12. Examination of a Trademark Application🔗

1. Sakpatent shall conduct an examination of formal requirements and a substantive examination of a trademark application.

2. Sakpatent shall be entitled to require from the applicant additional material necessary for the examination. The additional material shall be submitted to Sakpatent within the time limit determined by it, which may not exceed 2 months. This time limit shall be counted from the day of delivery of the relevant notification to the applicant. In case of its violation, Sakpatent shall adopt a decision to refuse consideration of the application.

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

3¹. The applicant shall be entitled to request the merger of two or more applications for identical trademarks filed for different goods. Upon merger of the applications, the goods indicated in each application shall retain the priority date of the respective application.

4. Information related to the trademark shall be public immediately upon filing of the respective application.

5. The applicant shall be entitled to:

a) request, at any stage of the examination, suspension of the consideration of his/her own application after payment of the established fee. The total duration of the suspension shall not exceed 3 months;

b) review the material used during the examination and request a copy thereof;

c) before establishment of the priority for the application, supplement, change, correct or clarify the application material. After establishment of the priority, the said changes shall be permissible only after payment of the established fee, but not later than registration of the trademark. At the same time, in case of amendment of the trademark, only such an insignificant change shall be permissible as does not broaden the scope of its protection, while in case of amendment of the list of goods, only its restriction or clarification shall be permissible;

d) withdraw the application before registration of the trademark;

e) after payment of the established fee, resume the proceedings on the application. Resumption of the proceedings on the application shall be permissible if its termination occurred before publication of the application data, in accordance with Article 15 of this Law.

6. Other rules related to the drawing up and filing of an application, examination, appeal against the examination decision, suspension, extension and resumption of procedural time limits, as well as registration of a trademark shall be determined by the Instruction "On the Procedures Related to the Filing and Registration of a Trademark Application", which shall be issued by the Chairman of Sakpatent in accordance with the procedure established by the legislation of Georgia.

Law of Georgia of 20 December 2005 No. 2380 - LHG I, No. 1, 04.01.2006, Art.

Law of Georgia of 26 October 2010 No. 3743 – LHG I, No. 62, 05.11.2010, Art. 383

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024

Article 13. Formal examination of an application🔗

1. A formal examination of an application shall be conducted within 1 month from the filing of the application, except in the following cases:

a) if the applicant claims a convention priority or an exhibition priority, the formal examination of the application shall be conducted within 10 days from the expiry of the time limit provided for by paragraph 4 of Article 11 of this Law;

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

c) if the registration of a collective mark is requested, the formal examination of the application shall be conducted within 10 days from the expiry of the time limit provided for by paragraph 1 of Article 32 of this Law;

d) if a notification has been sent to the applicant requesting the additional material necessary for the examination, the formal examination of the application shall be suspended until a response to the notification is received, but not more than the time limit provided for by paragraph 2 of Article 12 of this Law.

2. The formal examination shall determine whether the application is drawn up in accordance with this Law.

3. If the application meets the requirements of paragraphs 2 and 5 of Article 9 of this Law, a certificate establishing the filing date of the application shall be issued in the name of the applicant, indicating the office number and the list of the submitted documents. Otherwise, the applicant shall be notified of a reasoned refusal to accept the application materials.

4. If, within 15 calendar days from the filing of the application, the fee determined in accordance with the established procedure for the formal examination of the application is not paid, or the amount paid is less than the amount established for the presentation of one class of goods, Sakpatenti shall adopt a decision to refuse consideration of the application. If, within that time limit, an amount is paid that is less than the amount established for the presentation of the classes of goods indicated in the application, but not less than the amount sufficient for the presentation of one class, the said examination shall be conducted in respect of the classes selected by the applicant, and, if no classes have been selected, in respect of the first as many classes as the fee paid is sufficient for.

5. On the basis of the formal examination, Sakpatenti shall issue a decision on accepting the application for consideration and establishing the priority, or on refusing consideration of the application, and shall notify the applicant.

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024

Article 14. Substantive examination🔗

1. Substantive examination shall be conducted within 6 months from completion of the examination of formal requirements on the application.

2. Substantive examination verifies whether there exist grounds for refusal of registration provided for by Articles 4 and 5 of this Law.

3. Based on the substantive examination, the applicant shall be sent a reasoned decision on registration of the trademark or on refusal of registration of the trademark in respect of the entire list of goods or a part thereof.

Law of Georgia of 23 December 2017 No. 1922 – website, 11.01.2018.

Article 15. Publication🔗

1. "Sakpatenti" shall, within one month from receipt of a positive decision of substantive examination on trademark registration, publish the application data in the official bulletin of industrial property (hereinafter – the bulletin).

2. If the applicant enjoys the right provided for by paragraph 2 of Article 16 of this Law, "Sakpatenti" shall publish the application data in the bulletin within one month from the day the Chamber of Appeals delivers the respective decision.

2¹. In the case of replacement of a negative decision delivered by substantive examination on trademark registration in respect of the entire list of goods or a part thereof with a positive decision on the basis of a court judgment that has entered into legal force, "Sakpatenti" shall publish the application data in the bulletin.

3. The bulletin shall publish the representation of the trademark, information about the owner and the address, the list of goods grouped according to the international classification for which registration of the trademark is requested, the priority of the trademark.

4. From the day of publication of the trademark application until its registration, the applicant shall be conditionally granted the same rights that it would have been granted by registration. If registration is not effected, the said rights shall not be considered to have arisen.

