Apr 03, 2024 (Newsletter Issue 3/24)
New Law on Trademarks in Force
From March 8, 2024, the amendments to the Law of Georgia “On Trademarks” came into force, which were prepared within the framework of the European integration of the country and aimed to improve the mechanisms of legal protection of trademarks.
The changes affected various aspects related to the trademark.
In particular, the absolute and relative grounds for refusal to register a trademark were initially established. The absolute grounds for a refusal to register a trademark if it refers only to the shape of the goods or another feature that is due to the properties of the goods is necessary to achieve a technical result and/or adds substantial value to the goods. The reason for refusal to register a trademark is no longer a circumstance when the trademark was one non-stylized (standard) letter, number, or one color taken separately. The new edition defines the grounds for refusal to register symbols that represent a generic concept.
The law provides for the possibility of submitting the consent of the owner of the opposed registered trademark or design, which allows the applicant to register a trademark that is similar to the already protected trademark or design. The letter of consent might be provided both at the stage of substantive examination and during the appeal of the final Office’s decision.
The changes also affected the deadlines for trademark examination. The term of the formal examination was reduced from 2 to 1 month, and the term of payment of the formal examination fee was determined by 15 calendar days. In addition, applicants were allowed to request an expedited trademark examination within 3 months of receiving the notification of acceptance of the application.
Applicants/trademark owners are allowed to request a division of the trademark and different priorities may be set for listing different goods and/or services.
Source: www.craneip.com
Apr 22, 2021 (Newsletter Issue 8/21)Further Steps towards Common EU Practices End of March 2021, the National Intellectual Property Center of Georgia (Sakpatenti published two practice papers to announce their agreement on common EU principles regarding designs:
- Common Communication on the Common Practice — Graphic Representation of Designs (CP6)
- Common Communication on the Common Practice of Designs - Criteria for assessing disclosure of designs on the internet (CP10)
Common Communication on the Common Practice — Graphic Representation of Designs (CP6)
The practice paper provides a clear and comprehensive explanation of the principles on which the practice is based and seeks to increase transparency, legal certainty and predictability for the benefit of users and examiners of IP offices. It also aims to become a reference for all interested parties, covering a majority of cases.
The document is divided into two parts; the first part summarises the criteria, while the second part provides a complete explanation of the specific criteria applicable in each case. It has been made available to the public in Georgian and English.
Common Communication on the Common Practice of Designs - Criteria for assessing disclosure of designs on the internet (CP10)
Sakpatenti published a practice paper on the criteria for assessing the disclosure of designs on the internet and to provide recommendations thereof. It provides a clear and comprehensive explanation of the principles on which the practice is based, and which will be generally applied by the IP Office.
The document is divided into two parts; the first part summarises the criteria, while the second part provides a complete explanation of the specific criteria applicable in each case. It has been made available to the public in Georgian and English.Source: www.sakpatenti.gov.ge; euipo.europa.eu Aug 06, 2020 (Newsletter Issue 13/20)
Harmonised Database of Goods and Services Adopted
As of 13 July 2020, the National Intellectual Property Center of Georgia (Sakpatenti) has decided to use the list of terms from the harmonised database of goods and services (HDB) in TMclass.
Georgian speaking users can now search and select almost 60 000 goods and services in their own language for their trademark applications.
Source: www.euipo.europa.eu
Jun 11, 2020 (Newsletter Issue 9/20)Several Practice Papers PublishedThe National Intellectual Property Center of Georgia (Sakpatenti) has published three Practice Papers: Distinctiveness - figurative marks containing descriptive/non-distinctive words, Scope of protection of black and white marks, and Likelihood of confusion (impact of non-distinctive/weak components) relative grounds of refusal.
Sakpatenti is the first non-EU IP office to find common grounds with the criteria listed under the Common Communication on the following three Common Practices:
- Distinctiveness - figurative marks containing descriptive/non-distinctive words (CP3);
- Scope of protection of black and white marks (CP4);
- Likelihood of confusion (impact of non-distinctive/weak components) relative grounds of refusal (CP5).
