On Design

 

 

LAW OF GEORGIA

ON DESIGN

 

Chapter I – General Provisions

 

Article 1 – Scope of the Law

1. In accordance with the Constitution of Georgia, the inviolability of title to a design, which is an object of intellectual property, is recognised by this Law; this Law also regulates relations associated with creation, registration, use and legal protection of designs as well as relations related to rights to be exercised with respect to the legal protection of designs.

2. This Law applies to designs that are duly registered with the Industrial Property Registry (the Registry) by the National Intellectual Property Centre of Georgia the Sakpatenti, or to designs that fall within the scope of international registration.

3. Designs that are not registered with the Sakpatenti, or for which international registration does not apply, are protected in accordance with the Law of Georgia on Copyright and Neighbouring Rights.

 

Article 2 – Definition of terms

Terms used in this Law have the following meanings:

a) the National Intellectual Property Centre the Sakpatenti (the Sakpatenti) – a legal entity under public law defined by the Patent Law of Georgia;

b) the International Bureau (IB) – the International Bureau of the World Intellectual Property Organisation (WIPO);

c) Paris Convention – the Paris Convention for the Protection of Industrial Property signed on 20 March 1883 (revised in Stockholm on 14 July 1967; amended on 28 September 1979);

d) designer – a natural person, who produces a design as a result of his/her intellectual and creative work;

e) co-designer – a natural person, who produces a design as a result of intellectual and creative work jointly with other natural person (persons);

f) design holder- a person, who has exclusive rights to a design and who is registered as a design holder by the Sakpatenti in the Registry ;

g) certificate – a document issued in the name of a design holder in accordance with this Law, certifying the registration of a design with the Sakpatenti at the moment of issuing a certificate; ;

h) applicant – a natural or legal person applying for the registration of a design;

i) application – a set of documents necessary for the registration of a design in accordance with this Law;

j) the Hague Agreement – the Hague Act of November 28, 1960 of the Hague Agreement and/or the Geneva Act of July 2, 1999 on International Registration of Industrial Designs.

k) international design – a design registered by the International Bureau with a request to apply appropriate rights in the territory of Georgia in accordance with the Hague Agreement;

l) international classification of designs – an international classification established by the Locarno Agreement on establishing international classification for industrial designs signed on October 8, 1968.

m) priority – a preference that is given to an application as compared with one that has been submitted earlier ;

n) convention priority – a priority established in accordance with Article 4 of the Paris Convention, which may be used by the applicant in other member countries to the Paris Convention or the World Trade Organisation;

o) exhibition priority – a priority established in accordance with Article 11 of the Paris Convention, which may be used by the applicant in other member countries to the Paris Convention or the World Trade Organisation;

p) Chamber of Appeals – the Chamber of Appeals under the auspices of the Sakpatenti, defined by the Patent Law of Georgia.

 

Article 3 – Design and its protection criteria

1. A design is an expression of a whole product or a part thereof, consisting of features of a product, such as lines, contours, colours, shapes, texture or/and materials, or of decorations thereof.

2. A product is any industrial piece of work or article of craftsmanship, including materials for packaging and decoration, as well as graphical symbols, typographic fonts, and component elements to be incorporated into the complex of a product, except for software.

3. A complex of products is a product that consists of multiple elements, which may be replaced by disassembling and reassembling the product .

4. A design may be protected if it has novelties and is unique in its nature.

5. A design may be construed as having novelties, if there are no identical designs that have become publicly available before the date of filing an application and before the priority date.

6. When determining novelties of a design, the design filed with the Sakpatenti or registered by the International Bureau with a request to apply rights in the territory of Georgia, shall be construed as publicly available if it is published after an application for the design, the novelties of which are being established, has been filed, and for which the application has earlier priority.

7. Designs shall be construed as identical even if they are differentiated by minimal details.

8. A design may be construed as individual, if the common impression that it makes on an informed user differs from the common impression that is made on the same user by another design that has become publicly available before an application is filed or a priority date is determined.