Law of Georgia of 20 December 2005 No. 2380 – LHG I, No. 1, 04.01.2006, Art. 3

Law of Georgia of 28 June 2010 No. 3159 – LHG I, No. 35, 12.07.2010, Art. 206

Article 15¹. Accelerated Trademark Registration Procedure🔗

1. Unless otherwise provided by this Article, the rules established by Chapter II of this Law shall apply during the accelerated trademark registration procedure.

2. The applicant shall have the right, at the time of filing the application or at any time after its filing, but not later than 3 months from receipt of the notification on acceptance of the application for examination, to request that accelerated examination of the application be conducted.

3. The application with a request for accelerated examination must be accompanied by all documents defined by Article 9 of this Law, a document confirming representation, if any, and the prescribed fee for accelerated examination of the trademark application and for trademark registration must be paid.

4. If the applicant wishes to benefit from the priority defined by paragraphs 2 and 3 of Article 11 of this Law or by Article 9quinquies of the Protocol to the Madrid Agreement, the application with a request for accelerated examination must be accompanied by a document confirming the right to claim priority, and the prescribed fee for claiming priority must be paid.

5. Within 3 days from the request for accelerated examination, Sakpatenti verifies whether the application meets the requirements of paragraphs 3 and 4 of this Article. If the application materials lack any document provided for by paragraphs 3 and 4 of this Article, the applicant shall be obliged to submit the said document within 15 days. Otherwise, Sakpatenti adopts a decision to refuse to conduct accelerated examination and examines the application in accordance with the rules established by Chapter II of this Law.

6. If the application with a request for accelerated examination meets the requirements of paragraphs 3 and 4 of this Article, Sakpatenti shall, within 7 working days, verify whether there exist grounds for refusal of registration of the trademark provided for by Articles 4 and 5 of this Law, and, in the case of adopting a positive decision, shall register the trademark in the Trademark Register, publish in the Bulletin the data on the registered trademark, and issue a certificate.

7. Within 3 months from publication in the Bulletin of the data on trademark registration, any interested person shall have the right to file an appeal with the Appeals Chamber requesting cancellation of the trademark registration solely on the ground that the requirements of Articles 4 and 5 of this Law have been violated.

8. If, after registration of a trademark under the accelerated procedure, an application having the right to enjoy an earlier priority is received by Sakpatenti and, in relation to the trademark registered under the accelerated procedure, there exists a ground for refusal of registration of the trademark provided for by Article 5 of this Law, Sakpatenti adopts a decision on cancellation of the accelerated registration of the trademark and publishes it in the Bulletin.

9. The decision referred to in paragraph 8 of this Article on the cancellation of accelerated registration of a trademark shall be appealed in the manner provided for by paragraph 2 of Article 16 of this Law.

Law of Georgia of 28 June 2010 No. 3159 - LHG I, No. 35, 12 July 2010, Art. 206

Law of Georgia of 21 February 2024 No. 4048 – website, 7 March 2024

Article 16. Appeal against an expert decision to the Appellate Chamber🔗

1. An applicant may appeal to the Appellate Chamber, within 3 months from the adoption of the decision, a decision of the examination of formal requirements refusing to consider the application.

2. An applicant may appeal to the Appellate Chamber, within 3 months from the adoption of the decision, a decision of the substantive examination refusing registration of a trademark in respect of the entire list of goods or a part thereof.

3. (Removed).

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

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

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

c) there exists a ground provided for by subparagraphs „b“–„i“ of paragraph 1 of Article 28 of this Law.

4¹. It shall be inadmissible, on the basis of a court judgment that has entered into legal force, to appeal to the Appellate Chamber a decision on the registration of a trademark with the same claim and ground.

4². In the case provided for by paragraph 4 of this Article, the right to file a complaint with the Appellate Chamber shall be vested in:

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

b) the holder of an earlier right, on the ground provided for by subparagraph „b“ of the same paragraph, except for the ground provided for by subparagraph „g“ of Article 5 of this Law;

c) the person defined by paragraph 3 of Article 28 of this Law, on the ground provided for by subparagraph „c“ of the same paragraph.

4³. At the request of the applicant, the holder of an earlier trademark who appeals a positive decision adopted by Sakpatenti on the registration of a trademark shall, if more than 5 years have elapsed since the date of registration of the trademark provided for by this decision, submit to the Appellate Chamber evidence that, during the last 5 years preceding the date of filing of the application for the trademark provided for by the appealed decision or the priority date, the trademark was actually used in Georgia for the goods for which this trademark is registered and which the holder of the earlier trademark indicates as the ground for the appeal. In the event of failure to submit evidence of actual use of the trademark or failure to indicate a valid reason for its non-use, the proceedings on the appeal shall be terminated. If the earlier trademark was used in respect of only a part of the registered goods, for the purposes of the proceedings on the appeal it shall be considered that the earlier trademark is registered only for the corresponding part of the goods.

5. The Appellate Chamber shall consider the complaint within 3 months from the day of its filing.

6. A decision of the Appellate Chamber may be appealed to a court.

Law of Georgia of 20 December 2005 No. 2380 – LHG I, No. 1, 04.01.2006, Art. 3

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024.

Article 17. Registration of a trademark🔗

1. If within the period established by paragraph 4 of Article 16 of this Law no appeal is filed with the Chamber of Appeals, or, on the basis of an appeal filed in accordance with paragraph 4 of Article 16, the Chamber of Appeals delivers a judgment on the registration of the trademark, Sakpatenti shall register the trademark in the Trademark Register (hereinafter – the Register) and shall publish the data on the registered mark in the Bulletin.

2. The Register shall contain the representation of the trademark, information about its proprietor, the priority date of the trademark, the date of registration of the trademark, the list of goods grouped according to the International Classification in respect of which the trademark is registered, and other information related to the registration.