The practice papers have been made available to the public in Georgian and English. For more information and for access to the papers, please click hereSource: www.euipo.europa.eu Apr 30, 2020 (Newsletter Issue 6/20)Practice Paper on Graphic Representation of Designs PublishedThe National Intellectual Property Center of Georgia (Sakpatenti) has published a practice paper concerning graphic representation of designs.
Sakpatenti is the first non-EU intellectual property office to find common grounds with the criteria listed under the Common Communication on the Common Practice — Graphic Representation of Designs.
The practice paper provides a clear and comprehensive explanation of the principles on which the practice is based, which will be generally applied by Sakpatenti and the IP offices of the European Union Intellectual Property Network (EUIPN).
The publication of the practice paper seeks to increase transparency, legal certainty and predictability for the benefit of users and examiners of IP offices. It also aims to become a reference for all interested parties, covering a majority of cases.
The paper has been made publicly available in Georgian and English. Source: www.euipo.europa.eu Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationGeorgia has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Feb 28, 2019 (Newsletter Issue 3/19)New Participant of Madrid Goods and Services ManagerThe Georgian IP Office (Sakpatenti) and WIPO have been collaborating since the beginning of 2019 and Sakpatenti has become a new participant of the Madrid Goods and Services (MGS) Manager.
Applicants can now use the MGS Manager to translate goods and services lists into Georgian and Georgian trademark holders can simply check the acceptability of terms listed in their application across 35 contracting parties to the Madrid Protocol.
For more information, please check here Nov 30, 2018 (Newsletter Issue 20/18)Madrid E-Filing Available NowThe National Intellectual Property Center of Georgia – Sakpatenti informed that it has joined the WIPO-administered e-filing program, by means of which Georgian users will be able to file their international applications electronically, which will simplify for them the procedure of extension of trademarks to the member states of the “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks”.
Georgia has been a member of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks since 1998.
The e-filing is available via Sakpatenti’s website here Feb 13, 2018 (Newsletter Issue 3/18)Trademark Law AmendedThe Law of Georgia No. 1636 of December 7, 2017, on Amendments to the Law on Trademarks entered into force on December 14, 2017.
This Law introduces amendments to paragraph (i) of Article 4, and paragraphs (i) and (h) of Article 5 of the Law on Trademarks, regarding the clarification of the content of these provisions on the relative and absolute grounds for refusal of registration of trademarks, which consist of or contain flags, emblems, abbreviations, names and official signs of international intergovernmental organizations, of Georgia and other countries, and the names or portraits of a famous person in Georgia.Source: www.wipo.int Feb 25, 2015 (Newsletter Issue 3/15)
New Bank Details of Sakpatenti
Pursuant to amendments to the Budget Code of Georgia, the bank details of the National Intellectual Property Center of Georgia (Sakpatenti) have changed. As of January 1, 2015, please use the following bank details for interactions with the office:
Identification code - 203831363
Beneficiary’s bank - State Treasury;
Beneficiary’s name - Unified Account of Treasury;
Bank code -TRESGE22;
Account number/Treasury code (GEL) -707807132
Please note that all earlier bank accounts of Sakpatenti are invalidate. For additional information, please contact the office under info@sakpatenti.org.ge
Source: www.sakpatenti.org.ge
Feb 18, 2014 (Newsletter Issue 3/14)
E-Filing Possible
USAID’s Economic Prosperity Initiative (EPI) and National Intellectual Property Center (Sakpatenti) presented a new intellectual property rights (IPR) electronic registration system.
The new system represents a Web-based electronic registration and management system for intellectual property objects allowing rightholders and applicants unhindered and cost-effective IPR registration and maintenance.
The state-of-the-art system substitutes current paper-based procedures at Sakpatenti, allowing online registration and processing of intellectual property objects, paperless communication with applicants and patent attorneys. It includes electronic payments, remote/automated publication of registered objects, alerts and filters, and other functions of integrated communication systems. Owing to the new system, intellectual property objects registration procedures will become more efficient, transparent and faster.
Source: www.sakpatenti.org.ge
Sep 03, 2013 (Newsletter Issue 12/13)GIs Published for OppositionGeorgia’s National Intellectual Property Center (Sakpatenti) published a special edition of the Official IP Gazette with a list of 172 agricultural and food products that have a protected geographical indication (GI) status in the European Union (EU) on July 31, 2013.