9. When assessing an individual feature of a design, a degree of freedom of the designer at the time of creating a design shall be taken into consideration.

10. A design, incorporated in or used for a product, which is a part of a complex product, shall be regarded as new and individual if it is visible in a complex product during its normal use and if visible features meet the criteria of novelties and individuality.

11. For the purposes of this article, normal use means the use by end users, except for maintenance works, general servicing and repair works.

Law of Georgia No 3279 of 2 July 2010 – LHG I, No 37 14. 7. 2010, Art.220

 

Article 4 – Legal protection of designs

1. Legal protection of designs is determined on the basis of their image.

2. Legal protection does not apply to a word or sequence of words incorporated into the design.

3. Legal protection applies to any design that does not make a different overall impression on an informed user.

4. When determining the scope of legal protection of a design, the degree of freedom of a designer at the time of creating the design shall be taken into consideration.

 

Article 5 – Origination of exclusive rights to designs and their validity

1. Exclusive rights to designs shall originate from the date of filing an application if it is registered with the Sakpatenti as well as in accordance with this Law, and by way of international registration on the basis of the Hague Agreement.

2. A certificate shall be issued for a design registered with the Sakpatenti..

3. An Applicant may register a design with the Sakpatenti for one or several periods of 5 years, but not for more than 25 years from the date of filing an application with the Sakpatenti.

 

Article 6 – Disclosure of information on designs

1. A design shall be regarded as publicly available if it has been published, exhibited, used in the course of trade or made public in any other way before filing an application or before its priority date.

2. A design shall not be regarded as publicly available, despite provisions defined in paragraph 1 of this article, if:

a) actions provided for by paragraph 1 of this article could not have become publicly known for persons acting in the relevant field in the territory of Georgia;

b) information on a design is disclosed to a third person directly or indirectly under conditions of confidentiality.

3. Information on a design shall not be construed as disclosed if it has been made available to the public within 12 months prior to the date of filing an application or before the priority date:

a) by a designer or his/her successor by way of disclosing information on a design;

b) by a third person as a result of an act of bad faith conducted against a designer or his/her legal successor.

Law of Georgia No 3279 of 2 July 2010 – LHG I, No 37, 14. 7. 2010, Art.220

 

Article 7 – Designs which are solely dictated by their technical functions and designs of interconnections

1. Protection shall not be applied to those features of design which are:

a) solely dictated by their technical function;

b) necessarily produced in designs exactly in such forms and dimensions so as to allow the product, in which the design is incorporated or for which it is applied, to be mechanically connected to another product or to be placed inside, around or opposite another product, so that each product has an equal opportunity to perform its function.

2. Paragraph 1(b) of this article shall not apply to a design, which allows multiple assembling or linking of mutually interchangeable products within a modular system.

Article 8 – Relations between co-designers

Relations between co-designers shall be defined by an agreement concluded between them. In the absence of an agreement, co-designers may enjoy common and equal rights.

 

Article 9 – Rights to register designs

1. A designer or his/her legal successor may file an application, except for the cases provided for by this article.

2. The right to file an application for a design created by several persons may be exercised either by all co-designers jointly or by each co-designer individually in the case of a written approval of other co-designers, unless otherwise provided for by an agreement concluded between the co-designers.

3. If creation of a design is related to the fulfilment of official duties and/or orders by an employee and/or a contractor, the right to file an application for the design created by an employee and/or a contractor shall belong to the employer and/or client, unless otherwise provided for by an agreement.

4. If creation of a design is not related to the fulfilment of official duties and/or orders by an employee and/or a contractor, but the employee and/or a contractor has used resources in the ownership of the employer and/or client for creating the design, the right to register such design shall belong to the employer and/or client.

5. In the cases provided for by paragraph 4 of this article, an employee/contractor may obtain a royalty-free, non-exclusive, private licence for a design, and/or a pre-emptive right to purchase exclusive rights deriving from the design, unless otherwise provided for by an agreement.

6. If two or more persons have created one and the same design independently, exclusive right to the design shall belong to the applicant whose application for the registration of a design has an earlier priority date.