3. Any interested person shall have the right, after submitting an appropriate application to Sakpatenti, to examine the data of the Register and to request a certified extract.

Law of Georgia of 20 December 2005 No. 2380 – LHG I, No. 1, 04.01.2006, Art. 3

Article 18. Certificate for a trademark🔗

1. After registration of the trademark in the Trademark Register, Sakpatenti shall issue a certificate for the trademark.

2. The certificate confirms the registration of the symbol as a trademark, the priority date of the trademark, the proprietor's exclusive right to the said trademark and the term of validity of the trademark registration.

Article 19. Making amendments to the Register🔗

1. Each amendment of the data mandatory for registration provided for by paragraph 2 of Article 17 of this Law shall be entered in the Register on the basis of an application of the proprietor of the trademark or his/her representative. At the same time, when amending a trademark, only such an insignificant amendment shall be permissible as does not broaden the scope of its protection, while when amending the list of goods, only its restriction or specification shall be permissible. An amendment shall be valid only after its registration.

2. Amendments entered in the Register shall be published in the next Bulletin.

3. Amendments shall also be entered in the certificate.

Law of Georgia of 20 December 2005 No. 2380 – LHG I, No. 1, 04.01.2006, Art. 3

Article 19¹. Division of a Trademark🔗

1. A trademark may be divided into two or more identical trademarks by assigning independent registration numbers to them, provided that no overlap occurs between the lists of goods corresponding to the trademarks arising on the basis of the division.

2. If, in the case provided for by paragraph 1 of this Article, an overlap occurs between the lists of goods corresponding to the trademarks arising on the basis of the division, Sakpatenti shall set a reasonable time limit for the trademark owner to eliminate the said defect. If the defect is not eliminated within this time limit, Sakpatenti shall adopt a decision to refuse to satisfy the relevant request.

3. The established fee shall be paid for the division of a trademark. In case of non-payment of this fee, the request shall not be satisfied.

4. A decision on the division of a trademark shall enter into force from the day of entry of the relevant data into the register.

5. All fees paid before the filing of an application for the division of a trademark shall be considered paid, and all relevant requests shall be considered filed for each trademark arising on the basis of the division.

6. The trademarks arising on the basis of the division of a trademark shall retain the filing and priority dates of the original trademark application.

7. If the established fee is paid, the trademarks arising on the basis of the division may be combined into one trademark.

Law of Georgia of 21 February 2024 No. 4048 – website, 7 March 2024.

Article 20. Term of validity of trademark registration🔗

1. The term of validity of a trademark registration shall be determined as 10 years and shall be counted from the date of registration of the trademark with "Sakpatenti".

2. The term of validity of a trademark registration may be extended for each subsequent 10 years, without limitation as to the number of extensions. The term of validity of a trademark registration shall be extended by "Sakpatenti" on the basis of an application filed with "Sakpatenti" by the owner of that trademark, after payment of the fee determined in the established manner. The said application shall be filed with "Sakpatenti" and the corresponding fee shall be paid during the last year of the validity of the registration.

3. An entry on the extension of the term of validity of the trademark registration shall be made in the register and in the certificate and shall be published in the bulletin.

4. If an application requesting extension of the term of validity of the trademark registration was not filed with "Sakpatenti" or the fee was not paid within the period provided for by paragraph 2 of this Article, the owner of the trademark shall have the right, within 6 months from the expiry of the term of validity of the trademark registration, to pay the said fee. In the event of missing this period, the trademark registration shall be terminated from the date of expiry of the validity of the registration, without the right to restore it, and a notice thereof shall be published in the bulletin.

5. (Removed - 21.09.2023, No. 3494).

6. If the trademark registration was terminated at the request of its owner, restoration of the registration shall be inadmissible.

Law of Georgia of 20 December 2005 No. 2380 - LHG I, No. 1, 04.01.2006, Art. 3

Law of Georgia of 21 September 2023 No. 3494 – website, 10.10.2023.

Article 21. (Removed)🔗

Law of Georgia of 20 December 2005 No. 2380 - LHG I, No. 1, 04.01.2006, Art. 3

Article 22. Fee🔗

For the examination of formal requirements for an application, substantive examination, accelerated examination, claiming priority, appealing the decision of the examination, registration of a trademark, registration of amendments, publication, issuance of a certificate, issuance of an extract from the register, suspension of procedural time limits related to registration, restoration and extension, division of a trademark, merger of trademarks arising on the basis of division, and performance of other actions related to the legal protection of a trademark, the fee established in the manner provided for by the legislation of Georgia shall be paid, the amount of which shall be determined by a Resolution of the Government of Georgia.

Law of Georgia of 28 June 2010 No. 3159 - LHG I, No. 35, 12.07.2010, Art. 206

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024.

Article 23. (Removed)🔗

Law of Georgia of 20 December 2005 No. 2380 - LHG I, No. 1, 04.01.2006, Art. 3

Article 24. Use of a trademark🔗

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

2. (Removed - 21.09.2023, No. 3494).

3. For the purposes of paragraph 1 of this Article, the following shall also be deemed to be use of a trademark:

a) use of a registered trademark with slightly differing elements which 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, on the territory of Georgia, a trademark to goods intended for export or to their packaging.

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

5. The acts provided for by paragraphs 1 and 3 of this Article shall be carried out to the extent that their performance is deemed to be genuine use of the trademark on the market.

