Checklist of Issues on Enforcement under TRIPS Art. 63.2 - View details of the document

Georgia

(a) Civil judicial procedures and remedies

Intellectual property right infringement cases are subject to the jurisdiction of the Regional Courts as courts of first instance. The judgement of the Regional Courts may be appealed to the Supreme Court. The legislative acts regulating industrial property provide for the possibility of appeal against the decision of the examination to the Sakpatenti Chamber of Appeals, whereas, if the parties come to an agreement, the dispute may be considered at the arbitration organized under the Law of Georgia on Private Arbitration.

All right holders may, in conformity with the rule under the Civil Procedure Code, assert intellectual property rights in court. Before the court a right holder may appear either in person or may be represented by an agent. Personal appearance of the right holder before the court is not mandatory.

The Third Chapter of the Civil Procedure Code regulates the production of evidence. According to Article 103 of the Code under the request of a party concerned the court is authorized to order production of evidence no matter in whose possession they are (among them in the possession of the opponent).

Under Article 9 of the Civil Procedure Code the court may, in order to protect confidential information, declare a session closed on the basis of a motivated application made by the party concerned.

Injunctions The court may secure an action upon request of a party, if the execution of the judgement would otherwise be obstructed or made impossible. The court shall review the application of securing an action on the day of application. For the purpose of securing an action the court may, inter alia, order a party to desist from performing certain transactions or proceedings, seize the moveable property of the defendant, etc. Damages, including recovery of profits, and expenses, including attorney’s fees The court is competent to order the infringer to compensate the right holder damages adequate to the injury the right holder has suffered because of an infringement of that person’s intellectual property right by an infringer who culpably engaged in an activity that caused the injury (damage). The damages include lost profits. Upon request of the party in whose favor a judgement was rendered, the court shall order the other party to disburse to the aforesaid party the necessary and justifiable litigation expenses, the attorney’s fees being understood thereunder. Destruction or other disposal of infringing goods and materials/implements for their production The Code of Civil Procedure does not regulate the disposal, or destruction, of goods and materials/implements for their production. The relevant measures are available within the specific laws regulating intellectual property relations and the Code of Administrative Violations. Any other remedies Apart from the requirements set forth in the acts regulating intellectual property, the party concerned may seek compensation for any damage suffered by him due to the defendant's actions only if he brings supporting evidences of the damage.

The Code of Civil Procedure does not authorise the judicial authorities to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the goods or services found to be infringing and of their channels of distribution.

Defendants wrongfully enjoined may rely upon the general legal grounds of indemnification. In case the defendant has suffered damages as a result of illegal activities of public authorities and/or officials in the course of their official duties, the damages will generally also be compensated according to the general regulations on indemnification and the Administrative Code.

According to Article 59 of the Civil Procedure Code, the courts dispose of the legal proceedings within two months after their receipt; if the case is especially difficult, within five months. According to the Civil Procedure Code the expenses of the proceedings involve the expenses of the proceedings and the expenses not related to the court. The expenses of the proceedings include the State duty (that shall not exceed 5000 Lari) and fees payable to witnesses, specialists, experts, interpreters, as well as the expenses carried by the State Treasury for examination on the spot, for search of the defendant, for judgment enforcement. The expenses not related to the court are the fees payable to the lawyer, expenses made for production of evidences and other expenses.

(b) Administrative procedures and remedies

The court system shall consist of: - district (city) courts; - regional courts; - the Supreme Court. See reply to questions 2 - 8 above

[Answer 2: All right holders may, in conformity with the rule under the Civil Procedure Code, assert intellectual property rights in court. Before the court a right holder may appear either in person or may be represented by an agent. Personal appearance of the right holder before the court is not mandatory.]

[Answer 3: The Third Chapter of the Civil Procedure Code regulates the production of evidence. According to Article 103 of the Code under the request of a party concerned the court is authorized to order production of evidence no matter in whose possession they are (among them in the possession of the opponent).]

[Answer 4: Under Article 9 of the Civil Procedure Code the court may, in order to protect confidential information, declare a session closed on the basis of a motivated application made by the party concerned.]