7. If one and the same priority is established for several applications for identical designs, the right to register a design shall be granted to the person (persons) specified in the applicants' agreement. If the parties fail to reach an agreement, the dispute shall be resolved by a court.

 

Article 10 – Grounds for refusal to register a design

A design shall not be registered if:

a) it does not meet requirements of Article 3(1) of this Law;

b) it is identical to an earlier design, the application for which has been filed with the Sakpatenti or which has been registered in the International Bureau with a request to apply its protection in the territory of Georgia and if it has become publicly available before filing the application for the mentioned design or before the priority date;

b) it is identical to an earlier design, which has become publicly available after filing an application for a design or after the priority date, but the application of which has been filed with the Sakpatenti or which has been registered in the International Bureau with a request to apply its protection in the territory of Georgia before the date mentioned above;

d) its registration disturbs the public order;

e) it coincides with the emblem, flag, banknote, full or abbreviated name of Georgia or its territorial entity completely or in any of its component elements, or there is no approval from a competent authority for its use ;

f) it coincides with the emblem, flag, full or abbreviated name of the international organisation completely or in any of its component elements, and this circumstance is known to an expert, or there is no approval from a competent organisation for its use;

g) the appellations of origin and geographical indications of goods, which are granted the protection in the territory of Georgia on the basis of a local registration, and bilateral or international agreements, are expressed in designs or in any of their component elements.

Law of Georgia No 3279 of 2 July 2010 – LHG I, No 37, 14. 7. 2010, Art.220

 

Chapter II – Filing, Examining and Registering Applications

 

Article 11 – Application

1. An applicant or his/her representative shall file an application with the Sakpatenti.

2. If an applicant is a legal successor of a designer, a document certifying the authority of the legal successor shall be attached to the application immediately after the application is filed or within two months after the filing of the application.

3. If an application has been filed by a representative of the applicant, a document certifying the authority of the representative shall be attached to the application immediately after the application is filed or within two months after filing the application.

4. An application shall include:

a) a statement on the registration of a design(the Statement);

b) an image of the design .

5. An application may include a description of explanatory character only.

6. Applications are filed with the Sakpatenti by submitting application documents directly or in any other way.

7. Applications are deemed to be filed from the moment when the statement thereof and the image of the design are presented.

8. Application forms and procedures related to filing applications are defined by the instructions (the Instructions) for the registration of designs.

 

Article 12 – Applications for multiple designs, unification and division of applications

1. An application may include one or several designs, if all designs included in an application belong to the same class of international classification of designs (Applications for Multiple Designs).

2. Applicants may:

a) unify applications and file a unified application, if designs included in it belong to the same class of an international classification of designs (Unified Application);

b) divide a filed application for patents into separate divisional applications; (Divisional Application).

3. Each design included in an application for multiple designs or in a unified application shall be considered separately and shall be the subject of separate protection.

 

Article 13 – Priority

1. An applicant willing to enjoy the convention priority right shall file an application with the Sakpatenti within six months after the date of filing the first application for this design with an appropriate authority of the country that is a member the Paris Convention or the World Trade Organisation.

2. An applicant willing to enjoy an exhibition priority shall file an application with the Sakpatenti within six months after the date of exhibiting the design at an official international exhibition or at an international exhibition recognised as such and organised in a country that is a member of the Paris Convention or the World Trade Organisation.

3. Convention and exhibition priorities shall not extend each-other's term .

4. In the cases provided for by Article 12 (1) and (2) of this Law, an applicant may claim priority for each particular design, of which the applicant has the ownership right.

5. The priority of an application shall not be established for the date of filing an application on which an earlier priority has been previously claimed.

 

Article 14 – Examination of applications

1. The Sakpatenti conducts examination of applications, on the basis of which it makes a decision on the registration of a design.

2. The examination includes verifying the date of filing application, examining formal requirements and conducting a substantive examination.

