If you’re interested in registering a trademark in Georgia but aren’t sure what the process is like, we’ve got all the answers! This article will detail the stages of registration and the relevant fees for expats interested in trademark registration in Georgia.
What is a Trademark?
A trademark is a sign or combination of signs distinguishing one company’s goods or services from another. Trademarks may have various forms. They may consist of word(s), including personal names, letters, numerals, sounds, images, and 3-dimensional figures. For example, the shape of goods or their packaging can be a trademark. You can trademark even the decoration of goods by using one specific color or color combination.
Brand Recognition
Legal Protection of Trademarks in Georgia
Various legal documents govern both trademark registration in Georgia and trademarks in general. This includes the Law of Georgia on Trademarks and several important international agreements. These can be the Paris Convention for the Protection of Industrial Property, the Madrid Protocol, and the TRIPS agreement.
The National Intellectual Property Center of Georgia (also known as “Sakpatenti”) determines the policy in the field of intellectual property and regulates trademark registration in Georgia.
Trademarks are protected on the basis of their registration with Sakpatenti or on the basis of international agreements. However, “well-known” trademarks in Georgia are protected without registration. The Chamber of Appeals of Sakpatenti or the court can recognize a trademark as “well-known”.
International Classification
During trademark registration, one should specifically indicate for what goods/services the applicant intends to register the trademark for. The goods and services are classified by the Nice Agreement concerning the International Classification of Goods and Services adopted and signed on June 15th, 1957.
If you want to use a trademark for selling leather footwear, for instance, it falls under class 10 of the Nice agreement. However, selling sports footwear falls under a different category (class 25).
It’s important to know in advance, which category of goods and services you need a trademark registered for. Otherwise, you won’t be able to enforce your rights as a trademark owner for every type of goods and service your company offers. Also, registration fees might be different depending on how many classes of goods you are indicating in your application.
Procedures for Trademark Registration
You can submit an application requesting trademark registration either in person (at Sakpatenti) or electronically. One application can only register one trademark at a time. Therefore, if you would like to register multiple trademarks, you will need to undergo this process multiple times.
Both electronic and paper applications have a designated form. An essential part of the application includes:
- personal information about the applicant (full name, identification number, address, etc.);
- a clear visual representation of the sign;
- a verbal description of the sign;
- the type of goods or services for which the trademark’s usage is intended; and
- a signature of the applicant or their representative.
If you submit a sound symbol for registration, then you shall also submit a graphical expression (e.g. musical notation), the electronic version of the graphical representation, and an audio recording of the sign. The applicant can also indicate the color or combination of colors subject to protection, if applicable.
Formal Examination
In our guide to trademark registration, we will describe each stage that the application passes through.
First, Sakpatenti conducts a formal examination of the application and determines whether it contains all the required information and documents. The applicant must cover the fee of the formal examination within 1 month of submitting the application. Failing to do so, Sakpatenti typically decides not to review the application. The cost of a formal examination of a trademark for only one class of goods is 90 USD, and for each additional class of goods, the examination fee is 50 USD.
If an application meets the formal requirements of the law, then Sakpatenti will confirm this within 2 months after its submission. The agency will issue a note in the name of the applicant indicating the date of the application, the application number, and a list of the filed documents.
If the applicant fails to meet the formal requirements the agency will refuse to accept the application and notify the applicant of the reasons for refusal. The applicant can appeal against such refusal in the Chamber of Appeals within 3 months.
Substantive Examination
The next stage is a substantive examination of the application. The substantive examination aims to identify if there are any absolute or relative grounds for rejecting the application. The substantive examination lasts for 6 months after the formal examination. The fee for this is 120 USD.
If refused, the applicant can appeal to the Chamber of Appeals within 3 months.
But if approved, the agency will publish the application data in the Official Bulletin of Industrial Property within 1 month after the substantive examination. The publication fee is 60 USD. The Bulletin will include a trademark image, its description, the address of the owner, and the list of goods (according to the international classification) the trademark protects.
