Georgia

TRADEMARK REGISTRATION IN GEORGIA

Effective trademark protection allows avoiding problems and potential losses especially in cases of infringement or/and unfair competition by third parties. To ensure respect for the trademark rights, registration of trademarks is paramount; although it is not a straightforward process, assistance of an experienced and highly qualified trademark attorney will ensure successful prosecution of a trademark application.

The ways to obtain the exclusive right to a trademark in Georgia:

1. Registration at «Sakpatenti» – Patent and Trademark Office.
2. Recognized as well­known by the Chamber of Appeals of «Sakpatenti» or by the court
3. International registration in accordance with the Madrid Agreement and the Protocol.

The following should be taken into account for registration of a trademark in Georgia:

APPLICANT

Anyone claiming to be a proprietor of a trademark may apply for registration of a trademark. Nationals and foreigners have equal right in this regard but a foreign applicant must be represented by a Georgian Attorney.

CLASSIFICATION OF GOODS

The International (Nice) Classification of goods/services (latest edition).

POWER OF ATTORNEY REQUIREMENTS

Notarization or Legalization is not required for the Power of Attorney. The company’s stamp, if it is used, should be placed on the signature as well as the date of signing.

PROCEDURE

The procedure for obtaining trademark registration in Georgia is full examination of the application with the opposition period. The first stage after filing is the formal examination, and the second stage is the substantive examination.

TRADEMARK SEARCH

There is no official search in Georgia certified by the GePTO, however a search can be conducted in pre-paid databases of the registered trademarks. Trademark search is not obligatory for registration of a trademark in Georgia, but it is highly recommended in order to avoid confusing similarity of a prospective mark to already registered and applied trademarks with an earlier priority, which can result in a provisional refusal.

Considering the search results and evaluations of our experienced Georgian Trademark Attorney, it would be possible to estimate the risks of receiving a refusal and evaluate the possible strategies to overcome it as well as the chances of success.

In this estimation the following factors would be assessed:

• The similarity of the trademark to any existing trademark phonetically, semantically or by visual criterion.
• The similarity in the nature of the applied goods/services, similarities in their intended purpose as well as method of use.
• It will also be assessed if any similar goods/services are in competition with the applied goods/services or related.
• Other factors, which would be considered, are the distribution channels of said similar goods/services and if the degree of similarity is to the point of causing confusion in the views of the general public.
• The probability of the refusal on absolute grounds, such as a lack of trademark distinctiveness and/or its misleading character as to the goods manufacture, origin of goods etc.

This preliminary assessment of the protectability of the trademark assists the applicant to avoid unnecessary costs while considering all available options in protection of the trademark.

APPLICATION FILING

The following information and documents are required for application filing:

• Trademark name/image;
• Applicant’s name and address;
• List of goods/services in compliance with the latest edition of the Nice Classification;
• POA signed by applicant.

EXAMINATION

Formal examination: The formal examination entails checking the compliance of the application and accompanying documents with statutory requirements.

Substantive Examination. In the substantive examination, the mark is thoroughly examined in respect of distinctiveness, similarity (or being identical) with pending applications or existing trademarks in the Register of Trademarks, and compliance with the requirements of the Trademark Law and Rules of Trademark Examination.

Refusals: In case of a refusal, our Georgian Trademark Attorney will carefully review the refusal to provide a Legal Opinion and discuss with the Applicant or representing attorney the options available in overcoming the said refusal.

TIME FROM FILING TO REGISTRATION

If no obstacles, generally eighteen (18) months. The accelerated examination allows to obtain registration within 2 months.

In order to request the expedited examination, the relevant petition shall be filed by a Trademark Attorney along with payment of official fee.

OPPOSITION TERM

The opposition period in Georgia is three (3) months from the date of publication and provided by law for both national and international applications.

PROTECTION TERM

The registration is valid for ten (10) years from the registration date.

RENEWAL REQUIREMENTS

While valid for 10 years, the validity of a Trademark can be extended through a request for a renewal. This renewal request can be filed within twelve (12) months prior to the expiration date of the trademark.

The trademark registration may be renewed within a six-month period following its expiry without additional official fee for the late renewal.

The following information and documents are required for renewal:

• Power of Attorney
• The number of the trademark certificate
• Payment of relevant official fees.

DECLARATION OF USE

Not required.

NON-USE GRACE PERIOD

The non-use grace period is five (5) years from the trademark registration date.

ASSIGNMENT
LICENSING
RECORDAL OF CHANGE IN NAME OR ADDRESS OF THE RIGHT HOLDER