[Answer 5: Injunctions The court may secure an action upon request of a party, if the execution of the judgement would otherwise be obstructed or made impossible. The court shall review the application of securing an action on the day of application. For the purpose of securing an action the court may, inter alia, order a party to desist from performing certain transactions or proceedings, seize the moveable property of the defendant, etc. Damages, including recovery of profits, and expenses, including attorney’s fees The court is competent to order the infringer to compensate the right holder damages adequate to the injury the right holder has suffered because of an infringement of that person’s intellectual property right by an infringer who culpably engaged in an activity that caused the injury (damage). The damages include lost profits. Upon request of the party in whose favor a judgement was rendered, the court shall order the other party to disburse to the aforesaid party the necessary and justifiable litigation expenses, the attorney’s fees being understood thereunder. Destruction or other disposal of infringing goods and materials/implements for their production The Code of Civil Procedure does not regulate the disposal, or destruction, of goods and materials/implements for their production. The relevant measures are available within the specific laws regulating intellectual property relations and the Code of Administrative Violations. Any other remedies Apart from the requirements set forth in the acts regulating intellectual property, the party concerned may seek compensation for any damage suffered by him due to the defendant's actions only if he brings supporting evidences of the damage.]

[Answer 6: The Code of Civil Procedure does not authorise the judicial authorities to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the goods or services found to be infringing and of their channels of distribution.]

[Answer 7: Defendants wrongfully enjoined may rely upon the general legal grounds of indemnification. In case the defendant has suffered damages as a result of illegal activities of public authorities and/or officials in the course of their official duties, the damages will generally also be compensated according to the general regulations on indemnification and the Administrative Code.]

[Answer 8: According to Article 59 of the Civil Procedure Code, the courts dispose of the legal proceedings within two months after their receipt; if the case is especially difficult, within five months. According to the Civil Procedure Code the expenses of the proceedings involve the expenses of the proceedings and the expenses not related to the court. The expenses of the proceedings include the State duty (that shall not exceed 5000 Lari) and fees payable to witnesses, specialists, experts, interpreters, as well as the expenses carried by the State Treasury for examination on the spot, for search of the defendant, for judgment enforcement. The expenses not related to the court are the fees payable to the lawyer, expenses made for production of evidences and other expenses.]

(a) Judicial measures

Under Chapter XIV (Production of Evidences) of the Civil Procedural Code of Georgia: “The person which has reasonable grounds to think that further submission of evidence necessary for him shall become impossible or difficult may request the court to produce these evidences. Production of evidences is permitted before bringing an action before court” (Article 109). Production of evidence before bringing the action before the court is conducted by a judge of that district or region, under the jurisdiction of which the procedural action for production of evidence must be taken (Article 110). Appeal against the judgement of the court on production of evidences is not allowed. The negative judgement on production of evidence may be appealed against (Article 119). According to the provisions of Chapter XXIII (Securing Evidence): “An applicant may apply to the court with a request on provisional measures. The request must contain the circumstances due to which the provisional measures not taken may make difficult or impossible the enforcement of the judgement, as well as the indication of the provisional measures considered by the applicant as necessary” (Article 191). Under Article 192: “In the case which must not be delayed, the request on provision of suit may be submitted before bringing the action at the court”. In such a case, on the basis of a request by the defendant, the court shall determine a reasonable period during which, if the applicant does not initiate the suit, the court shall revoke the adopted provisional measures on the basis of the defendant's request. The period mentioned under the Law of Georgia on Border Measures Relating to Intellectual Property is 14 calendar days. The application of provisional measures shall be considered by the court on the day of the submission of the application without notification to the defendant, i.e. respecting the principle inaudita altera parte (Article 193). Article 194 ensures the defendant's right to appeal against the adopted provisional measures within 5 days after the receipt of the notice. Article 198 provides for provisional measures, among them arrest of defendant’s property, securities and money resources; prohibition of certain actions to the defendant. Under the Article 199 “The court is authorised to order the applicant to provide the defendant appropriate compensation for any expected injury”. As court practice shows, such provision may be the deposit by the applicant of money or other securities to the third party payment account, loan, bank or financial guarantees, etc.

Both the measure of production of evidences and the measure of securing evidence can be ordered inaudita altera parte. The defendant and other parties to the litigation shall not be notified of the review of an application of securing an action.

Under Article 199 of the Civil Procedural Code of Georgia “The court is authorised to order the applicant to provide the defendant appropriate compensation for any expected injury”. As court practice shows, such provision may be the deposit by the applicant of money or other securities to the third party payment account, loan, bank or financial guarantees, etc. Article 194 ensures the defendant's right to appeal against the adopted provisional measures within 5 days after the receipt of the notice. In such a case on the basis of a request by the defendant, the court shall determine a reasonable period during which, if the applicant does not initiate the suit, the court shall revoke the adopted provisional measures on the basis of the defendant's request. The period mentioned under the Law of Georgia on Border Measures Relating to Intellectual Property is 14 calendar days.

The court shall review the application of securing an evidence on the day of application. There are no specific data available concerning the actual duration of proceedings and cost of the enforcement of provisional measures.

