Trademark Registration Cancellation — Two Routes, Two Effects
To strike someone else's registration — or to save your own — the Law on Trademarks provides two distinct instruments: administrative cancellation (Article 27), the court's declaration of nullity (Article 28), and the sharply different effects of these two routes (Article 29). This page explains when each route may be chosen, who may demand nullity, and what happens to transactions already concluded.
Administrative Cancellation — Article 27
Under Article 27, Sakpatenti cancels the registration of a trademark in three cases: at the owner's request — and where a licence contract is registered for the mark, cancellation is admissible only if the owner produces evidence that, before requesting cancellation, he notified the licensee of such intention; where the owner, a natural person, has died leaving no heir, or a legal person has been liquidated with no successor; and in the case defined by the law where a mark registered under the accelerated procedure proves to conflict with an application holding an earlier priority.
The court, under the same article, cancels the registration at a third party's request in three further cases: where the mark has not actually been used continuously for 5 years for the goods for which it is registered in Georgia — and if use began or resumed after that period expired but before the cancellation demand, cancellation is inadmissible; where the mark has become a generic term for the goods for which it is registered; and where the use of the mark by the owner or with his consent creates a false impression in the consumer as to the kind, properties, quality, value or geographical origin of the goods. The non-use ground does not operate where non-use is caused by circumstances arising independently of the owner's will — for example, import restrictions or other government requirements. Where the ground affects only part of the goods list, cancellation likewise covers only that part, and every change is entered in the register and published in the bulletin.
Court Nullity — Article 28
Article 28 gives the full catalogue: the court declares the registration invalid at a third party's request if it was made in violation of the law's requirements or in bad faith; if the mark owner's representative or agent registered the mark in his own name in a Paris Convention member state without consent; if the mark contains a firm name in which rights arose before the application, creating confusion; if the registration or use infringes a third party's copyright arising before the priority date; if it is identical or confusingly similar to a universally known mark; and if it unfairly takes advantage of an earlier mark with a reputation — even across different goods lists.
Who may sue is itself prescribed by the law: any person may complain of a violation of the law's absolute requirements and of one defined relative ground; the remaining relative grounds and the earlier-rights category belong only to the holder of the earlier right. In the representative-registration case the claimant may, instead of nullity, demand transfer of the mark to himself. Barriers of consent also exist: where the earlier right holder gave written consent to the registration before the claim, nullity is no longer possible; and a ground that could have been raised within the first claim does not grant a second chance. There is a time limit too: nullity on the basis of an earlier mark can no longer be demanded if the claimant did not apply to court within 5 years of learning of the disputed mark's use — bad-faith registration excepted. And where the earlier mark's registration is more than 5 years old, the claimant must himself prove the genuine use of his own mark over the last 5 years, failing which the proceedings are discontinued.
The Effects — Article 29
The two routes produce two different effects: the rights under a registration cancelled under Article 27 are deemed terminated from the day the cancellation entry is made in the register, unless another date is indicated in the decision; whereas the rights under a registration declared invalid under Article 28 are deemed terminated from the day those rights arose — nullity thus operates retroactively. At the same time, the nullity decision has no retroactive effect on court decisions on infringement of the mark's rights that entered into force before the nullity decision entered into force, nor on transactions concluded and performed before its entry into force — protecting good-faith participants.
Frequently Asked Questions
Below we answer the questions most frequently raised about cancellation of registration.
Can an unused mark be cancelled?
Yes — in court, at a third party's request, where the mark has not actually been used continuously for 5 years for the registered goods; starting or resuming use after the period limits cancellation.
Who may demand nullity?
Any person for violations of the law's absolute requirements; only the earlier right holder for the relative grounds and the earlier-rights category.
What is the difference between cancellation and nullity?
In the effect: on cancellation the rights end from the day of the register entry; on nullity — from the day of their origin, retroactively; transactions and decisions in force remain protected.
Is there a deadline for nullity?
Yes — on the basis of an earlier mark the claimant has 5 years from learning of the disputed mark's use, bad-faith registration excepted.
How We Help on Legal.ge
The outcome of cancellation or nullity depends on the claimant's file: evidence of use, the chronology of earlier rights, and the precise selection of grounds. The specialists at Legal.ge will assess your case under Articles 27, 28 and 29 of the law, prepare the claim or the defence to it, and help you build the evidence correctly. Contact us through the Legal.ge form.