Law of Georgia No. 2380 of 20 December 2005 - LHG I, No. 1, 04.01.2006, 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, 07.03.2024

Article 25. Transfer of rights arising from registration of a trademark🔗

1. Rights arising from registration of a trademark shall be transferred to another natural or legal person in accordance with the procedure established by the legislation of Georgia.

2. A trademark shall be transferred to another person together with the enterprise or without it.

3. The transfer of rights arising from registration of a trademark shall cover the entire list of goods or part thereof.

4. The transfer of an enterprise implies the transfer of the trademark as well, unless otherwise provided by the transfer contract.

5. A contract on the transfer of a trademark shall be concluded in writing. Failure to observe the written form shall render the contract void.

6. (Removed - 21.09.2023, No. 3494).

6¹. (Removed - 21.09.2023, 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 main trademark and the partially transferred trademark.

7. Upon transfer of a trademark, the relevant amendments shall be entered in the Register and published in the Bulletin after payment of the established fee.

8. The new owner of a trademark may not exercise the rights arising from registration against a third party until the relevant amendments relating to the transfer of the trademark are entered in the Register.

Law of Georgia No. 2380 of 20 December 2005 - LHG I, No. 1, 04.01.2006, 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, 07.03.2024

Article 26. Licence agreement🔗

1. The right to use a trademark may be granted by its owner (licensor) to another person (licensee) by a licence agreement. The licence agreement is concluded both in respect of the entire list of goods and in respect of a part thereof.

2. A licence is exclusive or simple.

3. If the nature of the licence does not follow from the contract, a simple licence is implied. In this case, the licensor is entitled to use the trademark himself and to conclude another licence agreement.

4. An exclusive licence does not give the licensor the right to conclude another licence agreement and to use the trademark, unless otherwise provided by the contract. The rights arising from an exclusive licence shall be valid for the term of the trademark registration, unless otherwise provided by the contract.

5. The licensee shall be prohibited from transferring the rights arising from the licence agreement or granting a sublicence, unless this directly follows from the contract.

6. In the event of a breach of the licence agreement, the trademark owner is entitled to exercise his exclusive rights provided for by this Law against the licensee, if the breach concerns the term of the contract, the form of use of the trademark, the list of goods for which the licence was granted, the territory in which the trademark may be used, the quality of the goods.

7. The registration of the fact of conclusion of a licence agreement in respect of a trademark shall be carried out with "Sakpatenti" and the relevant information shall be published in the bulletin after payment of the established fee.

8. In the event of infringement of rights in a trademark, the licensee shall bring an action only with the consent of the trademark owner. The holder of an exclusive licence is entitled to bring an action without the consent of the trademark owner, if the trademark owner, after receiving official notification, does not himself bring an action within a reasonable time.

9. The licensee is entitled to join the court proceedings conducted concerning infringement of rights in a trademark in order to obtain compensation for the damage caused to him.

10. The transfer of rights in a trademark or a licence shall not extend to a licence previously granted in the name of a third person.

11. (Removed - 21.09.2023, No. 3494).

Law of Georgia No. 2380 of 20 December 2005 - LHG I, No. 1, 04.01.2006, 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, 07.03.2024

Article 27. Grounds for cancellation of trademark registration🔗

1. The registration of a trademark shall be cancelled by "Sakpatenti":

a) at the request of the trademark owner. If a licence agreement is registered in respect of the trademark, cancellation of the trademark shall be permissible if the trademark owner submits evidence that, before requesting cancellation of the trademark, he/she notified the licensee of having such intention;

b) in the event of the death of the trademark owner who is a natural person, if he/she has no heir left, or in the event of liquidation of a legal entity, if no successor exists;

c) on the basis of paragraph 8 of Article 15¹ of this Law.

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

a) the trademark was not actually used continuously for 5 years for the goods for which this trademark is registered in Georgia. If the use of the trademark began or was resumed in the period from the expiry of the said 5-year term until the request for cancellation of the trademark registration, cancellation of the trademark registration shall be inadmissible;

b) the trademark has become a generic concept for the goods in respect of which it is registered;

c) the use of the trademark by the trademark owner or with his/her consent creates a misleading impression for the consumer as to the type, properties, quality, value or geographical origin or other characteristics of the goods.

3. Subparagraph "a" of paragraph 2 of this Article shall not apply if the non-use of the trademark by the trademark owner is conditioned by circumstances arising independently of his/her will. Such circumstances shall be considered to be, for example, import restrictions imposed in relation to the goods protected by the trademark or other requirements established by the authorities.

4. If the grounds for cancellation of the trademark exist in respect of part of the registered list of goods, the registration shall be cancelled only in respect of that part.

5. In the event of cancellation of the trademark registration in respect of the entire list of goods or part thereof, the corresponding amendments shall be entered into the register and a notice thereof shall be published in the bulletin.

Law of Georgia of 20 December 2005 No. 2380 - LHG I, No. 1, 04.01.2006, Art. 3

Law of Georgia of 28 June 2010 No. 3159 - LHG I, No. 35, 12.07.2010, Art. 206

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024.

