A European consumer goods brand enters Georgia's fast-growing retail market. Within months, a local distributor – whose contract has just been terminated – begins selling near-identical goods under a confusingly similar mark. The brand's trademark application in Georgia is still pending. The window to act is narrow, and every week of inaction allows the infringing mark to accumulate use and recognition.
This case study examines how Ferraz & Whitmore managed a cross-border trademark dispute in Georgia for an international client whose IP registration had not yet been finalised. The strategy combined urgent opposition proceedings before the Sakpatenti (Georgian National Intellectual Property Center) with parallel infringement claim preparation under Georgian intellectual property legislation. The matter reached a resolution category of successful withdrawal of the competing mark within approximately nine months of engagement.
The sections below outline the client profile, the legal strategy and its rationale, key milestones, complications encountered, and three transferable lessons for businesses facing comparable cross-border IP matters in Georgia and the wider CIS region.
Client profile and the challenge
The client was a mid-sized European company in the fast-moving consumer goods sector. It had operated in Georgia through a local distributor for several years before deciding to enter the market directly.
Upon terminating the distribution agreement, the client discovered that the former distributor had filed a trademark application in Georgia covering the same goods and a mark nearly identical to the client's own European registration. The filing predated the client's own Georgian trademark application by several weeks.
The client faced a compounding problem. Its brand had acquired genuine recognition among Georgian consumers. Yet without a completed IP registration in Georgia, it could not assert registered trademark rights. It needed to act before the distributor's application proceeded to registration – which, under Georgian intellectual property legislation, could occur within a matter of months from the filing date.
Engaging a lawyer in Georgia with cross-border IP experience was not simply advisable – it was essential. The procedural timelines in Georgian opposition proceedings are strict, and missing a filing window can foreclose rights that are otherwise well-founded. Our team at Ferraz & Whitmore was instructed to build a dual-track strategy: administrative opposition and parallel infringement claim groundwork.
Legal strategy: rationale and structure
Georgian intellectual property legislation provides mechanisms for challenging a trademark application before registration is granted. The first step was filing a formal opposition before Sakpatenti against the distributor's application. The grounds relied on the client's earlier rights in other jurisdictions and evidence of prior use of the mark in Georgia.
The Nice classification (the international system for classifying goods and services in trademark applications) was central to the opposition. The distributor had filed under classes closely matching the client's European registrations. This alignment of Nice classification classes strengthened the likelihood-of-confusion argument considerably.
The second track involved assembling an infringement claim under Georgian civil and commercial legislation. This was prepared in parallel – not filed immediately – but held as a ready instrument. The objective was to signal to the distributor that the administrative route was not the client's only option. This dual-track posture is a deliberate strategic choice. It increases pressure during opposition proceedings and creates an incentive for the opposing party to negotiate.
For the broader regional picture on IP enforcement strategy, our analysis of cross-border trademark enforcement in Russia addresses comparable dynamics in adjacent CIS jurisdictions, including the interaction between administrative and judicial tracks.
The strategy was calibrated to the client's commercial objective: not to litigate indefinitely, but to remove the infringing mark from the register and prevent market confusion before the peak retail season.
Key milestones and complications
The matter proceeded through four identifiable phases over approximately nine months.
Phase one – evidence gathering (weeks one to four). The team compiled evidence of prior use in Georgia: distributor invoices bearing the client's mark, product photographs, marketing materials, and consumer correspondence. This documentation was essential for establishing that the client's mark had acquired distinctiveness in the Georgian market prior to the distributor's filing.
Phase two – opposition filing (weeks five to eight). A formal opposition was filed before Sakpatenti. The filing addressed the likelihood of confusion, the distributor's bad faith (given the contractual relationship), and the client's earlier rights under EU intellectual property legislation. The opposition proceedings triggered a mandatory response period for the distributor.
Phase three – distributor response and negotiation (months three to six). The distributor filed a counter-submission. The counter-submission was largely technical and did not address the bad-faith argument. At this stage, the team introduced the prepared infringement claim as a negotiating signal. Practitioners in Georgia note that once a counterparty understands that a civil infringement claim is imminent – with potential damages and injunctive relief – the calculus for continuing the dispute shifts materially.
A complication arose during this phase. The distributor had registered a domain name and social media handles using the client's mark. These assets were outside the direct scope of the Sakpatenti proceedings. Addressing them required parallel coordination under Georgian commercial legislation and direct correspondence with platform operators. This added approximately six weeks to the overall timeline.
Phase four – withdrawal and resolution (months seven to nine). The distributor withdrew the trademark application. A settlement agreement was reached covering the domain name and social media handles. The client's own trademark application then proceeded to registration without opposition.
For clients with technology-adjacent brand assets in Georgia, the intersection of IP and digital regulation is increasingly relevant. Our team's work in AI and technology law in Georgia reflects this growing overlap between intellectual property protection and digital asset governance.
To discuss how a similar enforcement strategy could apply to your brand's situation in Georgia, contact us at info@ferrazwhitmore.com.
Transferable lessons for cross-border trademark matters
Lesson one: file the trademark application before market entry, not after. The client's vulnerability arose directly from the gap between commercial presence and formal IP registration. Georgian intellectual property legislation, like most national regimes, grants priority based on filing date. A brand that operates in a market without a registered mark – even one with strong prior use elsewhere – faces an elevated risk of opportunistic filings by local parties. The cost of filing a trademark application in Georgia is modest relative to the cost of subsequent opposition proceedings.
Lesson two: prior use evidence is a strategic asset. preserve it systematically. The opposition succeeded in large part because the client could produce contemporaneous evidence of mark use in Georgia: invoices. Product labels. Additionally, consumer communications predating the distributor's filing. Many international businesses do not maintain this documentation in an organised form. In opposition proceedings, evidence of use is not a formality – it is frequently the decisive factor. Businesses entering high-growth markets should treat evidence preservation as an ongoing operational task, not a retrospective exercise.
Lesson three: the dual-track approach – administrative opposition plus infringement claim preparation – changes the negotiating environment. Filing an opposition before Sakpatenti is necessary but not always sufficient. The opposing party may persist through the full administrative process if it perceives no additional risk. Preparing a parallel infringement claim under civil and commercial legislation, and making that preparation visible to the opposing party, reframes the dispute. It converts an administrative procedure into a broader commercial risk for the infringer. This approach requires careful calibration: the infringement claim must be legally sound and genuinely ready to file. An empty threat has the opposite effect.
For comprehensive support on IP registration and enforcement in Georgia, including trademark application strategy and opposition proceedings, see our dedicated page on intellectual property services in Georgia.
To explore how this enforcement approach applies to your specific brand and market situation in Georgia, schedule a consultation 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, opposition proceedings, infringement claims, and cross-border IP enforcement across CIS, European, and Asia-Pacific markets. As a law firm in Georgia and across the CIS region, we combine Portuguese civil law expertise with English common law tradition to deliver practical, results-oriented counsel. Our attorneys have advised on IP registration and dispute matters before administrative bodies including Sakpatenti and equivalent authorities in neighbouring jurisdictions. We work with international entrepreneurs, institutional investors, and in-house legal teams who require coordinated IP strategies across multiple legal systems. To discuss your trademark or IP enforcement matter in Georgia, 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.