A European consumer goods company entered the Georgian market after years of steady regional growth. On attempting its first local trademark application, it discovered that a third party had already registered its core brand name. The registration covered identical product categories under the relevant Nice classification (the international system for categorising goods and services in trademark applications). The registrant had no evident commercial presence and had filed shortly before the client's planned market entry. Every month of delay meant lost distribution agreements and mounting infringement risk.
IP portfolio recovery in Georgia involves challenging an existing bad-faith trademark registration through opposition proceedings or a cancellation action before the Sakpatenti (National Intellectual Property Center of Georgia). A successful challenge requires documented evidence of prior use, bad faith on the registrant's part, and a correctly structured IP registration filing in the client's name. The process typically spans six to fourteen months from initial filing to a final administrative decision.
This case study outlines how the matter was handled, the complications that arose, and the lessons transferable to similar cross-border IP disputes in Georgia and comparable CIS markets.
Client profile and the challenge at hand
The client was a mid-sized European brand operating in personal care goods. It had built consistent market recognition across multiple EU jurisdictions over more than a decade. Georgia was identified as a strategic entry point into the South Caucasus region.
The obstacle was immediate. A local entity – with no traceable product line in the relevant category – held a registered trademark that was phonetically and visually near-identical to the client's mark. The registration predated the client's Georgian filing by less than four months. That narrow gap was telling. It strongly suggested the registrant had monitored the client's regional expansion plans, possibly through public press coverage or distributor-level contacts.
Under Georgian intellectual property legislation, a trademark registration confers exclusive rights within the registered territory. Without challenging the existing registration, the client faced a direct infringement claim risk if it proceeded with its own launch. It could not simply file a new trademark application and proceed – the prior registration would block it at the examination stage.
For detailed background on IP registration procedures in this jurisdiction, see our overview of intellectual property services in Georgia.
Legal strategy: opposition proceedings and parallel filing
The strategy rested on two parallel tracks. The first was a cancellation action targeting the existing registration on bad-faith grounds. The second was a protective trademark application filed in the client's name simultaneously, covering all relevant product categories under the applicable Nice classification entries.
Georgian IP legislation provides a mechanism to invalidate a trademark where the registrant acted in bad faith at the time of filing. Bad faith is not presumed – it must be demonstrated. The evidentiary threshold is demanding. The client needed to show that the registrant knew of the client's mark before filing. Additionally. That the registration was made with the intent to block, extract a commercial benefit. Alternatively, disrupt the client's market entry.
The evidence assembled included: an archive of the client's EU trademark registrations predating the Georgian filing by several years. documented trade press coverage in regional media accessible from Georgia. distributor correspondence showing awareness of the client's imminent entry. and a market analysis confirming the registrant had no active commercial use of the mark.
Non-use was a secondary but useful argument. Georgian IP rules permit cancellation on non-use grounds after a defined period of inactivity. However, relying solely on non-use would have extended the timeline significantly. Bad faith was the stronger, faster route.
To explore how technology-related IP assets are protected under Georgian law, our analysis of AI and technology law in Georgia sets out the current regulatory conditions for digital and software-linked marks.
Key milestones and complications encountered
The matter passed through four distinct phases over approximately eleven months.
In the first phase, the team filed the cancellation action with Sakpatenti and simultaneously lodged the protective trademark application. The simultaneous filing was deliberate. It preserved the client's priority date from that point forward, regardless of the cancellation outcome.
The second phase involved the registrant's response. The opposing party filed a counter-submission asserting commercial use of the mark. It produced invoices that, on closer examination, showed dates inconsistent with the registration timeline and goods categories that did not match the registered Nice classification entries. Challenging the authenticity and relevance of those documents required a detailed comparative submission.
The third phase was the administrative hearing before Sakpatenti. The panel examined the prior-use evidence, the registrant's counter-documents, and both parties' written arguments. The hearing itself was relatively brief, but the written phase preceding it required careful coordination between the international team and local Georgian counsel.
A significant complication arose midway through: the registrant approached the client's local distributor directly, proposing a commercial licence for the mark. This was a transparent attempt to convert the bad-faith registration into a revenue stream. The approach was documented and added to the evidence of opportunistic intent – strengthening rather than weakening the cancellation case.
The fourth phase was the decision and post-decision filing. Sakpatenti issued a decision in favour of cancellation. The client's protective application then advanced through examination without the prior registration as an obstacle. The final IP registration was completed within six weeks of the cancellation decision.
Comparable dynamics in adjacent CIS markets are examined in our IP portfolio recovery case study for Russia, which covers parallel opposition and cancellation mechanisms under a different but structurally similar legislative regime.
Transferable lessons for cross-border IP matters
Three principles from this matter apply directly to any international business pursuing IP protection in Georgia or similar markets.
File early and file broadly. The client's vulnerability arose because it delayed its Georgian trademark application while finalising distribution arrangements. A defensive filing – even before market entry – costs a fraction of the time and resources required for a cancellation action. Covering all relevant Nice classification categories from the outset prevents third parties from exploiting gaps in the registration.
Preserve evidence of prior use across jurisdictions from day one. The cancellation case succeeded largely because the client had a well-documented EU trademark history and accessible trade press coverage. Businesses that cannot demonstrate prior use – through registered marks, marketing materials, or published references – face a materially harder path in bad-faith proceedings. An infringement claim against a bad-faith registrant is far easier to sustain when the evidentiary record is deep and contemporaneous.
Treat unsolicited licence approaches as evidence, not negotiation. When a bad-faith registrant pivots to licensing discussions, the instinct is often to engage commercially and resolve the matter quickly. That instinct is understandable but carries risk. Early engagement can be construed as implicit recognition of the registrant's rights. Documenting the approach and treating it as further evidence of opportunistic intent – as was done here – materially strengthens the cancellation record.
To receive a tailored assessment of your IP portfolio exposure in Georgia or a connected CIS jurisdiction, contact us at info@ferrazwhitmore.com.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our intellectual property practice covers trademark application strategy, opposition proceedings, bad-faith cancellation actions, and cross-border IP portfolio management across CIS, European, and Asia-Pacific markets. As a law firm in Georgia and connected high-growth markets, we work with international entrepreneurs, brand owners, and institutional investors who require results-oriented counsel across multiple legal systems. Our attorneys have advised on IP registration and infringement claim matters spanning both civil law and common law systems, and the firm participates in cross-border practice groups focused on intellectual property and technology regulation. Engaging a lawyer in Georgia with cross-border IP experience is essential when bad-faith registrations intersect with multi-jurisdictional brand strategies. To discuss your IP situation in Georgia or any connected market, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.