Article 28. Declaration of a trademark registration as invalid🔗

1. The court shall declare a trademark registration invalid upon the request of a third party if:

a) the trademark registration was effected in violation of the requirements of Article 4 or Article 5 of this Law;

b) the trademark registration was effected in bad faith;

c) the trademark registration in one of the states party to the Paris Convention was effected by a representative or agent of the proprietor of this trademark in his own name, without the authorisation of the trademark proprietor, and the representative or agent of the trademark proprietor cannot submit appropriate justification;

d) the trademark contains such a company name, rights to which arose before the filing of the application for trademark registration, as a result of which a likelihood of confusion arises;

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

f) it is identical to a trademark well known in Georgia before the filing of the application for trademark registration, or is so similar that a likelihood of confusion with it arises, including confusion resulting from association. This rule shall also apply where the list of goods is different, if the use of the trademark without due cause creates an unfair advantage for its proprietor or is detrimental to the reputation or distinctive character of the trademark well known in Georgia;

g) the trademark is identical or similar to a trademark of earlier priority registered in the name of a third party, which has a reputation in Georgia, and the use of the trademark without due cause creates an unfair advantage for the applicant or is detrimental to the reputation or distinctive character of the protected trademark. This rule shall also apply where the list of goods is different;

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

i) the use of the trademark may be prohibited on the basis of Article 18 of the Civil Code of Georgia.

2. A trademark may not be declared invalid if it is registered in violation of the requirements of subparagraphs "b"–"d" and "f" of the first paragraph of Article 4 of this Law, but this trademark, as a result of use in civil circulation, has become established as a distinctive symbol in respect of the goods for which it is registered.

3. Declaration of a trademark as invalid may be requested by:

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

b) only the holder of the earlier right, on the ground that the requirements of Article 5 of this Law (except subparagraph "g" of the same Article) have been violated;

c) only the holder of the earlier right, if there exists a ground provided for by subparagraphs „b“–„i“ of paragraph 1 of this Article.

4. In the case provided for by subparagraph „c“ of paragraph 1 of this Article, the claimant shall be entitled, instead of declaring the registration of the trademark invalid, to request the transfer to him/her of the registration of the contested trademark.

5. If the ground for declaring the registration of a trademark invalid exists in respect of part of the registered list of goods, its registration shall be declared invalid only in respect of that part.

6. In the case of declaring the registration of a trademark invalid in respect of the entire list of goods or part thereof, the corresponding amendments shall be entered in the register and published in the bulletin.

7. A trademark may not be declared invalid if, before the filing of an action or a counterclaim for declaring the trademark invalid, the holder of the earlier right defined by subparagraphs „b“ and „c“ of paragraph 3 of this Article gave written consent to the registration of the trademark.

8. If the holder of the earlier right defined by subparagraphs „b“ and „c“ of paragraph 3 of this Article has, on the basis of the same Article, by an action or a counterclaim requested the declaration of the registration of the trademark invalid, he/she shall not be entitled to apply to the court again and request the declaration of the registration of the trademark invalid on another ground provided for by the same subparagraphs, if he/she could have requested, within the framework of the first action, the declaration of the registration of the trademark invalid on the corresponding ground.

9. A person shall not be entitled, on the basis of an earlier trademark, to request the declaration of the registration of a trademark invalid for the goods for which it is used, if he/she does not apply to the court with the corresponding action within 5 years after he/she became aware of the use of the contested trademark in Georgia. This rule shall not apply to a case where the registration of the contested trademark was effected in bad faith.

10. In the case provided for by paragraph 9 of this Article, the holder of the contested trademark shall not be entitled to request the prohibition of the use of the earlier trademark, notwithstanding that the holder of the earlier trademark has lost the right to request the declaration of the registration of the contested trademark invalid.

11. Upon the request of the holder of the contested trademark, the holder of the earlier trademark who requests the declaration of the registration of the trademark invalid shall be obliged, if more than 5 years have elapsed since the date of registration of the earlier trademark, to submit to the court evidence that, during the last 5 years before the date of filing or the priority date of the application for the contested trademark, the trademark was actually used for the goods for which this trademark is registered and which the holder of the earlier trademark indicates as the ground of the action. In the case of failure to submit evidence of the actual use of the trademark or failure to indicate a valid reason for its non-use, the proceedings on the action shall be terminated.

12. If, in the case provided for by paragraph 11 of this Article, the earlier trade mark was used in respect of only part of the registered goods, for the purposes of a dispute relating to the declaration of invalidity of the registration of the trade mark, the earlier trade mark shall be deemed to be registered for only the relevant part of the goods.

Law of Georgia of 20 December 2005 No. 2380 – LHG I, No. 1, 04.01.2006, Art. 3

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024

Article 29. Consequences of the cancellation or invalidation of the registration of a trade mark🔗

1. If the registration of a trade mark has been cancelled in accordance with Article 27 of this Law, the rights conferred by the registration shall be considered terminated as from the day of entry into the register of the record on the cancellation of the registration, unless another date is indicated in the court judgment.

2. If the registration of a trade mark has been declared invalid in accordance with Article 28 of this Law, the rights arising from its registration shall be considered terminated as from the day of the origin of those rights in the trade mark.

3. A decision declaring the registration of a trade mark invalid shall not have retroactive effect:

a) in respect of a court judgment on the infringement of exclusive rights in a trade mark, if that judgment entered into legal force before the entry into legal force of the decision declaring the registration of the trade mark invalid;

b) in respect of a transaction concluded and performed before the entry into legal force of this decision.

Law of Georgia of 20 December 2005 No. 2380 – LHG I, No. 1, 04.01.2006, Art. 3

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024

Article 30. Rights in a Collective Mark🔗

1. A collective mark is a symbol or a combination of symbols which may be protected as a trade mark under Article 3 of this Law and which distinguishes the goods of the members of the association owning the collective mark from the goods of other persons according to geographical origin, identical qualitative characteristics or other properties.

2. The applicant for and the owner of a collective mark may only be an association or a Legal Entity of Public Law.

3. (Removed – 21.02.2024, No. 4048).

4. The rules provided for by this Law shall apply in full to a collective mark, unless otherwise determined by this Chapter.

