On Border Measures Related to Intellectual Property

LAW OF GEORGIA

ON BORDER MEASURES RELATED TO INTELLECTUAL PROPERTY

Chapter I - General Provisions

Article 1 - Purpose of the Law

This Law establishes the rules for the application of special border measures with respect to goods produced in a way that creates an infringement of copyrights and neighbouring rights, infringement of the rights of database makers, infringement of the exclusive design rights, infringement of the rights on the appellations of origin and geographical indications of goods and/or counterfeit goods at the time of their importation into the customs territory of Georgia, their placement for storage at a customs warehouse/terminal/other places of storage, or their export from Georgia. This rule is based on the provisions relating to the special border measures of the World Trade Organization (WTO) - Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs).

Law of Georgia No 2558 of 28 December 2005 - LHG I, No 5, 20.1.2006, Art.41

Law of Georgia No 3806 of 12 November 2010 - LHG I, No 66, 3.12.2010, Art.414

Law of Georgia No 5954 of 27 March 2012 – website, 12.4.2012

Law of Georgia No 1682 of 29 November 2013 - website, 17.12.2013

Article 2 - Definition of terms

The terms used in this Law have following meanings:

a) a right holder – any natural or legal person, who according to the legislation of Georgia has a copyright or a neighbouring right, the right of a database maker, an exclusive design right, an exclusive trademark right, and/or the right to use a registered appellation of origin and geographical indication;

b) goods produced through infringement of copyright and neighbouring rights – all goods that are produced without the permission of the rights holder or of his/her agent in the country of origin of the goods and which, in the case of their origination in Georgia, are produced through infringement of the legislation of Georgia on copyright and neighbouring rights;

b₁) goods produced through infringement of the exclusive design rights – a product produced without the permission of the holder of a design registered in Georgia as prescribed by law, which involves the design or for which the design is used and which infringes the design holder's rights established by the legislation of Georgia;

c) goods produced through infringement of the rights of the appellations of origin and geographical indications – any goods on which the appellations of origin and geographical indications are used illegally;

d) counterfeit goods – any goods, including packaged goods bearing an unauthorised trademark identical to the trademark that is legally registered in relation to these goods or does not differ substantially from the mentioned trademark and therefore, infringes the trademark holder's rights established by the legislation of Georgia;

e) de minimis import – small quantities of goods of non-commercial designation, which are placed in a traveller's luggage or sent in small containers.

Law of Georgia No 2558 of 28 December 2005 - LHG I, No 5, 20.1.2006, Art.41

Law of Georgia No 1682 of 29 November 2013 - website, 17.12.2013

Chapter II - Protection of the Intellectual Property Rights by a Legal Entity under Public Law – the Revenue Service under the Ministry of Finance of Georgia

Law of Georgia No 2558 of 28 December 2005 - LHG I, No 5, 20.1.2006, Art.41

Law of Georgia No 3806 of 12 November 2010 - LHG I, No 66, 3.12.2010, Art.414

Article 3 - Protection of the right holder’s rights

1. A legal entity under public law – the Revenue Service under the Ministry of Finance of Georgia (the Relevant Service) shall protect the right holder’s rights with respect to an object of intellectual property that is entered into the Register of Objects of Intellectual Property ('the Register') of the Relevant Service.

2. The Relevant Service shall carry out the protection of the right holder’s rights on the object of intellectual property through the border measures provided for by this Law.

Law of Georgia No 2558 of 28 December 2005 - LHG I, No 5, 20.1.2006, Art.41

Law of Georgia No 4276 of 29 December 2006 - LHG I, No 51, 31.12.2006, Art.435

Law of Georgia No 3806 of 12 November 2010 - LHG I, No 66, 3.12.2010, Art.414

Law of Georgia No 5596 of 23 December 2011 – website, 30.12.2011

Law of Georgia No 1682 of 29 November 2013 - website, 17.12.2013

Article 4 - Rules and conditions for registering objects of intellectual property

1. A right holder or his/her representative ('the applicant') may apply to the Relevant Service to enter into the Register an object of intellectual property ('the Registration') and may require the suspension of the movement of, or any other procedures, at the customs border of Georgia in connection with the goods that are produced through an infringement of copyrights and neighbouring rights, the infringement of the rights of database makers, the infringement of the exclusive design rights, the infringement of the rights of the appellations of origin and geographical indications of goods and/or counterfeit goods and may demand protection of the right holders’ rights