(b) Administrative measures

see the reply to Questions 10 - 13 above

[Answer 10: Under Chapter XIV (Production of Evidences) of the Civil Procedural Code of Georgia: “The person which has reasonable grounds to think that further submission of evidence necessary for him shall become impossible or difficult may request the court to produce these evidences. Production of evidences is permitted before bringing an action before court” (Article 109). Production of evidence before bringing the action before the court is conducted by a judge of that district or region, under the jurisdiction of which the procedural action for production of evidence must be taken (Article 110). Appeal against the judgement of the court on production of evidences is not allowed. The negative judgement on production of evidence may be appealed against (Article 119). According to the provisions of Chapter XXIII (Securing Evidence): “An applicant may apply to the court with a request on provisional measures. The request must contain the circumstances due to which the provisional measures not taken may make difficult or impossible the enforcement of the judgement, as well as the indication of the provisional measures considered by the applicant as necessary” (Article 191). Under Article 192: “In the case which must not be delayed, the request on provision of suit may be submitted before bringing the action at the court”. In such a case, on the basis of a request by the defendant, the court shall determine a reasonable period during which, if the applicant does not initiate the suit, the court shall revoke the adopted provisional measures on the basis of the defendant's request. The period mentioned under the Law of Georgia on Border Measures Relating to Intellectual Property is 14 calendar days. The application of provisional measures shall be considered by the court on the day of the submission of the application without notification to the defendant, i.e. respecting the principle inaudita altera parte (Article 193). Article 194 ensures the defendant's right to appeal against the adopted provisional measures within 5 days after the receipt of the notice. Article 198 provides for provisional measures, among them arrest of defendant’s property, securities and money resources; prohibition of certain actions to the defendant. Under the Article 199 “The court is authorised to order the applicant to provide the defendant appropriate compensation for any expected injury”. As court practice shows, such provision may be the deposit by the applicant of money or other securities to the third party payment account, loan, bank or financial guarantees, etc.]

[Answer 11: Both the measure of production of evidences and the measure of securing evidence can be ordered inaudita altera parte. The defendant and other parties to the litigation shall not be notified of the review of an application of securing an action.]

[Answer 12: Under Article 199 of the Civil Procedural Code of Georgia “The court is authorised to order the applicant to provide the defendant appropriate compensation for any expected injury”. As court practice shows, such provision may be the deposit by the applicant of money or other securities to the third party payment account, loan, bank or financial guarantees, etc. Article 194 ensures the defendant's right to appeal against the adopted provisional measures within 5 days after the receipt of the notice. In such a case on the basis of a request by the defendant, the court shall determine a reasonable period during which, if the applicant does not initiate the suit, the court shall revoke the adopted provisional measures on the basis of the defendant's request. The period mentioned under the Law of Georgia on Border Measures Relating to Intellectual Property is 14 calendar days.]

[Answer 13: The court shall review the application of securing an evidence on the day of application. There are no specific data available concerning the actual duration of proceedings and cost of the enforcement of provisional measures.]

It is possible to apply for suspension of goods which infringe the right holder's rights in trademark, in appellation of origin, in geographical indication and copyright (pirated goods). The procedures involve importation and exportation. The border measures shall not apply to small quantities of goods of a non-commercial nature contained in traveller’s luggage or sent in small containers (de minimis imports). The procedures do not apply to imports of goods put on the market in another country by or with the consent of the right holder.

Special requirements of the Agreement on Trade-Related Aspects of Intellectual Property Rights related to border measures are set forth in the Law on Intellectual Property Related Border Measures. To enable a right holder to protect his/her rights at the border of Georgia on the basis of the Law of Georgia on Border Measures Related to Intellectual Property, he/she must follow the following procedures: - In the case of existence of valid grounds, he/she may lodge an application with the court and demand the suspension of import or export of the infringing goods. The application must comply with the requirements of Article 4 of the Law of Georgia on Border Measures Related to the Intellectual Property. - Within three days from lodging the application the parties concerned shall be furnished with the copies of the court judgement on the suspension of the counterfeit goods or on taking relevant measures in respect thereof, defining the terms for such measures. The court judgement shall be presented to the customs authorities for enforcement. - If within 14 days from taking the judgement by the Court the right holder fails to sue at the Court, the suspended goods shall be released. - If after inspection of the goods it is revealed that the goods are counterfeit, which was supported by the court at considering the case, the customs authorities shall inform the right holder of the names and addresses of the consignor, importer, exporter and the consignee, and the quantity of the goods in question; on the basis of which the right holder may by means of the court demand the mentioned persons compensation of damages, whereas, by procedure legislation of Georgia at such process the fact of counterfeit goods importation (export) does not need any justification, as this shall be determined by earlier decision of the court. Proceeding from the above mentioned we can conclude that in respect to the legislation of Georgia the authorised body taking the judgement is the court and customs authorities enforce its judgement.