Law of Georgia of 20 December 2005 No. 2380 – LHG I, No. 1, 04.01.2006, Art. 3

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024

Article 31. Use of an indication of geographical origin as a collective mark🔗

1. As an exception to the prohibition provided for by subparagraph „c“ of paragraph 1 of Article 4 of this Law, it is permissible to register as a collective mark a symbol that designates the geographical origin of goods (the name of a place, district, region, country or another designation indicating the geographical origin of goods).

2. An indication of geographical origin shall not be used as a collective mark for goods that did not originate in the corresponding geographical place, district, region, country, if such indication creates a false impression as to the origin of the goods.

3. If an indication of geographical origin indicates particular qualities and quality of goods, such indication shall be used as a collective mark only for goods of the same origin that have the corresponding qualities and quality.

4. Paragraphs 2 and 3 of this Article shall also apply to a name, designation and mark that are similar to an indication of geographical origin.

Law of Georgia No. 2380 of 20 December 2005 – LHG I, No. 1, 04.01.2006, Art. 3

Law of Georgia No. 4048 of 21 February 2024 – website, 07.03.2024

Article 32. Regulations of the collective mark🔗

1. An application for a collective mark shall meet the requirements of Article 9 of this Law. The application shall be accompanied by the regulations of the collective mark. The applicant shall, not later than 2 months from the filing of the application, submit the regulations of the collective mark to Sakpatenti.

2. The regulations of the collective mark shall contain:

a) the name of the association;

b) the names and legal addresses of the members of the association;

c) the purpose of the association;

d) the conditions for use of the collective mark and control over its use;

e) the rights and obligations of the members of the association in connection with infringement of rights in the collective mark;

f) the list and uniform characteristics or common indicators of the goods for which the collective mark is intended.

3. If the collective mark contains a geographical name, the regulations shall provide that any person whose goods originate in the said geographical region and who meets the conditions for use of the collective mark defined by the regulations has the right to become a member of the association and to have the right to use this mark.

4. Any interested person has the right to review the regulations of the collective mark.

Law of Georgia No. 4048 of 21 February 2024 – website, 07.03.2024

Article 33. Examination of an application for a collective mark🔗

During the substantive examination of an application for a collective mark, along with the requirements provided for by paragraph 2 of Article 14 of this Law, it shall be determined whether the application meets the requirements provided for by paragraphs 1 and 2 of Article 30, as well as by Article 32 of this Law. At the same time, the examination shall not issue a negative decision on the registration of a collective mark if the applicant amends the regulations of the collective mark in such a way that the ground for refusal of registration no longer exists.

Law of Georgia of 20 December 2005 No. 2380 - LHG I, No. 1, 04.01.2006, Art. 3

Article 34. Restriction of the protection of a collective mark🔗

Registration of a geographical name as a collective mark does not grant its holder the right to prohibit a third party from using this designation in civil circulation, if this does not violate the norms of fair competition and the third party has a lawful ground for using this designation.

Article 35. Appeal🔗

A person entitled to use a collective mark may file an action in court regarding the violation of this right only with the permission of the association holding the collective mark, unless otherwise provided by the regulations of the collective mark.

Article 36. Amendment of the regulations of a collective mark🔗

1. The holder of a collective mark shall notify "Sakpatenti" of any amendment to the regulations of the collective mark.

2. When amending the regulations of a collective mark, the requirements of Articles 31 and 32 of this Law shall be taken into account.

Article 37. Cancellation of the registration of a collective mark🔗

The registration of a collective mark shall be cancelled:

a) in accordance with Article 27 of this Law;

b) if the holder of the collective mark uses this mark in violation of the regulations of the collective mark.

Article 38. Declaration of invalidity of the registration of a collective mark on the absolute grounds for refusal of registration🔗

In addition to the grounds provided for by Article 28 of this Law, the registration of a collective mark shall be declared invalid if it was registered in violation of the requirements of Article 33 of this Law. If the ground for declaration of invalidity is the regulations of the collective mark, it shall no longer be declared invalid if the holder of the collective mark, within 2 months from the day when it became aware of the necessity of making this amendment, amends the regulations in such a way that the ground for declaration of invalidity no longer exists.

Article 38¹. Certification mark🔗

1. A certification mark is a type of trademark that distinguishes certified goods from uncertified goods by the material, production process, quality, accuracy or other characteristic of the goods (except the geographical origin of the goods).

2. The owner of a certification mark may be any natural person or legal entity (including a Legal Entity of Public Law), if its activity is not related to the production or supply of the goods for which protection of the certification mark is requested.

3. The requirements established by this Law for a trademark shall fully apply to a certification mark, unless otherwise provided by this Chapter.

Law of Georgia No. 4048 of 21 February 2024 – website, 07.03.2024.

Article 38². Regulations on the certification mark🔗

1. The applicant shall, no later than 2 months from the filing of the certification mark application, submit to Sakpatent the regulations on the certification mark.

2. The regulations on the certification mark shall determine the persons entitled to use the certification mark, the conditions for use of the certification mark, the relevant goods, the rules for verifying the conditions necessary for use of the certification mark and for monitoring its use, as well as the sanctions imposed for violation of the conditions for use of the certification mark.

Law of Georgia No. 4048 of 21 February 2024 – website, 07.03.2024.

Article 38³. Grounds for refusal of registration of a certification mark🔗

1. In addition to cases where the grounds for refusal of registration of a trademark provided for by Articles 4 and 5 of this Law exist, a certification mark shall not be registered if:

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

b) the regulations on the certification mark contravene public order or the recognized principles of morality;

c) the certification mark may create a false impression in the consumer as to its meaning or content.

