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.

The Price of a Mistake — Nullity, Article 28

If a conflicting mark is nevertheless registered, Article 28 sets the price of the mistake: the court declares the registration invalid at a third party's request if the registration was made in violation of the law's requirements, was made in bad faith, or was made by the mark owner's representative or agent in a Paris Convention member state in his own name without the owner's consent. The grounds further include: the existence of rights in a firm name created before the application, with confusion; infringement of a third party's copyright arising before the priority date; identity or similarity with a universally known mark; unfair advantage taken of an earlier mark with a reputation; and the use of a distinctive symbol in which earlier rights arose.

The mechanism of deadlines belongs here too: the owner of an earlier mark may not seek invalidation for the goods for which the disputed mark is used if he has not applied to court within 5 years of learning of the mark's use in Georgia — bad-faith registration excepted. And where more than 5 years have passed since the registration of the earlier mark, the claimant must prove the genuine use of his own mark in the last 5 years before the disputed application. The quality of the search file thus decides both sides' positions: whoever gathers the better file shelters from the risk.

Frequently Asked Questions

Below we answer the questions most frequently raised about trademark clearance.

What must the clearance cover beyond the register?

Universally known marks, geographical indications and appellations of origin, protected industrial designs, the names and portraits of famous persons, and historical monuments — every relative ground of Article 5.

How do I know who is earlier?

By the priority date: the day of filing in Georgia (subject to payment of the fee within 15 calendar days), or convention or exhibition priority within 6 months; with identical priority, the time use began decides.

What if a conflicting mark is registered anyway?

A nullity claim may be brought in court; the earlier right holder generally has 5 years from learning of the use, and his own genuine use may also need to be proven.

Why is a search for identical marks not enough?

Because the law extends the prohibition to similar marks — including confusion through association — and, for marks with a reputation, even to different goods; the names of famous persons and monuments create separate barriers.

How We Help on Legal.ge

The specialists at Legal.ge build the clearance precisely on Articles 5, 11 and 28 of the law: we analyse the risks of identity and similarity against the goods lists, assess priority and notoriety arguments, and where a conflict is identified, chart the safe route — changing the list, negotiating, or preparing a nullity claim. Contact us through the Legal.ge form.

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Trademark Search

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