Trademark Rights

By: Jahanbaksh Nouraei( Esq. )
Barrister and Solicitor
This is copyrighted material. Permission for use is granted, provided that the names of the author and domain are mentioned

January 2007 - Iranian law regarding intellectual property recognizes the exclusive right of the use of a trademark only for the person who has registered the mark. The point is clear: if you, whether as a national or a foreigner, wish to have legal protection in the Iranian market and safeguard your firm's name, the registration of your trademark is a must. It helps to prevent the fraudulent marketing of your products or services. Let us now go into the details to see how trademark rights are acquired in the Islamic Republic of Iran.

How is a trademark defined according to Iranian law?
The Law of Registration of Marks and Patents, approved in June 1931, with subsequent amendments stipulates that a trademark is any type of logo, design, picture, number, letter, word, seal, wrapper, etc., adopted to identify and distinguish goods and services.

What forms of trademarks can be registered?
Various types of marks which are chosen for identifying industrial, commercial and agricultural products and goods can be registered. Service marks can also be registered. The essential requirement is that the mark presented for registration should be distinctive.

Are there any marks that can not be registered?
Yes, there are. Article 4 of the Law of Registration of Marks and Patents states that none of the following marks can be registered in Iran:
1- The official flag of the Islamic Republic of Iran; any flag that the government has prohibited to be used as a trademark; in addition to badges, medals and insignia of the Iranian government.
2- The marks of official institutions such as the Iranian Red Crescent, the International Committee of the Red Cross, etc.
3- Words and/or phrases creating an impression of official connection with Iranian authorities.
4- Marks contrary to public order and good morals. Registration of marks for wines, spirits, liqueurs, beer and all other alcoholic beverages are banned due to the religious prohibitions of Islam.
5- Marks which have been registered under the name of another person (whether a natural or legal entity) or a mark which so closely resembles an already registered mark that it would cause confusion or deceive ordinary consumers.

Who may apply for the registration of a trademark?
All Iranian or foreign nationals who are engaged in economic, commercial and service activities in the Islamic Republic of Iran can apply to register their marks. Persons who have enterprises outside Iran, can also benefit from the law and register their marks provided the country to which the enterprise belongs, reciprocates the protection of Iranian trademarks by virtue of its domestic regulations or bilateral conventions.

Under what classifications are trademarks registered?
Iran has adopted the eighth edition of the international classification system known as the Nice Agreement. It is a 45-class list. The applicant is required to specify the category of goods or services under which he wishes to register his trademark. There are 45 such classifications for various products. Classes 35 to 45 are for services. A trademark shall be registered only in respect of particular goods or services in particular classes.

Is the registration of trademarks compulsory in Iran?
Generally speaking, the registration of trademarks in the Islamic Republic of Iran is optional. But, according to a specially devised act, pharmaceutical products used in medicine or veterinary practice, canned or packaged foodstuffs, beverages, and cosmetics, whether produced in Iran or imported, must bear a registered trademark. Samples and products imported for personal consumption are excluded from this regulation.

Where is the application for registration filed?
Applicants desiring to register a trademark should refer in person or through legal counsel, to the Registration Office for Industrial Property, located in the city of Tehran, and file their request for obtaining a certificate of trademark registration. Applications are published in the Official Gazette; so that interested parties may inspect and, if need be, contest them. The applications are examined for format, content, and consistency in compliance with the relevant rules of registration. If the registrar rejects an application, the applicant may appeal to the court.

In which cases is the registrar allowed to reject an application?
According to Article 9 of the Law, the registrar is authorized to reject the application if he realizes that:
1- The mark is contrary to the provisions of the law.
2- The mark has already been registered under the name of another person, or it is so close in appearance, pronunciation, or written form to the registered trademark, that it might deceive ordinary consumers.

Who may oppose the registration of a trademark?
Any trademark, whether already registered or being presented for the same purpose may be contested by the person who claims that it belongs to him, or that the resemblance is so close that it may mislead the ordinary consumer.

Which authority is empowered to consider trademark complaints?
Any opposition to the registration of a trademark on the grounds of prior use or close resemblance, and/or claims relating to the infringement of a registered trademark may be filed with the General Courts of Tehran. The right to contest a trademark is in force for a period of three years starting from the actual date of its registration. After the lapse of this specific period of time, the registered mark becomes incontestable.

For how long is a registered trademark valid?
As stated in Article 14 of the Law, a trademark's registration will be effective for a period of ten years from the date of filing the application form and may be renewed by the owner for similar periods.

Can a trademark be changed or modified?
The proprietor of a trademark has the legal right to change the mark itself or the classification it refers to. However, in order to guarantee continued legal protection, such changes and modifications should be formally registered.

Is the assignment and licensing of trademarks foreseen in the Law of Registration of Marks and Patents?
Trademarks may be transferred either voluntarily by assignment, or involuntarily by death, bankruptcy or liquidation. The owner of the trademark can let other persons use it through licensing. For taking legal effect, the assignment and licensing of the trademark should be registered and recorded at the Registration Office for Industrial Property.
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What legal effects and rights does the registration of a trademark bring into force?
The registration of a trademark gives the owner of the mark the exclusive right to its use in relation to the goods and services for which it is registered. The proprietor is entitled to take civil actions and/or lodge complaints involving legal penalties to prevent third parties from infringing his right of ownership. Severe punishment is foreseen in the penal code of Iran for infringers of trademarks. Remedies may include damages, costs, injunctions preventing further violations and confiscations of the products illegally using or closely imitating the trademarks belonging to other persons.

Is Iran a party to the international agreements protecting the rights of intellectual property?
The Islamic Republic of Iran is a member of the International Convention for Protection of Industrial Property (also known as the Paris Convention).
Parties to this agreement undertake to grant each other's nationals trademark and patent rights identical to those of their own nationals. Under the terms of the convention, if a foreign national makes an application for a trademark in his own country and within six months makes a similar application in another convention signatory country (as an example, Iran), the filing date shall be considered the same as that of the original application. This right of priority, in addition to the equality of treatment, is one of the primary benefits of the Paris Convention.Furthermore, in December 2003 Iran became a party to the Madrid Agreement and the Madrid Protocol for the international registration of marks. The system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office.