 

Article 15 – Verification of the date of filing applications

1. The Sakpatenti shall verify the date of filing an application within two weeks after the application is filed.

2. If it is found that any application material under Article 11(4) of this Law is lacking, the applicant shall submit the aforementioned application material within one month after receiving notification thereof.

3. If the applicant meets the requirements under paragraph 2 of this article, the date of filing the application shall be construed as the date of fulfilling the mentioned requirement. Otherwise, the application shall be construed as not filed.

 

Article 16 – Examination of formal requirements

1. After the verification of the date of filing of an application, the Sakpatenti shall conduct the examination of formal requirements, during which completeness of the application, correctness of registration and compliance with requirements under Article 12 of this Law shall be assessed.

2. The Sakpatenti shall conduct an examination of formal requirements within one month after the date of filing an application is verified.

3. On the basis of examination of formal requirements the Sakpatenti shall make a decision on the completion of examination of formal requirements or on the termination of processing the application and shall inform the applicant thereon.

 

Article 17 – Substantive examination

1. The Sakpatenti shall conduct a substantive examination within 3 months after completing the examination of formal requirements, which ensures examination of the compliance of a design with the requirements of Article 10 of this Law and examinations with regard to identifying novelties.

2. When identifying novelties in accordance with Article 10 (b) and (c) of this Law, the Sakpatenti shall take into consideration those designs for which applications have already been filed with the Sakpatenti and which have been registered by the International Bureau with a request to apply rights in the territory of Georgia.

3. When identifying novelties, a design identified as a result of examinations conducted in accordance with paragraph 2 of this article and which meets the condition under Article 6 (5)(a) of this Law, shall not be considered.

4. On the basis of the substantive examination, the Sakpatenti shall make a decision to register a design or to refuse the registration of a design.

5. In the cases provided for by Article 12 (1) and (2) of this Law, the Sakpatenti may make a positive decision concerning some of the designs included in the application.

 

Article 18 – Extension and restoration of procedural terms

1. In the course of processing applications, the applicant may, in accordance with established rules, require:

a) changes and/or amendments to the submitted application documents, provided the scope of protection of a design is not changed by taking such actions;

b) postponing of the publication of designs for not more than 30 months after the filing an application for design or from the priority date. In the case of filing applications for multiple designs, the request to postpone publication may apply to all and each design included in the application ;

c) termination of the process of considering applications;

d) extending the term for responding to requirements made by the Sakpatenti ;

e) restoration of the rights related to the application that have been deprived due to the violation of the terms.

2. Procedures for the implementation of actions mentioned in paragraph 1 of this article shall be determined by the Instructions.

Law of Georgia No 3279 of 2 July 2010 – LHG I, No 37, 14. 7. 2010, Art.220

 

Article 19 – Publication of designs

1. The Sakpatenti, in the case of a positive decision to register a design, shall publish application data and an image of the design in the official bulletin of industrial property (the Bulletin) as provided for in the Instruction.

2. If a negative decision of the examination regarding the registration of a design is repealed by a positive judgement at law, the Sakpatenti shall publish application data and an image of the design in the Bulletin as provided for in the Instruction .

3. The Sakpatenti shall not publish the name of a designer unless it is requested by the designer.

 

Article 20 – Grounds for filing an appeal with the Chamber of Appeals

1. The applicant may file an appeal with the Chamber of Appeals with respect to the decisions made by the Sakpatenti on the completion of the examination of formal requirements or on terminating the process of processing an application, as well as with respect to a decision of the substantive examination refusing to register a design.

2. A concerned party may appeal a decision of the substantive examination refusing to register a design to the Chamber of Appeals in the case of violating requirements of Article 17 of this Law.

3. A concerned party may file an appeal with the Chamber of Appeals to revoke the decision of the substantive examination regarding registration of a design , if:

a) a design does not meet requirements of Article 3(4-10) of this Law, except for the cases provided for by Article 17(2) of this Law;

b) there are grounds provided for by Article 29(1) (f)(g) and (h) of this Law .

4. In the case of applications for multiple designs or applications for unified designs, the appeal may apply to one or several designs included in such applications.

