Trademark Search and Clearance Before Filing
A pre-filing trademark search and clearance is necessary because the rules of refusal and nullity are written precisely in the law: Article 5 of the Law on Trademarks enumerates the relative grounds on which a mark will not be registered; Article 11 determines who is "earlier" and how priority is counted; and Article 28 establishes the nullity rules — that is, what a mistake after registration costs the applicant. A properly planned clearance is drafted from the text of exactly these three articles: the search brief is written by the law, not by intuition.
What the Mark Must Clear — Relative Grounds, Article 5
Under Article 5, a trademark will not be registered if it is: identical to a registered mark with an earlier priority for the same goods; identical to a mark registered in the name of a third party with an earlier priority, where the goods are so similar that a likelihood of confusion — including confusion through association — arises; subject to the same confusion test where the mark itself is similar; or identical or so similar to a mark universally known in Georgia before the filing that confusion arises — a rule that applies even where the lists of goods differ.
The enumeration does not end there: a mark will not be registered if it is identical or similar to a protected geographical indication or appellation of origin in Georgia, contains it or creates confusion with it — where registration is sought for identical or similar goods or its use would exploit the reputation of the indication; if it repeats a protected industrial design with an earlier priority; if it creates confusion with, or unfairly takes advantage of, an earlier mark with a good reputation even across different goods lists; if it contains the name, pseudonym, facsimile or portrait of a famous person without agreement with that person or the heirs; and if it contains the name or image of a historical monument of Georgia without the consent of the ministry of culture. The search must therefore cover not only the register of marks but also well-known marks, geographical indications, industrial designs, firm names and personality rights.
Who Is Earlier — Priority, Article 11
The relative grounds operate through priority. A mark's priority is established by the filing date of the application at Sakpatenti, provided the formal-examination fee is paid within no later than 15 calendar days of filing. Priority may also be established by the date of the first filing in a Paris Convention member state — convention priority — if no more than 6 months have passed from that date to filing in Georgia; likewise exhibition priority, from the first day of display of the exhibit at an official or officially recognized international exhibition, with the same 6-month window. Convention and exhibition priority do not extend each other's terms, and Sakpatenti must be notified within one month of filing, with confirming documents submitted within 3 months. Where several marks have the same priority, preference is given to the mark whose actual use in Georgia began earlier.