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Trademark Cancellation

Can I cancel a trademark registered in bad faith?

Yes, if you can prove the registrant knew about your brand and registered it solely to block you or sell it back (trademark squatting), you can file for invalidation based on bad faith regardless of the 5-year rule.

Does non-use cancellation apply to defensive marks?

Yes, Georgian law does not recognize separate "defensive marks." If a registered mark is not used for 5 continuous years, it becomes vulnerable to cancellation upon request by an interested party.

How long does the cancellation process take?

Administrative proceedings at Sakpatenti usually take 6-12 months. If the case goes to court, it can take 1-2 years depending on the complexity and appeals.

Can I settle with the trademark owner?

Yes, often filing a cancellation action prompts the owner to negotiate. You can settle by buying the mark or agreeing to a co-existence agreement, avoiding prolonged litigation.

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Trademark Cancellation (or invalidation) is a procedure used to declare an already registered mark invalid or revoked. Unlike opposition, which occurs during the registration process, cancellation targets marks that already enjoy protection. This is a powerful tool for businesses to clear "dead" brands from the market or invalidate rights registered in bad faith by competitors. In Georgia, the most common ground for cancellation is non-use of the mark for 5 years, though other grounds exist, such as registration in bad faith or the mark becoming a generic term.

What Trademark Cancellation Services Cover

Lawyers on Legal.ge offer full legal support in the cancellation process:

  • Cancellation for Non-Use: If a competitor owns a mark but hasn't used it commercially for the last 5 years, we will prepare a claim to cancel it so you can use the name.
  • Invalidation: Filing a claim on the grounds that the mark was registered in violation of the law (e.g., in bad faith, or it was descriptive).
  • Evidence Collection: Conducting a "Non-use investigation" to confirm the mark is not present in the market.
  • Defense Against Cancellation: If someone seeks to cancel your mark, we help you retain rights by properly presenting evidence of use.
  • Representation: Protecting interests in court or the Chamber of Appeals of Sakpatenti.

Practical Examples and Scenarios

The cancellation procedure is relevant in the following cases:

  • Blocking Mark: You want to launch a product named "Apex," but find it was registered in 2015 by a company that closed in 2018. By requesting cancellation, you free up the name for your use.
  • Genericization: A brand becomes a common name (like "Xerox" or "Jeep"). Competitors can request cancellation because the mark has lost its distinctiveness.
  • Bad Faith Distributor: Your former distributor registered your brand in Georgia without your knowledge. You can request invalidation based on bad faith.

Georgian Legal Framework

The issue is regulated by the Law of Georgia on Trademarks. The law distinguishes between invalidation (when the mark should not have been registered initially) and revocation/cancellation (when the mark loses validity due to subsequent circumstances, e.g., non-use). The non-use period is defined as continuous 5 years. The burden of proof in non-use disputes is reversed—the trademark owner must prove they used the mark, not the plaintiff proving they didn't.

The Process: How Litigation Works

The process depends on the grounds for the claim:

  1. Investigation: Establishing whether the mark is actually used in the market.
  2. Lawsuit: Filed in court (for revocation) or the Chamber of Appeals (for invalidation).
  3. Proof: The defendant submits invoices, advertising, and labels to prove use.
  4. Decision: The mark is cancelled from the registry or remains valid.

Why Legal.ge?

Trademark cancellation is a complex legal process requiring solid evidence and strategy. Legal.ge allows you to hire experienced IP lawyers who will help "clean" the market and free up the names necessary for your business. Find your lawyer on Legal.ge.

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