5. An appeal may be filed with the Chamber of Appeals within three months after publishing/submitting a decision thereon.

6. The Chamber of Appeals shall consider an appeal in the prescribed manner within three mounts after the appeal is filed.

7. A decision of the Chamber of Appeals may be appealed in court within the period prescribed by law.

 

Article 21 – Registration of designs

1. If an appeal is not filed with the Chamber of Appeals within the period established by Article 20(5) of this Law, or if the Chamber of Appeals makes a decision to register a design on the basis of the filed appeal, the Sakpatenti shall register the design in the Registry in accordance with the Instructions.

2. The Sakpatenti shall publish data on the registered design in the Bulletin and issue a certificate.

3. The Sakpatenti shall establish the form of a certificate and data to be included in the Registry.

4. Registry data are available for any concerned person.

 

Article 22 – Accelerated procedure for the registration of designs

1. The rule established by Chapter II of this Law shall apply to the accelerated procedure of the registration of designs, unless otherwise provided for by this article.

2. An applicant may request an accelerated examination upon filing an application or within one month after filing an application.

3. An application regarding a request to conduct an accelerated examination shall be accompanied by all documents provided for by Article 11 of this Law and the fee prescribed for the procedure of accelerated registration of a design shall be paid.

4. If the applicant intends to use the priorities defined by Article 13(1) and (2) of this Law, the application regarding a request to conduct an accelerated examination shall be accompanied by a document certifying eligibility to request a priority and the fee prescribed for requesting the priority shall be paid.

5. The Sakpatenti shall check within three days after the request to conduct the accelerated examination is made whether the requirements of paragraph 3 and paragraph 4 of this article are met. If any document provided for by paragraph 3 and paragraph 4 of this article is missing from the application materials, the applicant shall submit this document within 15 days. Otherwise the Sakpatenti shall make a decision to refuse to conduct an accelerated examination and shall consider the application as provided for by Chapter II of this Law.

6. If an application regarding a request to conduct an accelerated examination meets requirements of paragraph 3 and paragraph 4 of this article, the Sakpatenti shall conduct the substantive examination provided for by Article 17 of this Law within seven working days and in the case of a positive decision, the Sakpatenti shall register the design in the Registry, publish data on the registered design in the Bulletin and issue a certificate.

7. Any concerned person may file an appeal with the Chamber of Appeals as provided for by Article 20 of this Law within three months after data on the registration of a design is published.

8. If an application with earlier priority is filed with the Sakpatenti after the registration of a design through the accelerated procedure, and if there are grounds to refuse to register an application as provided for by Article 10(b) and (c) of this Law with regard to the design registered through the accelerated procedure, the Sakpatenti shall make a decision to revoke the registration of a design through the accelerated procedure and shall publish the data in the Bulletin.

9. The decision provided for by paragraph 8 of this article to revoke the registration of the design through the accelerated procedure, may be appealed in the manner established by Article 20(1) of this Law.

 

Article 23 – Service fee

1. Fees for the examination of formal requirements, for conducting substantive examinations, for the publication and registration of designs, for the maintenance of validity of the registration of an accelerated examination for each period of 5 years, for making appeals, for making changes to the Registry data and for other actions shall be duly paid..

2. Failure to pay fees specified in paragraph 1 of this article within the period fixed shall result in the termination of processing applications

3. Types and amount of fees are determined by an Ordinance of the Government of Georgia.

4. Forms and procedures for paying fees are determined by the Instructions.

 

Chapter II – International Designs

 

Article 24 – Validity of an International Design registration in the territory of Georgia

International designs, registration of which is valid in the territory of Georgia, has the same legal force as a design registered in Georgia.

 

Article 25 – International design examination

1. Article 10, Article 12, Article 17, Article 19 and Article 20 of this Law shall apply to international designs.

2. If a design does not meet requirements for registration as defined by this Law, the Sakpatenti shall refuse to apply the validity of registration of an international design in the territory of Georgia within the term established by the Hague Agreement, and shall notify the international bureau of this fact.

