Trademarks - a Brand Belongs to Whoever Files First, Not to Whoever Created It
In Georgia a trademark right arises from registration and priority is set by the filing date - not by how long a name has been used. That means a company ten years in the market but with no registration can wake up to a cease-and-desist letter over its own name, sent by someone who filed last week. And the reverse: a foreign brand registered in Europe or the United States belongs to nobody in Georgia until it is registered here.
This page covers the full trademark cycle: how a prior search is done and why the choice of classes is the most expensive decision in the application, what stages examination goes through and on what grounds Sakpatenti refuses, how opposition works and what to do when a brand has already been squatted, when a registration is cancelled for non-use and how protection is extended abroad through a single filing. Counterfeit enforcement and domain disputes have their own pages.
Five Situations and What Is Done in Each
Trademark cases turn on timing: the same problem is solved easily within three months and becomes litigation within three years.
Registering a Brand - From the Search to the Certificate
Prior search and risk assessment
A search of Sakpatenti's register for identical and similar marks in the relevant classes, plus international registrations extending to Georgia. The lawyer looks not only for identical marks but for similar ones - phonetically, visually and conceptually - because similarity is what triggers refusals and oppositions. The search result changes either the mark or the strategy before filing.
Choosing classes with a five-year horizon
A mark is protected only for the goods and services listed in the application; adding a class later is a new application with a new date. The lawyer selects classes for the plan rather than today's activity - online sales, franchising, a new product line - while avoiding surplus classes, which create the risk of cancellation for non-use.
Preparing and filing the application
The exact representation of the mark (word, figurative, combined), the applicant's identity (an individual or a company - which matters for later assignment), the list of goods and services under the Nice Classification, the fee. The filing date is the priority, so the application goes in quickly and defects are cured afterwards.
Examination and answering a refusal
Sakpatenti checks absolute grounds (distinctiveness, descriptiveness, deception, public order) and relative grounds (earlier similar marks). On a refusal the lawyer responds with arguments: the degree of similarity, different classes and consumers, distinctiveness acquired through use, a letter of consent from the earlier rights holder.
Publication, opposition and registration
The application is published in the bulletin and a third party may oppose within the statutory deadline; the lawyer answers an opposition or, for the client, files one. Once the deadline passes without incident the mark is registered and a certificate issues for ten years, renewable.
After registration - monitoring and use
Monitoring the bulletin for similar applications (the opposition deadline is short and missing it means an invalidity dispute later), an archive of evidence of use against the cancellation risk, registration of licences and assignments, and a renewal calendar.
When Someone Else Has Registered Your Brand - Three Routes and Their Real Chances
The first and best route is opposition, if the registration is not yet complete: once the application is published, an interested party may file an opposition with Sakpatenti within the statutory deadline on the basis of an earlier right or earlier use. The evidence here is mostly commercial: invoices, contracts, advertising, social media archives, press - anything that shows the date and the brand's recognition. This stage is cheap and fast, which is exactly why monitoring the bulletin is a routine cost for a brand owner.
The second route is invalidation of a registered mark. Here the burden gets heavier: you must show either your earlier right (an earlier mark, a well-known mark, a company name) or the applicant's bad faith - that is, that they knew of your brand and took it deliberately. The classic evidence of bad faith: a former distributor or partner, a former employee, correspondence about cooperation, a demand to "buy back" the brand after registration.
The third route is often the most practical - negotiation. Where the squatter does not use the brand and their aim is a buy-out, the lawyer builds both lines in parallel: an invalidity or cancellation case (which shows them the real risk) and an offer for assignment of the mark. A third instrument strengthens that negotiation: a cancellation action for non-use - a mark unused for five years is cancelled on a third party's application, and that weakens the squatter's position with every passing year.
What a Trademark Case Rests On
- First to file
- Priority is set by the filing date, not by how long the mark has been used. Earlier use is an argument in a dispute (opposition, bad faith) but does not automatically override a registration.
- 10 years and renewal
- A registration lasts ten years and is renewable indefinitely; missing the renewal deadline means losing the right. The lawyer keeps a renewal calendar across all of a client's marks.
- Classes
- Protection extends only to the goods and services listed in the application (Nice Classification); adding a class is a new application with a new priority. Surplus classes create a non-use risk.
