International Trademark Registration — the Madrid System and Georgia
International trademark registration under the Madrid system works for Georgia in both directions: a Georgian applicant may, through a single international application, seek protection in dozens of states, while foreign marks extend to Georgia on the basis of international registration. The Georgian legal foundation of this mechanism lies in Articles 39, 41, 42 and 44 of the Law on Trademarks: Article 39 — the outbound route; Article 41 — the inbound route and the shortened examination; Article 42 — publication and challenge; and Article 44 — the filing of a national application on the basis of a cancelled international registration.
The Outbound Route — Article 39
Under Article 39, the law applies to trademarks whose protection is claimed under the Madrid Protocol, unless the Protocol or the relevant chapter of the law provides otherwise. An application for international registration must, in accordance with the procedure established by the Protocol, be filed with Sakpatenti — the international application thus begins on a national footing: it is prepared on the basis of a national application or registration, and Sakpatenti transmits it to the International Bureau of the World Intellectual Property Organization.
One important technical requirement is also set here: the application must be accompanied by a translation of the list of goods, grouped according to the international classification, into English. A list drafted in Georgian must therefore be prepared in English for the international application — a detail that frequently causes delays and must be attended to from the outset.
The Inbound Route and Shortened Examination — Article 41
Where protection in Georgia is claimed on the basis of an international registration under the Madrid Protocol, only a substantive examination is carried out for such an international trademark, and the conformity of the list of goods with the requirements established by the law is verified. No formal examination is conducted — the formal side of the international application is the responsibility of the International Bureau. By the same article, with respect to international marks the term "protection" is used instead of "registration" in the relevant chapters of the law — a terminological precision that matters for reading the documents correctly.
Publication and Challenge — Article 42
The data of an international trademark registration are published in the journal of the International Bureau of the World Intellectual Property Organization — the source of worldwide public awareness. And where a positive decision is issued on granting protection in Georgia for an international mark, the date and number of the international registration are additionally published in the bulletin within one month of the decision. The challenge period is counted precisely from the day of publication of that date and number in the bulletin — the clock of challenge under the Georgian rules therefore starts with publication in the national bulletin, not in the international journal.
The National Application After Cancellation — Article 44
One of the risks of the Madrid system is the full cancellation of the international registration at its base — for example, through the lapse of the basic national application or registration. Article 44 offers protection against this risk: on the basis of a cancelled international registration, together with the national application, the applicant must submit a document certified by the International Bureau of the World Intellectual Property Organization confirming that the international registration extended to Georgia before cancellation.
The procedure here is significantly shortened: if, by the day the national application is filed with Sakpatenti, a decision to grant protection has already been adopted, no substantive examination is conducted; and if protection had been granted in Georgia by the day of cancellation, Sakpatenti conducts only a formal-requirements examination and registers the mark directly in the register with publication in the bulletin. Transformation is thus a genuinely working instrument for continuing protection in Georgian law.
Frequently Asked Questions
Below we answer the questions most frequently raised about international registration.
Where does an international application begin for a Georgian applicant?
At Sakpatenti — the application must, under the procedure established by the Protocol, be filed with Sakpatenti and be accompanied by an English translation of the goods list.
How does a foreign international mark operate in Georgia?
For an international mark extended to Georgia, only a substantive examination is carried out; on a positive decision the mark acquires "protection" in Georgia, and its date and number are published in the bulletin.
What happens when the international registration is cancelled?
A national application may be filed, accompanied by the Bureau's certified document confirming that the registration extended to Georgia before cancellation; where protection had already been granted, only a formal examination follows and the mark is registered directly in the register.
Where are international registration data published?
In the journal of the International Bureau of the World Intellectual Property Organization; after a positive decision on protection in Georgia, the registration date and number are also published in the national bulletin, within one month.
How We Help on Legal.ge
International registration requires planning: the basic national application or registration, the English translation of the goods list, the list of member states to be designated, and the challenge deadlines — each step is reflected in the result. The specialists at Legal.ge will help you plan the Madrid route and carry out the procedures provided by Articles 39, 41, 42 and 44 of the law. Contact us through the Legal.ge form.