By: Jahanbaksh Nouraei (Esq.)
Barrister and Solicitor
This is copyrighted material. Permission for use is granted, provided that the names of the author and publisher are mentioned.
January 2016– Regarding intellectual property, Iranian law 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 and logo, 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 come into force and are protected in the Islamic Republic of Iran. Iran’s “Law of Registration of Marks and Patents” was first ratified in 1931. The Parliament of the Islamic Republic of Iran passed new legislation in this regard namely “The Law of Registration of Patents, Industrial Designs and Trademarks” in January 2008, replacing the former one. The implementing regulations of the Law were prepared and came into force on 20 January 2009.
How is a trademark defined according to Iranian law?
Marks, Collective Marks and Trade Names are dealt with in Section 3 of the law. In accordance with Article 30, a mark is a visible sign which can distinguish the goods or services of natural or juridical persons from each other. A collective mark is a visible sign which can be used by a number of natural or juridical persons under the supervision of the owner of the registered collective mark for distinguishing the origin or other features such as the quality of the goods and services. A trade name is the name or title which introduces and distinguishes the natural or juridical person.
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 cannot be registered?
Yes, there are. Article 32 of the Law states that none of the following marks can be registered in Iran:
1- If it cannot distinguish the goods and services of a firm from the goods and services of another firm.
2- If it is contrary to religious decrees, public order or good morals.
3- If it misleads trade and public organs, especially with respect to the geographical origin of the goods and services or their features.
4- If it is the same as or an imitation of a military badge, flag, or other national sign or name or abbreviation or the first letter of an official name or sign belonging to the country, intergovernmental organizations or the organizations established under international conventions, or where the aforesaid constitutes a part of the mark, unless the permit for use has been issued by the competent authority of the related country or the respective organization.
5- If it is the same or misleadingly similar to or the translation of a mark or trade name which is known for the same goods or similar services belonging to another firm in Iran.
6- It is the same or similar to a mark which has already been registered and become known for dissimilar services, provided that customarily there is a relationship between the user and owner of the known mark and its registration infringes the interests of the owner of the former mark.
7- It is the same mark already registered in the name of another owner or the date of application of the mark has been previously done or already has priority for the same goods and services and or for goods and services which due to the similarity with the former mark may deceive and mislead.
Are the trademarks registered under the stipulation of former laws still valid?
Yes they are. Article 65 of the law states that all the trademarks already registered in accordance with the former regulations are still valid and protected by law.
Who may apply for the registration of a trademark?
All Iranian or foreign nationals who are engaged in economic, commercial and service activities can apply to register their marks. People who have enterprises outside Iran can also benefit from the law and register their marks through an Iran-based lawyer.
Under what classifications are trademarks registered?
Registrations are made under the latest versions of the current international classifications.
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 Industrial Property General Office, located in the city of Tehran, and file their request for obtaining a certificate of trademark registration. The filing process is basically electronic and online. 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.
Who is the sole owner of the mark?
Article 31 states the exclusive right of using the mark belongs to the person who has registered it.
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.
In light of Articles 37 and 41 of the law, any beneficiary can contest a mark during registration by filing a protest with the Industrial Property General Office or refer to the court for abrogation of the registered mark.
For how long is a registered trademark valid?
A trademark’s registration will be effective for a period of 10 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 submitted and registered.
Is the assignment and licensing of trademarks foreseen in the law?
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 Industrial Property General Office.
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 action and/or lodge complaints involving legal penalties to prevent third parties from infringing his right of ownership. Any person who intentionally violates the rights accruing from registration of inventions, industrial designs and marks shall be subject to civil action for compensation of damages and /or prosecution. Article 61 of the law has set a cash penalty ranging from 10,000,000 Rls. to 50,000,000 Rls. or imprisonment from 91 days to six months for the infringers. The damages should be also redressed.
Is Iran a party to the international agreements protecting the rights of intellectual property?
Iran is a member of the International Convention for Protection of Industrial Property (also known as the Paris Convention). In December 2003 Iran became a party to the Madrid Agreement and the Madrid Protocol for the international registration of marks.
In 2004, Iran became signatory to the Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration, signed on 31 October 1958. The Agreement stipulates that appellations of origin receive protection in the member countries if they are protected in their country of origin.
For replying to the questions which may be raised with respect to the intellectual property conventions in light of the Iranian national law, Article 62 states that “in the event of contradiction between the purport of this law with the stipulations of the international treaties on industrial property to which the government of the Islamic Republic of Iran has joined, the stipulations of the said conventions shall prevail”.
Is there any other mark-related law in Iran?
On 26 February 2005 Iranian parliament passed the Law of Protection of Geographical Indications for registration and safeguarding the marks indicating the Iranian geographical origins of famous goods. Such indications and signs can be registered in Iran according to the said law, and their registration abroad could be also possible in light of the related stipulation of the Paris Convention and Madrid Agreement to which Iran is a signatory.
The Foreign Promotion and Protection Act of 2002 recognizes patent rights, technical know-how, trade names and trademarks as foreign capital. Equivalent recognition is also foreseen in some of the bilateral agreements on trade and investment that Iran has concluded with a number of states.