- Opposition deadline
- After publication a third party has the statutory period to oppose; once it passes the fight moves to invalidation of a registered mark, which is harder and more expensive.
- Five years of non-use
- A mark not used on the registered goods within five years of registration is cancelled on a third party's application. Evidence of use (invoices, advertising, packaging) should be kept in an archive.
- Well-known marks
- A well-known mark enjoys protection even without registration, but its reputation must be proven in Georgia - surveys, sales, advertising spend, press. That is a dispute, not automatic protection.
What to Prepare Before the Application Is Filed
- The final representation of the mark: the word form, the logo file, colour codes - registration protects exactly what is submitted.
- The list of goods and services covering current and planned activity, allocated across Nice classes.
- The result of a prior search for identical and similar marks in the Georgian register and in international registrations.
- A decision on the applicant: an individual or a company - taking into account future investors, franchising and assignment.
- Existing evidence of use with dates (advertising, invoices, the website, social media) - in case of a dispute.
- The international plan: which countries you will enter and when - a Madrid application within the priority period is far cheaper.
Three Trademark Cases
A distributor who registered the brand in its own name
The Georgian distributor of a foreign brand registered the mark to its own company during the cooperation; after the contract ended it barred the manufacturer from using the brand. The lawyer: an invalidity claim on grounds of bad faith - the distribution agreement, correspondence and invoices showing the applicant knew the brand. The registration was declared invalid and the mark transferred to the manufacturer.
A refusal for "descriptiveness" and acquired distinctiveness
Sakpatenti refused a local brand's application - the name described the product. The lawyer: a reply to the examiner proving acquired distinctiveness - seven years of sales, advertising spend, a consumer survey and press coverage; in parallel, strengthening the mark with a figurative element. The mark was registered in combined form, with the word element supported by the additional evidence.
A dormant mark of five years blocking the way
A new company could not register its name - an identical mark had been registered to another party eight years earlier but was nowhere in the market. The lawyer: an application to Sakpatenti to cancel for non-use (the owner could produce no evidence of use) and, in parallel, its own application, which was registered once the cancellation went through. The brand was freed up within six months.
Questions About Trademarks
My brand is registered in Europe. Is it protected in Georgia?
No, unless Georgia is designated in the international registration or you filed separately with Sakpatenti - intellectual property is territorial. The simplest route is to add Georgia to an existing registration through the Madrid System; the alternative is a direct national application. Until that is done, anyone can register your brand in Georgia.
How long does registration take and what does it cost?
The standard procedure takes months: formal check, examination, publication, the opposition period, registration; accelerated examination costs an additional fee. The cost consists of Sakpatenti's fees (depending on the number of classes) and the lawyer's fee. The most expensive option is skipping the prior search - a refusal or opposition does not refund the fee.
Should I register the logo and the name separately?
It depends on strategy: a word mark protects the name in any graphic presentation - broader protection; a figurative or combined mark protects a specific visual. Companies with descriptive names often start with a combined mark (easier to register) and later add the word mark on the basis of acquired recognition. The lawyer chooses on the basis of the search result.
Should I take several classes or just one?
As many as you genuinely operate in or will within the next few years. Surplus classes create a double cost: the fee now and the risk of cancellation for non-use in five years - a competitor will attack precisely the unused classes. Too few classes means a new product is unprotected and a new application takes a new date.
Should I register the mark to an individual or to the company?
It depends on who will own the brand in five years. Registration to an individual is flexible for a founder (a change of company does not affect the mark) and allows income through licensing; registration to the company puts the asset on the balance sheet, which matters for investors and a sale. The lawyer weighs this together with the tax and corporate structure.
Lawyers for Trademark Cases
In a brand case everything turns on two dates: the filing date and the opposition deadline. Within 15 minutes the coordinator connects you with a lawyer or patent attorney who files applications and oppositions with Sakpatenti on a regular basis.
No published lawyers in this category yet
That does not mean we cannot help. Call us - we will match you with a specialist for a remote consultation or from a nearby city.
Call: 568 330 318Other Services in Intellectual Property
Using a Brand Without Registering It - or Has Someone Already Beaten You to It?
At a free consultation the lawyer runs a search of Sakpatenti's register, tells you whether your name is free, which classes you need and what time you have to oppose if you have run into someone else's application. The coordinator calls in 15 minutes.