3. The norms of the Hague Agreement shall apply to the validity of registration and prolongation of the validity of registration of International Designs.

 

Chapter IV – Exclusive Rights to Designs

 

Article 26 – Scopes of exclusive rights to designs

1. A design is the disposal of the design holder. He/she may sell or dispose of a design in any other form and grant a private licence for the use of the design in an established manner.

2. After registering a design, its holder, with regard to a product into which his/her design is incorporated or for which it is applied, shall be granted exclusive rights to permit to or prohibit the manufacture, sale, offer for sale, use, import, export or placing a product in the course of trade by some other manner, and to keep such product for these purposes.

3. If a design is owned by more than one person:

a) the transfer of rights, or granting a private licence is permitted only with the consent of all design holders;

b) each design holder may use the registered design in his/her enterprise without the consent of the other design holders.

4. From the date of publishing an application until the date of its registration, the applicant may conditionally enjoy the rights that shall be granted to him/her after registration. Without the registration said rights shall not be construed as having been originated.

5. Depending on the design registration, the following shall not be construed as an infringement of exclusive rights:

a) spreading a product after it is put in the course of trade, into which the design is incorporated or to which it is applied and which is manufactured by a design holder or with his/her consent, and use thereof in any other manner;

b) using a design for the personal use, provided such action is not intended for commercial purposes;

c) using a design for experimental purposes;

d) copying a design, which is made for the purpose of citation or teaching, provided that such copying is not construed as an act of bad faith and does not prejudice the normal use of the design and provided that the source is correctly indicated;

e) using a design on board a sea vessel, or on board an aircraft or any land vehicle of any country when it is temporarily staying in the territory of Georgia; In this case, the design may be used only for the specified vehicle and not for entrepreneurial purposes;

f) using a design in the case of Acts of God (force majeure) defined by the legislation of Georgia.

 

Article 27 – Rights of prior use

1. The right of prior use is the right of a person to use a design irrespective of its registration validity, provided he/she has used the design in good faith, or carried out preparatory works for its use prior to filing an application with the Sakpatenti or before the date of priority.

2. The right of prior use gives a third person the right to use a design only for the purpose, or to the extent for which the third person has already used it, or has carried out preparatory works prior to filing an application with the Sakpatenti or before the date of priority.

3. A private licence may not be issued for the right of prior use. .

4. The right of prior use may be transferred only jointly with such enterprise, where the actions provided for by paragraph 2 of this article have been carried out.

Law of Georgia No 3279 of 2 July 2010 – LHG I, No 37, 14. 7. 2010, Art.220

 

Article 28 – Revocation of the design registration

1. The Sakpatenti shall revoke a design registration :

a) on the basis of an application of the design holder;

b) in the case of non-payment of the fee for extention of design validity;

c) on the basis of Article 22(8) of this Law.

2. The design registration shall not be deemed revoked in the case provided for in paragraph 1(b) of this article, if a design holder pays the fee for the validity extension of the design registration for the following period within 6 months after the expiry of the previous validity of the design registration, but only if 25 years have not elapsed from the validity of the first design registration.

3. As a result of the revocation of a design registration, the rights granted by the design registration shall be construed as terminated from the date of making a record of the revocation of the design registration in the Registry.

 

Article 29 – Invalidation of the design registration

1. A design registration shall be invalidated by a court if it is determined that:

a) a design is represented only by the features that comply with Article 7(1) of this Law;

b) a design contradicts Article 10 of this Law;

c) a design does not meet requirements of Article 3(4) and (10) of this Law;

c) an applicant or a design holder were not eligible persons in accordance with Article 8 and Article 9 of this Law;

d) works protected by the law of Georgia on Copyright and Neighbouring Rights are incorporated into a design;

e) a design, completely or in any of its component elements, coincides with a trademark registered in Georgia that has an earlier priority date, except for the case when a person holding exclusive rights to this trademark applies for registration of the design;

f) a design, completely or any in of its component elements, coincides with a trademark recognised as a well-known trademark in accordance with Article 3(4) of the law of Georgia on Trademarks;

g) a design, completely or in any of its component elements, coincides with an emblem, full or abbreviated name, official controlling, warranty and test hallmarks, seals, orders, medals of international or intergovernmental organisations, a historic name, coat of arms, flag, emblem, banknote of Georgia or of its territorial entities, or is an imitation of signs mentioned in this sub-paragraph;

h) a design has been registered in bad faith.