2. Paragraph 1 of this Article shall not apply if the applicant introduces into the regulations on the certification mark such amendments as will eliminate the grounds for refusal of registration of the certification mark.

Law of Georgia No. 4048 of 21 February 2024 – website, 07.03.2024.

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

In addition to cases where the grounds provided for by Article 16 of this Law exist, a third party may appeal to the Appeals Chamber a decision on registration of a certification mark if the requirements of Article 38³ of this Law have been violated.

Law of Georgia No. 4048 of 21 February 2024 – website, 07.03.2024.

Article 38⁵. Use of a certification mark🔗

The use of a certification mark shall be deemed to be its use by an authorised person defined by the regulations on the certification mark provided for by Article 38² of this Law, if the other requirements related to the use of a trademark established by this Law are satisfied.

Law of Georgia No. 4048 of 21 February 2024 – website, 07.03.2024.

Article 38⁶. Amendment of the regulations on a certification mark🔗

1. The owner of a certification mark shall be obliged to register with Sakpatenti the amendments made to the regulations on the certification mark.

2. The amendments to be made to the regulations on a certification mark shall meet the requirements of Articles 38² and 38³ of this Law.

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

4. The amendments made to the regulations on a certification mark shall enter into force from the day of entry of the relevant data into the Register.

Law of Georgia No. 4048 of 21 February 2024 – website, 07.03.2024.

Article 38⁷. Transfer of rights to a certification mark🔗

A certification mark may be transferred only to a person who meets the requirements of paragraph 2 of Article 38¹ of this Law.

Law of Georgia No. 4048 of 21 February 2024 – website, 07.03.2024.

Article 38⁸. Protection of rights to a certification mark🔗

1. In the event of infringement of rights to a certification mark, the owner of the certification mark or a person authorised by him or her shall have the right to bring an action.

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

Law of Georgia No. 4048 of 21 February 2024 – website, 07.03.2024.

Article 38⁹. Grounds for cancellation of the registration of a certification mark🔗

In addition to cases where the grounds provided for by Article 27 of this Law exist, the court shall cancel the registration of a certification mark if:

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

b) the owner of the certification mark does not take appropriate measures to ensure that the certification mark is used in compliance with the conditions of use of the certification mark defined by the regulations on the certification mark;

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

d) the amendments made to the regulations on the certification mark contradict the requirements of paragraph 2 of Article 38⁶ of this Law and the owner of the certification mark does not make such amendments to the regulations on the certification mark as would eliminate the said ground.

Law of Georgia No. 4048 of 21 February 2024 – website, 07.03.2024.

Article 38¹⁰. Grounds for declaring the registration of a certification mark invalid🔗

In addition to the existence of the grounds provided for by Article 28 of this Law, the court shall declare the registration of a certification mark invalid if it has been registered in violation of the requirements of Article 38⁶ of this Law and the owner of the certification mark fails to introduce into the regulations of the certification mark such amendments as will eliminate the said ground.

Law of Georgia No 4048 of 21 February 2024 – website, 07.03.2024

Article 39. Application for international registration of a trademark🔗

1. This Law applies to trademarks for which protection is requested under the Protocol of the Madrid Agreement, unless otherwise provided by that Protocol or by this Chapter of the Law.

2. An application for the international registration of a trademark, filed in accordance with Article 3 of the Protocol of the Madrid Agreement, shall be submitted to "Sakpatenti".

3. The application shall be accompanied by a translation into English of the list grouped in accordance with the international classification.

Law of Georgia No 2380 of 20 December 2005 – LHG I, No 1, 04.01.2006, Art. 3

Article 40. Record of international registration🔗

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

2. If the international registration is effected on the basis of the registration of a trademark with "Sakpatenti", the date and number of the international registration shall be entered in the register.

3. If the international registration is effected in the case provided for by paragraph 1 of this Article, the date and number of the international registration shall be entered in the register after the registration of the trademark with "Sakpatenti".

Article 41. Examination of a trademark extended to Georgia on the basis of an international registration under the Protocol of the Madrid Agreement🔗

1. For a trademark for which the grant of protection in Georgia is requested on the basis of its international registration under the Protocol of the Madrid Agreement (hereinafter – international trademark), only substantive examination shall be carried out and the compliance of the list of goods with the requirements of Article 11¹ of this Law shall be checked.

2. In respect of an international trademark, instead of the term "registration" used in Chapters I–VI of this Law, the term "protection" shall be used.

Law of Georgia No 2380 of 20 December 2005 – LHG I, No 1, 04.01.2006, Art. 3

Law of Georgia No 4048 of 21 February 2024 – website, 07.03.2024

Article 42. Publication and Appeal🔗

1. The data of the international registration of a trademark shall be published in the journal of the International Bureau of the World Intellectual Property Organization (WIPO).

2. In the event of a positive decision on granting protection in Georgia to an international trademark, the date and number of the international registration shall additionally be published in the Bulletin within one month from the adoption of the decision.

3. The appeal period provided for by paragraph 4 of Article 16 of this Law shall be counted from the day of publication in the Bulletin of the date and number of the international registration of the trademark.

Law of Georgia No. 2380 of 20 December 2005 - LHG I, No. 1, 04.01.2006, Art. 3

Article 43. (Removed)🔗

Law of Georgia No. 2380 of 20 December 2005 - LHG I, No. 1, 04.01.2006, Art. 3

Article 44. Filing of a National Application on the Basis of a Cancelled International Registration🔗

1. On the basis of a cancelled international registration, in accordance with Article 9quinquies of the Protocol to the Madrid Agreement, together with the national application the applicant shall submit a document certified by the International Bureau of the World Intellectual Property Organization confirming that the international registration extended to Georgia before the cancellation.

