Customs and Intellectual Property — the Foundations
The state border is the most sensitive point for counterfeit goods and goods created in breach of a right in a mark: import, export and warehousing are precisely the acts prohibited by the Georgian Law on Trademarks. These norms do not provide a separate institute of "customs-record filing" or an application for customs surveillance — protection at the border operates through the general regime of the exclusive right in the mark and claims directed to court. The holder's exclusive right to a trademark protected by registration arises from the day the mark is registered, and it is this right that determines who may lawfully dispose of marked goods crossing the border.
When Border Crossing Becomes an Infringement
Under Article 6 of the Law, the holder of the exclusive right may prohibit a third person from using, without consent, in civil circulation a sign that stands in the following relation to the protected mark: an identical sign with identical goods; an identical sign with goods so similar that a likelihood of confusion, including through association, arises; a similar sign with identical or similar goods such that confusion again arises; or an identical or similar sign with a reputation in Georgia, where its use unjustifiably gives the third person advantageous conditions or damages the reputation or distinctiveness of the mark. A consignment crossing the border bearing such a sign is assessed within exactly this framework as prohibited use. Notably, the likelihood of confusion does not require conscious deception — the assessment is objective, of whether in ordinary conditions of perception a consumer may confuse the signs; and reputational protection extends to different goods as well, where advantageous conditions are created unjustifiably.
Import, Export and Warehousing — the Prohibited Acts
The Law names directly the acts connected with customs control: it is forbidden to offer, put into circulation or store for that purpose in a warehouse, import or export goods bearing the mark. Without the holder's consent a third person may not affix an identical or similar sign on a label, tag or any other medium, nor offer for sale, put into circulation, sell, prepare for sale, store, import or export packaging, labels and tags bearing such a sign. The prohibition does not extend to acts carried out with goods marked by the right holder itself. Also prohibited are the offering or rendering of services using the mark, the use of the mark in advertising or on business papers, and its use as a firm name or part of one. This means that not only the importer of counterfeit goods but also its packer and warehouse operator fall under the prohibition.
Remedies at the Border
Article 45 of the Law gives the right holder a full arsenal of stopping and clearing: the holder may demand cessation of the prohibited acts; removal from civil circulation of goods marked by infringement, or removal of goods imported into or stored on the territory of Georgia; destruction of the goods where separation from the mark is impossible; destruction of labels, packaging and advertising materials containing the mark; and destruction of the cliches, matrices and technical equipment intended for preparing the mark. Several of these acts may be demanded simultaneously, at the holder’s discretion. By a court decision, the demand for cessation may extend to a person who knew or should have known that their service was used for a commercial-scale infringement of the right in the mark — which also covers logistics and storage services. In addition to these acts, compensation for damage, disgorgement of the income received through the infringement, or a one-time monetary compensation may be claimed — fixed at not less than the amount the infringer would have paid for a licence. In exceptional cases the court may, instead of these acts, impose on the infringer the payment of monetary compensation where it acted negligently or where the enforcement measures would cause it disproportionate harm and the amount set by the court is acceptable to the holder. In assessing damage, the nature of the infringement, the income received through it, the property and non-property damage caused to the holder and the hypothetical income the holder would have received through lawful use of the mark are taken into account; the one-time compensation is measured by the quantity of the marked goods, the identity or degree of similarity of the sign, the mark’s reputation in Georgia and the infringer’s intent.
Frequently Asked Questions
Below we answer the questions most frequently asked on this topic.
Is there a special customs-record application?
Not in these norms. Protection operates under the general regime of the trademark right: cessation of prohibited acts and removal of goods are demanded through the court.
Which customs acts are prohibited?
The import, export, putting into circulation and storage of marked goods, as well as the warehousing and sale of packaging and labels.
Can a storage service be targeted?
Yes — where it knew or should have known that its service was used for a commercial-scale infringement, the cessation demand extends to it as well.
What is the floor for the one-time compensation?
Not less than the amount the infringer would have paid had a licence to use the mark been obtained.
How We Help on Legal.ge
Stopping counterfeit goods at the border demands a fast and precise response. On Legal.ge you can consult an advocate experienced in intellectual property who will assess the grounds of the right in the mark, prepare the demand for removal of the goods and represent your interests in court. Submit a request on the site and get qualified assistance.