2. In the case provided for by Paragraph 1(d) of this article, a concerned person may request transfer of the rights deriving from a design registration instead of invalidation of the design registration.

3. In the cases of applications for multiple designs and applications for unified designs, the appeal may apply to one or several designs.

4. Invalidation of a design may be requested on the basis of:

a) paragraph 1(a)(b)(c) or (i) of this article – by a person concerned;

b) paragraph 1(d) of this article – only by a person who has been granted rights to a design in accordance with Article 8 and Article 9 of this Law;

c) paragraph 1(e) of this article – only by the copyright holder;

d) paragraph 1(f) and (g) of this article – only by the trademark holder;

e) paragraph 1(h) of this article – only by natural or legal persons, or by appropriate authorities interested in the use of signs mentioned in paragraph 1(h) of this article.

5. The rights granted by registration as a result of the invalidation of a design registration shall be construed as terminated from the date of the origination of these rights to a design unless another date is specified in a final court decision.

 

Article 30 – Penalties for the infringement of exclusive rights to a design

Manufacturing, selling, using, importing, or putting into the course of trade a product in which the design is incorporated or for which it is applied, or keeping such product for these purposes, and/or disclosing its essence deliberately (except for disclosure made by the designer) without permission of the design holder before the Sakpatenti publishes data concerning the design, or assuming powers of a designer shall entail liabilities provided for by the legislation of Georgia.

 

Article 30¹ – Protection of exclusive rights to a design

1. In the case of infringement of exclusive rights to a design, a holder of exclusive rights to a design shall be entitled to require:

a) the prohibition of the actions provided for by Article 26 (2) of this Law;

b) the removal from the civil circulation of a product incorporated in the civil circulation through the infringement of exclusive rights to a design, or imported into or stored (placed for storage) in the territory of Georgia for the purpose of incorporation into the civil circulation, in which the design is incorporated and for which it is used.

c) the destruction of a product incorporated in the civil circulation through the infringement of exclusive rights to a design, in which a design is incorporated or for which it is used;

d) the destruction of any image, label, printout, packaging, or advertising material that contains or is a copy or imitation of the image of the design, including the removal of such material or image placed in the internet that contains the image of the design;

e) the destruction of a cliche, matrix, other devices, technical equipment and weapons designated for the manufacture of a product in which the design is incorporated or for which it is used.

2. A holder of exclusive rights to a design shall be authorised, at his/her discretion, to request the simultaneous execution of several of the actions referred to in paragraph 1 of this article.

3. The action provided for by paragraph 1(a) of this article may also be carried out in relation to a person, based on the request of the holder of exclusive rights to a design and based on the court decision, who was aware or should have been aware that the services had been used or was used for the infringement on the commercial scale of exclusive rights to a design.

4. In special cases, the court shall be entitled, by the request of the person infringing exclusive rights to a design, in exchange of carrying out the actions provided for by paragraph 1(b)(e) of this article, to impose a monetary compensation, if he/she has acted negligently or he/she incurred disproportionate damage in comparison with the estimated infringement through the use of relevant provision measures, however, if the amount of monetary compensation determined by a court for the holder of exclusive rights to a design, is acceptable.

5) In the case of the infringement of rights to a design, the holder of exclusive rights to a design shall be entitled, in addition to the action provided for by paragraph 1 of this article, to request one of the following actions:

a) compensation for damages (including the unearned income) if the violator of exclusive rights to a design was aware or should have been aware of the infringement of exclusive rights to a design;

b) seizure of the proceeds from the infringement of exclusive rights to a design of the violator of exclusive rights to a design in favour of the holder of exclusive rights to a design;

c) the payment of the one-off compensation.

