The Domain Name and the Trademark's Exclusive Right
Using a domain name that matches or resembles another person's registered trademark is one of the forms of using the mark in civil circulation. Georgian legislation does not provide, in these norms, a separate arbitral or administrative procedure for domain disputes — international mechanisms linked to registrars of other countries are not contemplated by Georgian law. The dispute is resolved within the general framework of the Georgian Law on Trademarks: 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 use the given designation on the internet.
Below we explain when the use of a domain counts as an infringement of the right in the mark, which acts are prohibited, and what remedies the right holder has.
When Domain Use Is 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 trademark: the sign is identical and the goods are identical; the sign is identical and the goods are so similar that a likelihood of confusion, including confusion through association, arises; the sign is similar and the goods are identical or so similar that a likelihood of confusion again arises; or the sign is identical or similar and has a reputation in Georgia, where its use unjustifiably gives the third person advantageous conditions or damages the mark's reputation or distinctiveness. A domain name that reproduces the protected mark or creates a likelihood of confusion is assessed within exactly this framework.
Prohibited Acts
The same article establishes that, in addition to other possible prohibitions, it is forbidden to affix the trademark on goods or their packaging; to offer, put into circulation, store for that purpose, import or export goods bearing the mark; to offer or provide services using the mark; to use the mark in advertising or on business documents; and to use the trademark as a firm name or part of one. 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, store, import or export packaging, labels or tags bearing such a sign. A website and its address containing the mark count as advertising or business use — which is why using a mark in a domain name falls within the scope of these prohibitions.
Remedies
Article 45 defines the claims the right holder may raise on infringement:
- cessation of the acts provided for by the Law;
- 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 images, labels, prints, packaging or advertising materials containing the mark, including the deletion of material placed on the internet that contains the trademark;
- destruction of the cliches, matrices, devices, technical equipment and tools intended for preparing the mark.
The holder may demand several of these acts simultaneously, at its own 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. In a special case the court may, instead of destruction, impose the payment of monetary compensation. In addition to these acts the holder may claim compensation for the damage caused, including forgone income, disgorgement of the income received through the infringement, or a one-time monetary compensation fixed at not less than the amount the infringer would have paid for a licence to use the mark. In determining the damage, account is taken of the essence of the infringement, the income received, the pecuniary and non-pecuniary damage caused to the holder, and the income the holder would have received through lawful use of the mark.
Frequently Asked Questions
Below we answer the questions most frequently asked on this topic.
Is there a separate procedure for domain disputes in Georgia?
Not in these norms. The dispute is resolved under the general framework of the Law on Trademarks: using a mark in a domain name is assessed as use of the mark in civil circulation, and protection is effected through a court action.
When does a domain holder infringe the right in a mark?
When the domain designation is identical or similar to the protected mark and a likelihood of confusion arises, or — for a mark with a reputation — when the use creates an unjustified advantage.
May the deletion of material placed on the internet be demanded?
Yes. The Law directly contemplates the deletion of material or images placed on the internet that contain the trademark.
How is the one-time compensation fixed?
At not less than the amount the infringer would have paid had a licence to use the mark been obtained; the essence and scale of the infringement and other circumstances are taken into account.
How We Help on Legal.ge
A domain-name dispute requires assessing the validity of the trademark registration, analysing the likelihood of confusion and deliberately selecting remedies. On Legal.ge you can consult an advocate experienced in intellectual property who will assess your situation, prepare a demand to cease the infringement or a deletion request, and represent your interests in court. Submit a request on the site and get qualified assistance.