2. If, by the day of filing with "Sakpatenti" of the national application referred to in paragraph 1 of this Article, "Sakpatenti" has adopted a decision on granting protection to the corresponding international trademark, the national application shall not undergo substantive examination.

3. If, by the day of cancellation of the international registration, the international trademark had been granted protection in Georgia, "Sakpatenti" shall conduct only an examination of formal requirements on the national application referred to in paragraph 1 of this Article, after which it shall register the trademark in the register and publish the data on the registered mark in the Bulletin.

Law of Georgia No. 2380 of 20 December 2005 - LHG I, No. 1, 04.01.2006, Art. 3

Article 45. Protection of the exclusive right to a trademark🔗

1. In the event of infringement of the exclusive right to a trademark, the holder of the exclusive right to a trademark shall be entitled to demand:

a) cessation of the actions provided for by paragraphs 2–4 of Article 6 of this Law;

b) removal from civil circulation of goods marked in infringement of the exclusive right to a trademark, or removal of goods imported into or stored (placed for storage) in the territory of Georgia for the purpose of being put into civil circulation;

c) destruction of goods marked in infringement of the exclusive right to a trademark, if separation of the goods from the trademark is impossible or if the trademark is affixed to the goods;

d) destruction of any image, label, imprint, packaging, wrapping or advertising material or sign that contains the trademark or is a copy or imitation thereof, including deletion of any material or image placed on the Internet that contains the trademark;

e) destruction of clichés, matrices, other devices, technical equipment and tools intended for the production of the trademark.

2. The holder of the exclusive right to a trademark shall be entitled, at his/her discretion, to demand the simultaneous performance of several actions provided for by paragraph 1 of this Article.

3. In the event of infringement of the exclusive right to a trademark, on the basis of a request of the holder of the exclusive right to a trademark, by a court judgment it shall be possible for the action provided for by subparagraph “a” of paragraph 1 of this Article to be performed also in respect of a person who knew or should have known that his/her service is or was used for infringement of the exclusive right to a trademark on a commercial scale.

4. In exceptional cases, the court shall be entitled, on the basis of a request of the infringer of the exclusive right to a trademark, instead of performing the actions provided for by subparagraphs “b”–“e” of paragraph 1 of this Article, to impose on him/her payment of monetary compensation, if he/she acted negligently or if the application of the corresponding security measure would cause him/her disproportionate damage, and provided that the amount of monetary compensation determined by the court is acceptable to the holder of the exclusive right to a trademark.

5. In the event of infringement of the exclusive right to a trademark, the holder of the exclusive right to a trademark shall be entitled, in addition to the action provided for by paragraph 1 of this Article, to demand the performance of one of the following actions:

a) compensation for the damage caused (including lost profit), if the infringer of the exclusive right to a trademark knew or should have known about the infringement of the exclusive right to a trademark;

b) disgorgement of the income received as a result of the infringement of the exclusive right to a trademark from the infringer of the exclusive right to a trademark in favour of the holder of the exclusive right to a trademark;

c) payment of a one-time monetary compensation.

6. When determining the amount of damage, account shall be taken of the nature of the infringement of the exclusive right to a trademark, the income derived from the infringement of the exclusive right to a trademark, the material and non-material damage caused to the holder of the exclusive right to a trademark, as well as the estimated income that the holder of the exclusive right to a trademark would have received through the lawful use of the trademark.

7. The one-time monetary compensation shall be determined in an amount not less than that which the infringer of the exclusive right to a trademark would have paid upon obtaining permission to use the trademark.

8. When determining the amount of the one-time monetary compensation, account shall be taken of the quantity of goods marked in infringement of the exclusive right to a trademark, the identity of the trademark used or the degree of similarity to the protected trademark, the reputation of the trademark in Georgia, the intent of the infringer, the scale, nature and other characteristics of the services offered in infringement of the exclusive right to a trademark, and/or any other circumstance that may be taken into account when determining the amount of compensation.

Law of Georgia of 23 December 2017 No. 1922 – website, 11.01.2018.

Article 45¹. Relationship of registered conflicting trademarks🔗

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

2. In the case provided for by paragraph 1 of this Article, the holder of the later registered trademark shall not be entitled to prohibit the holder of the earlier trademark from using the trademark.

Law of Georgia of 21 February 2024 No. 4048 – website, 07.03.2024.

Article 46. Application filed and certificate issued before the entry into force of this Law🔗

1. An application for the registration of a trademark filed before the entry into force of this Law shall be considered in accordance with Resolution No. 304 of 16 March 1992 of the Cabinet of Ministers of the Republic of Georgia on the approval and enactment of the Regulation "On Trademarks".

2. A certificate issued for a trademark registered before the entry into force of this Law shall remain in force after the entry into force of this Law.

Article 47. Normative acts declared invalid🔗

Upon the entry into force of the Law, the following shall be considered invalid:

a) Resolution No. 304 of 16 March 1992 of the Cabinet of Ministers of the Republic of Georgia on the approval and enactment of the Regulation "On Trademarks";

b) Resolution No. 483 of 25 June 1993 of the Cabinet of Ministers of the Republic of Georgia on additional measures to regulate the use of a trademark (marking) in the Republic of Georgia.

Article 48. Entry into force of the Law🔗

This Law shall enter into force upon expiry of 3 months after publication.

President of Georgia E. Shevardnadze

Tbilisi,

5 February 1999

No. 1795-IIs