6. While determining the volume of damages, the idea of the infringement of exclusive rights to a design, the proceeds from the infringement of exclusive rights to a design, the property and non-property damage incurred by a holder of exclusive rights to a design, as well as the estimated proceeds which might have been earned by a holder of exclusive rights to a design through the lawful use of the design, shall be taken into account.

7. The one-off monetary compensation shall be determined by not less than the amount which might have been paid by a violator of exclusive rights to a design when obtaining the permit for the use of the design.

8. During the determination of the one-off monetary compensation, the quantity of products used without the approval from the design holder, in which the design is incorporated and for which the products are used, the intention of the violator of exclusive rights to a design, the scale, character shall be taken into account, as well as other features of services which are offered through the infringement of exclusive rights to a design, and/or any other circumstance, which may be taken into account during the determination of the amount of compensation.

Law of Georgia N 1920 of 23 December 2017 – website, 11.1.2018

 

Article 31 – Transfer of rights to a design

1. Exclusive rights to a design shall be transferred on the basis of a written agreement.

2. An agreement for the transfer of exclusive rights to a design, as well as amendments made therein, shall be duly registered with the Registry and appropriate data shall be published in the Bulletin.

3. A new design holder may not use rights deriving from the design registration against a third person before appropriate amendments are registered with the Registry.

 

Article 32 – Private licence for the use of a design

1. A design holder may grant a private licence for the use of a design.

2. The private licence is not a licence under the Law of Georgia on Licences and Permits.

3. A private licence agreement shall be entered into in writing. The scopes of design shall be determined in the private licence.

4. A private licence may be exclusive or non-exclusive. If a private licence agreement does not define the type of licence, the private licence shall be construed as non-exclusive.

5. Granting a non-exclusive private licence shall not deprive the licensor of the right to grant other licences under the same conditions.

6. Granting an exclusive private licence shall deprive the licensor of the right to grant other licences under the same conditions.

7. A private license holder may file an action in a court for infringement of rights deriving from the design registration, unless the design holder files an action in a court himself/herself within a reasonable time after being notified of the infringement of rights.

8. A private licence agreement and amendments made thereto may be registered with the Registry.

9. If a private licence agreement provides for restrictions related to the creation, dissemination and/or export of a design only in a specified market, an appropriate indication shall be made on the product label. If there is no such indication, restrictions provided for by the private licence agreement shall not apply to third parties.

 

Article 33 – Conflicts of interest

1. Applications may not be filed by:

a) natural persons who currently work in the Sakpatenti or who have been working in the Sakpatenti for 12 months before filing the application;

b) legal persons, in which persons provided for by sub-paragraph (a) of this paragraph are members, partners, shareholders or managers.

2. A person who has been directly involved in the process of making a decision regarding the registration of a design which has been appealed, may not be a member of the Chamber of Appeals when hearing a legal dispute on the registration of a design.

 

Chapter V – Transitional Provisions

 

Article 34 – Application of the norms of this Law to previous relations

1. With regard to the creation, registration, use, and legal protection of designs, this Law shall apply to relations, which:

a) have arisen after the entry of this Law into force ;

a) have been validated on the date of entry of this Law into force.

2. Applications that are pending processing in the Sakpatenti on the date of entry of this Law into force, shall be reviewed in the manner provided for by the Patent Law of Georgia of 5 February 1999. (Legislative Herald of Georgia No 5(12), 1999, Art.21).

 

Article 35 – Measures related to the entry of this Law into force

The Sakpatenti shall issue an Instruction on the registration of a design.

Law of Georgia No 3742 of 26 October 2010 – LHG I, No 62, 5.11.2010, Art. 382

 

Chapter VI – Final Provisions

 

Article 36 – Entry of this Law into force

This Law shall enter into force one month after its promulgation.

 

 

President of Georgia                                                                M. Saakashvili

 

Tbilisi,

4 May 2010

No 3030–I ს