2. An application for registration shall include:

a) the name (designation) and address of the applicant;

b) information on the object of intellectual property, a detailed description of the goods that contain the object of intellectual property or other data that facilitate the recognition of the goods for the Relevant Service (including, where available, information on the producer and/or importer of the goods);

c) the term of the registration, which shall not exceed 2 years. This term may be extended several times at the request of the applicant, but for not longer than the validity term of the rights on the object of intellectual property;

d) any information on the goods produced through an infringement of the rights to the object of intellectual property (including, where available, information on the origin of such goods, location, consignment, details necessary to identify their packaging, movement, used means of transport, the sender of the goods, the receiver or holder of the goods, distinguishing marks to recognise differences between the original goods and the goods produced through an infringement of the rights);

e) a statement that the applicant undertakes to compensate material damage inflicted as a result of the suspension of the goods on the importer, exporter or owner of the goods and/or to another person in the cases provided for by this Law;

f) the name, surname, address and other contact information of a contact person.

3. An application for registration shall be accompanied by documents certifying the rights of the applicant to the object of intellectual property (a license, certificate, license agreement or other documents defined by the legislation of Georgia) and/or a copy or an original of the object of intellectual property.

4. The Relevant Service, within one month after receiving the application for registration, shall decide the question of registering the object of intellectual property or issue a justified refusal for its registration.

5. In the case of changes in the data of the application for registration, the applicant shall notify the Relevant Service.

6. If the term of registration is extended, the application for registration shall comply with the requirements of paragraphs (2) and (3) of this article.

7. The Relevant Service may make a decision to remove the object of intellectual property from the Register if it discovers that the applicant has lost the rights established by the legislation of Georgia with respect to the object of intellectual property.

Law of Georgia No 2558 of 28 December 2005 - LHG I, No 5, 20.1.2006, Art.41

Law of Georgia No 4276 of 29 December 2006 - LHG I, No 51, 31.12.2006, Art.435

Law of Georgia No 3806 of 12 November 2010 - LHG I, No 66, 3.12.2010, Art.414

Law of Georgia No 5596 of 23 December 2011 – website, 30.12.2011

Law of Georgia No 1682 of 29 November 2013 - website, 17.12.2013

Article 5 - Suspension of goods

1. If at the time of importation, placement for storage at a customs warehouse/terminal/other places of storage or export from Georgia the Relevant Service has grounds to assume that the goods are produced through an infringement of the rights to the registered object of intellectual property protected in Georgia, then the Service shall make a decision to suspend the movement of such goods and/or to suspend the procedures provided for by the tax legislation of Georgia ('suspension of the goods') for 10 working days (in the case of perishable goods, for 3 working days).

2. The applicant shall be notified immediately of the decision of the Relevant Service and the name (designation) and the address of the importer, exporter and/or owner of the goods. The owner of the goods shall also be notified immediately of this decision and the name (designation) of the applicant.

Law of Georgia No 2558 of 28 December 2005 - LHG I, No 5, 20.1.2006, Art.41

Law of Georgia No 4276 of 29 December 2006 - LHG I, No 51, 31.12.2006, Art.435

Law of Georgia No 3806 of 12 November 2010 - LHG I, No 66, 3.12.2010, Art.414

Law of Georgia No 5596 of 23 December 2011 – website, 30.12.2011

Law of Georgia No 5954 of 27 March 2012 – website, 12.4.2012

Law of Georgia No 1682 of 29 November 2013 - website, 17.12.2013

Article 6 - Conduct of inspections and the right to be informed

1. An applicant may, with the permission of the Relevant Service, in the presence of the owner of the goods (or his/her/its representative) inspect the suspended goods and take a sample from the goods that are to be inspected.

2. The applicant may request an extension of the term of the suspension of the goods for 10 working days to conduct an expert examination of the sample of goods that are to be inspected. In the case of perishable goods the term shall not be extended.

3. The Relevant Service shall be obliged to provide the information to the applicant and to the owner of the goods (or his/her/its representative) that is necessary for identification and inspection of the goods. This information is confidential and shall not be disclosed, except for the cases established by the legislation of Georgia. If the applicant discloses this information the Relevant Service will remove from registration the object of intellectual property and discontinue the procedure for suspension of the goods.

