Trademark Infringement Litigation
Litigation over the infringement of trademark rights is read through three norms: what counts as infringement (Article 6), what the claimant and the court may demand (Article 45), and where the statutory ceiling on enforcement lies when the conflict is between two registrations (Article 45-1). This page explains the dispute from test to remedy — from identity and similarity to compensation.
What Infringement Is — Article 6
The exclusive right arises from the date of registration, and the holder may prohibit a third party from using, without consent and in circulation, a sign that stands to the protected mark as follows: identical with identical goods; identical with goods so similar that confusion — including through association — arises; similar with identical or confusingly similar goods; or identical or similar to a mark with reputation — regardless of goods — where the use creates unfair advantage or harms the reputation.
The objects of infringement are likewise enumerated: affixing the mark on goods or packaging; offering, circulating, storing, importing and exporting marked goods; offering services under the mark; use in advertising and business papers; and use as a firm name. In addition, without the owner's consent it is prohibited to affix an identical or similar sign on packaging materials and to circulate such means — the market in counterfeit packaging is separately prohibited. In litigation the claimant's first task is precisely to prove this test and this enumeration.
What the Claimant May Demand — Article 45
Article 45 gives a full catalogue of remedies. On infringement the holder may demand: cessation of these acts; removal of marked goods from circulation, including goods imported into or stored in Georgia; destruction of marked goods where separation of the mark is impossible; destruction of images, labels, prints, packaging, advertising materials and signboards containing the mark — including materials placed on the internet; and destruction of cliches, matrices and equipment intended for producing the mark. Several of these measures may be demanded simultaneously.
The catalogue is completed by monetary measures: besides the remedies, the holder may demand compensation of damage including foregone income — where the infringer knew or should have known; seizure of the income received from the infringement in his favour; or a one-time monetary compensation, set at not less than the amount the infringer would have paid for a licence. In assessing damage, account is taken of the essence of the infringement, the income derived from it, pecuniary and non-pecuniary harm, and the income the holder would have earned under lawful use. In exceptional cases the court may, instead of destruction, impose monetary compensation where the infringer acted negligently or the measure would cause disproportionate harm. Enforcement is possible also against a person who knew or should have known that his service was used for commercial-scale infringement — the market infrastructure thus falls within the circle of liability.
Conflict of Two Registrations — Article 45-1
A separate rule governs disputes between two registered marks. Under Article 45-1, where the holder of the earlier mark can no longer demand invalidation of the later registration — for instance, because of expiry of the time limit or a written consent — he may likewise no longer demand prohibition of the later mark's use. And conversely: in that case the holder of the later mark may not prohibit the earlier holder's use either. The loss of the nullity option thus matures into a regime of coexistence for both parties — and the strategy of the dispute must be planned through exactly this gate.
Frequently Asked Questions
Below we answer the questions most frequently raised about trademark infringement disputes.
What am I owed — money or destruction?
It is the claimant's choice: cessation, removal and destruction of goods and materials — or compensation of damage, seizure of income, one-time compensation; several measures may be demanded simultaneously.
How is the one-time compensation floor set?
At not less than the amount the infringer would have paid for a licence; the assessment considers the quantity of goods, the degree of similarity, the mark's reputation and the infringer's intent.
Can deletion of internet materials be demanded?
Yes — the destruction of images containing the mark covers materials placed on the internet as well.
What happens when the dispute is between two registrations?
Article 45-1 sets the rule: where nullity can no longer be demanded, the earlier holder may not prohibit the later mark, and vice versa — the two marks coexist.
What is the effect of invalidation?
A registration declared invalid is void from the outset — enforcement, licensing and renewed registration on that basis are no longer possible.
How We Help on Legal.ge
In a trademark dispute the preparation decides everything: the analysis of identity and similarity, the trail of circulation, the gathering of evidence and the right combination of remedies. The specialists at Legal.ge will assess your situation under Articles 6, 45 and 45-1 of the law, prepare the demand or the statement of claim, and help you enforce the result. Contact us through the Legal.ge form.