If within 14 days from taking the judgement by the Court the right holder fails to sue at the Court, the suspended goods shall be released. If the action is brought in time before the court, the legal proceedings shall be held within general time limits prescribed under the Civil Procedure Code. The right holder shall cover the expenses related to the suspension of the goods.

Legislation of Georgia does not provide for ex officio action of the customs authorities.

If the court takes a decision in favour of the right holder, the Customs Department shall take a decision on the destruction or disposal of the suspended goods.

The protection of intellectual property rights is subject to the ordinary jurisdiction. The court system shall consist of: - district (city) courts: - regional courts; - the Supreme Courts.

Articles 189 and 196 of the Criminal Code of Georgia state that: "Article 189 1. Misappropriation of authorship on copyright or neighbouring rights form, on invention, utility model, industrial design, selection achievement, topography of integrated circuit - shall be punishable by penalties or correction labour for two years term. 2. Unlawful use of other person’s copyright or neighbouring rights form, invention, utility model, industrial design, selection achievement, topography of integrated circuit for the commercial purpose or forcing on co-authorship – shall be punishable by penalties or detention for two years. 3. The action defined in paragraphs 1 and 2 of this Article: a) committed repeatedly; b) that caused significant damage, - shall be punishable by detention for three years or imprisonment for the same term." "Article 196 1. Unlawful use of other persons' trade (service) mark, appellation of origin or geographical indication or trade name, which caused significant damage, - shall be punishable by penalties or correction labour for two years term. 2. False indication of warning notice together with unregistered trade (service) mark, appellation of origin or geographical indication of goods,- is punished with penalties of the works useful for public from one hundred and twenty to one hundred and eighty hours and/or correction labour for a one year term. 3. The actions defined in paragraphs 1 and 2 of this Article committed repeatedly, - shall be punishable by detention for three years, or imprisonment for four months, or confinement for three years term and/or penalties." Here it must be remarked that right holders participate in the criminal procedure as injured persons and have the procedural ability to determine the amount of damages suffered by the infringement and present the infringer property claims. Thus, the court defined the amount of fines by taking into consideration concrete circumstances, among them suffered damages.

Criminal proceedings may be initiated on the basis of the application lodged by the right holder (or his representative).

Yes they do. Private persons (or their representatives) may apply to the enforcement agencies in the written form.

See the reply to question 21 above.

[Answer 21: Articles 189 and 196 of the Criminal Code of Georgia state that: "Article 189 1. Misappropriation of authorship on copyright or neighbouring rights form, on invention, utility model, industrial design, selection achievement, topography of integrated circuit - shall be punishable by penalties or correction labour for two years term. 2. Unlawful use of other person’s copyright or neighbouring rights form, invention, utility model, industrial design, selection achievement, topography of integrated circuit for the commercial purpose or forcing on co-authorship – shall be punishable by penalties or detention for two years. 3. The action defined in paragraphs 1 and 2 of this Article: a) committed repeatedly; b) that caused significant damage, - shall be punishable by detention for three years or imprisonment for the same term." "Article 196 1. Unlawful use of other persons' trade (service) mark, appellation of origin or geographical indication or trade name, which caused significant damage, - shall be punishable by penalties or correction labour for two years term. 2. False indication of warning notice together with unregistered trade (service) mark, appellation of origin or geographical indication of goods,- is punished with penalties of the works useful for public from one hundred and twenty to one hundred and eighty hours and/or correction labour for a one year term. 3. The actions defined in paragraphs 1 and 2 of this Article committed repeatedly, - shall be punishable by detention for three years, or imprisonment for four months, or confinement for three years term and/or penalties." Here it must be remarked that right holders participate in the criminal procedure as injured persons and have the procedural ability to determine the amount of damages suffered by the infringement and present the infringer property claims. Thus, the court defined the amount of fines by taking into consideration concrete circumstances, among them suffered damages.]

The Criminal Procedure Code prescribes terms for certain proceedings, such as pre-trial investigation (9 months), trial investigation (12 months for first instance). In the case where an accused does not appear, the court must suspend the hearing. The costs of proceedings involve: (1) fees for witnesses, victims, experts, specialists, interpreters; (2) lawyers' fees for compulsory defence; and (4) other costs.