Law of Georgia No 2558 of 28 December 2005 - LHG I, No 5, 20.1.2006, Art.41

Law of Georgia No 4276 of 29 December 2006 - LHG I, No 51, 31.12.2006, Art.435

Law of Georgia No 5596 of 23 December 2011 – website, 30.12.2011

Law of Georgia No 1682 of 29 November 2013 - website, 17.12.2013

Article 7 - Annulment of the decision to suspend goods

1. The Relevant Service shall annul a decision to suspend goods in the following cases:

a) at the applicant’s request;

b) if the Relevant Service make a decision to remove the object of intellectual property from the Register according to Article 4(7) of this Law;

c) in the case defined by Article 6(3) of this Law.

2. Upon submission of an application for the registration of an object of intellectual property the applicant shall perform the obligation undertaken under Article 4 (2)(e) of this Law, after he/she is given an opportunity to inspect the suspended goods and if the grounds of suspicion of the Relevant Service and/or the applicant are not confirmed.

3. The applicant shall bear the expenses for storage of goods from the moment of receiving a notification of suspension of the goods provided for by Article 5(2) of this Law.

Law of Georgia No 2558 of 28 December 2005 - LHG I, No 5, 20.1.2006, Art.41

Law of Georgia No 4276 of 29 December 2006 - LHG I, No 51, 31.12.2006, Art.435

Law of Georgia No 3806 of 12 November 2010 - LHG I, No 66, 3.12.2010, Art.414

Law of Georgia No 5596 of 23 December 2011 – website, 30.12.2011

Law of Georgia No 1682 of 29 November 2013 - website, 17.12.2013

Article 8 - Seizure and destruction of goods by the Relevant Service

1. If the applicant and the importer, exporter or/and owner of the goods, within 7 working days after receiving notification provided for by Article 5(2) of this Law, submit a written agreement to the Relevant Service declaring that the owner of the goods abandons the suspended goods, then the goods shall be destroyed at the expense and under the responsibility of the applicant, under the supervision of the Relevant service. In the case of perishable goods, the term for submission of the written agreement to the Relevant Service shall be 3 working days.

2. If the agreement provided for by paragraph 1 of this article is not achieved, the dispute between the parties shall be considered by a court. In this case, all issues related to suspension of the goods (including the duration of the suspension of the goods, the amount of damages caused, the fact of the violation of rights) shall be resolved by the decision of the court.

3. In the case of filing a statement of claim with a court during the period of validity of the decision to suspend the goods, the applicant or the importer, exporter and/or owner of the goods shall present the court ruling to the Relevant Service immediately.

4. If the procedures provided for by paragraphs 1 and 3 of this article are not performed during the period of validity of the decision on the suspension of goods, the Relevant Service shall ensure implementation of measures necessary for release of the goods.

5. The relevant Service is obliged to keep a sample of the goods to be destroyed so that it can be used as evidence.

6. The suspended goods may be left undestroyed and may be used for humanitarian or charitable purposes only with the consent of the applicant, provided that the goods do not endanger human life or health.

Law of Georgia No 2558 of 28 December 2005 - LHG I, No 5, 20.1.2006, Art.41

Law of Georgia No 4276 of 29 December 2006 - LHG I, No 51, 31.12.2006, Art.435

Law of Georgia No 5596 of 23 December 2011 – website, 30.12.2011

Law of Georgia No 1682 of 29 November 2013 - website, 17.12.2013

Article 9 - De minimis import

This Law does not apply to small quantities of non-commercial goods that are placed in a traveller's luggage or sent in small containers.

Law of Georgia No 2558 of 28 December 2005 - LHG I, No 5, 20.01.2006, Art.41

Chapter III - Transitional and Final Provisions

Article 10 - Transitional provision

The chairperson of the State Customs Department of Georgia shall, within two months after entry into force of this Law, issue rules for the destruction and disposal of the goods produced through an infringement of copyrights, the rights for the appellations of origin and geographical indications of goods and /or counterfeit goods.

Article 11 - Final provision

This Law shall enter into force upon its promulgation.

President of Georgia                                                                                                                                            Eduard Shevardnadze

Tbilisi,

23 June 1999

No 2159-IIS