Publication & Registration
Within 3 months after the publication, any person may file an appeal with the Chamber of Appeals against the decision. If the 3-month time limit has passed without an appeal, then Sakpatenti shall register the trademark in the Trademark Registry (hereafter referred to as the “Registry”) and shall publish data on the registered trademark in the Bulletin.
The registration of a trademark for ten years and the issuance of a certificate cost 150 USD. You can see the full list of all trademark-related fees here.
After registration, the information kept in the Registry becomes publicly accessible, and anyone will be able to request the certified extract. The applicant will be able to hold a trademark certificate confirming the registration of the trademark, as well as the date of trademark priority, the exclusive right of the holder, and the validity of trademark registration.
Once you have the application ready, submit it. You will then have 1 month to pay the application fee (for formal examination).
Sakpatenti will conduct a formal examination within 2 months after the submission of the application.
Sakpatenti will check the absolute and relative grounds of refusal for 6 months after the formal examination.
Any person can appeal against the approval decision of substantive examination. The deadline for this is 3 months.
Once all stages are successfully completed, Sakpatenti will register the trademark.
Grounds for Refusing Trademark Registration
The law determines cases preventing trademark registration. There are two types of grounds for refusal: absolute grounds for refusal and relative ones. We’ll look at examples of both types below.
Absolute Grounds
A standard letter, number, or color is not subject to registration. Registration is also not possible if a sign is not capable of distinguishing one brand from another, or if a symbol abuses or contradicts national values, religion, traditions, or moral standards. These are all absolute grounds for refusal.
Relative Grounds
A trademark won’t be registered if it is identical or similar to a trademark that was registered earlier at Sakpatenti. It also won’t be registered if it contains the names or images of a historical monument of Georgia, or the name, pseudonym, facsimile or portrait of a person who has been famous in Georgia (prior to applying for the registration). These are the relative grounds for refusal.
International Agreements
As already mentioned, international agreements establish the foundation for protecting trademark rights in Georgia. They also simplify the process of registering the trademark beyond Georgia’s borders, in the other countries party to the agreement.
Paris Convention
For instance, according to the Paris Convention, any person who has duly filed an application for a trademark registration in one of the countries party to the agreement will also be given priority in other member countries within 6 months of filing an application. The date of submitting the documents in the first country will be regarded as the date of priority in other countries. (As a refresher, you can find the priority procedure here).
Madrid Protocol
The applicant can extend the protection of the trademark registered in Georgia beyond its borders to the member countries of the Madrid Protocol at any time, by filing one single application, based on the procedure of International Registration. Data on the international registration of trademarks is published in the Gazette of the International Bureau of the World Intellectual Property Organisation (WIPO).
And if the application is registered internationally according to the Madrid Protocol and the applicant wants to register the trademark in Georgia, Sakpatenti will use an easier procedure and conduct only a substantive examination of the application. In this case, a formal examination is not needed.
Is Trademark Registration Worth It?
The process for trademark registration is long and complicated. However, it is important to outline all of the legal benefits that trademark registration brings.
Exclusivity
From the date of registration of the trademark, the proprietor has exclusive rights to prevent a third party from using an identical or similar trademark in the course of trade without their permission, on the territory of Georgia. The rights of the holder can be assigned to other natural or legal persons.
If the exclusive rights of the holder of the trademark are infringed, they can request:
- Termination of wrongful usage of the trademark.
- Removal from the course of trade of the goods unrightfully marked.
- Destruction of the goods unrightfully marked, if the trademark can’t be removed from the goods.
- Compensation of damages, including unreceived income.
- Seizure of the income received by a violator in favor of the exclusive-right holder.
- One-time compensation.
If you are seeking assistance with trademark registration in Georgia, or general information regarding trademarks, feel free to reach out. Schedule a Free Consultation and our legal experts will assist.