The special edition follows the April 2012 agreement between Georgia and the EU, within the framework of which more than 3,000 EU’s GIs for agricultural products and foodstuffs received protection in Georgia. The list has since grown and therefore the Gazette includes additional 172 GIs that the EU submitted for protection on the territory of Georgia.
The published GIs can be appealed before Sakpatenti’s Board of Appeals within three months from their publication and can be seen here
Source: www.petosevic.com and www.sakpatenti.org.ge Mar 01, 2011 (Newsletter Issue 4/11)
Translation of Nice Classification (9th)
The Georgian National Intellectual Property Center (SAKPATENTI) has published the official Georgian translation of the Ninth Edition of the International Classification of Goods and Services under the Nice Agreement.
The Georgian translation is available in print at SAKPATENTI and it contains 45 classes and 11,600 names of goods translated into Georgian.
Source: PETOŠEVIĆ, Macedonia
Feb 01, 2011 (Newsletter Issue 2/11)
Address of Trademark Office Changed
The National Intellectual Property Center (Sakpatenti)" changed its address:
Shota Rustaveli Ave. № 30
0108 Tbilisi, Georgia
Hotline telephones are the same:
+ 995 91-71-80
+ 995 91-71-83
Receiving of information is possible under question-answer regime and via e-mail: info@sakpatenti.org.ge
Source: www.sakpatenti.org.ge
Legal basis is the Trademark Act of February 4, 1999, in force since May 24, 1999, Law of Georgia No. 1795-IIS of February 5, 1999, on Trademarks (as amended up to Law No. 387-IV of March 16, 2021and Law No. 4048 of February 24,2024 – effective- 07.03.2024).
Georgia is a member of the Madrid Protocol.
Trademark protection is obtained by registration.
Nice classification, 12th edition
As of March 7, 2024, the amendments to the Trademark Law of Georgia, namely Article 11’, paragraph 5 of the current law, the scope of goods listed in the application/registration will be determined by the literal meaning of the general names of goods, including those used in the International Classifier titles. The protection claimed for a trademark on the general names of goods does not extend to goods not covered by the content of those names.
For applications filed prior to the introduction of the said norm, as well as for trademarks that have already been registered, where the list of goods/services is specified as the title of the corresponding Class of the International Classifier, the owner of the trademark may specify the list of goods and services by March 7, 2029.
Registrable as a trademark are a symbol or combination of symbols that can be a word(s), name(s), letter(s), number(s), sound(s), image, color(s), product shape or packaging.
The following trademark types are registrable: trademarks, service marks and collective marks and certification marks.
The application is filed at the National Intellectual Property Center (Sakpatenti).
Multiple-class applications are possible.
Foreign applicants do not need a local agent, provided that the trademark application is submitted in the Georgian language, but it is recommended to file through a local agent in order to avoid negative consequences. In case a foreign applicant has no permanent residence in Georgia, a representative/ patent attorney should be appointed with indication of the correspondence address in the territory of Georgia.
A non-legalized original power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness, and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration is approx. 12 months.
An accelerated procedure of examination for the trademark application is available for an extra charge and can be requested with the filing of the trademark application or within 3 months from this date. The procedure takes 10 business days then.
Within 1 month of the favorable decision about granting the trademark, it is published in the Official Bulletin. It is registered at the end of the 3 month opposition period if no opposition has been filed or the opposition has been rejected.
National:The opposition period is 3 months from publication date of the decision about granting the trademark.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is USD 90 for one class and USD 50 for each additional class. The fee for substantive examination is USD 120 and for publication it is USD 60. The registration fee is USD 150. In case of accelerated examination the official fees are doubled.
The official fees are published in USD but they are paid in the national currency according to the currency rate (Georgian Lari GEL to USD) determined by the National Bank of Georgia.
In case of electronic filing of applications with “Sakpatenti”, 20% reduction shall apply to the fees, including issuing of a certificate.
Currency Converter (Source for exchange-rates:
currencyapi.com)
Find out how much this is in your own currency and convert!
Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
If you like to purchase all available information for this country, click the order button.
The total price is
49.00 EUR. A PDF-Download will be sent to you electronically.
Jun 03, 2024
Gvaramadze Patent Bureau, Tbilisi, Georgia