Report on the Iranian Intellectual Property Law: Protection of Trademarks
The legal basis of the trademark protection in Iran is the new Intellectual Property Law “Iran Patents, Industrial Designs and Trademarks Registration Act”, in force since May 2008 and the respective executive By-Laws. In addition, Iran is a contracting party to the Paris Convention, Madrid Agreement and the Madrid Protocol and adopted the related rules and regulations.
The legal basis of the trademark protection in Iran is the new Intellectual Property Law “Iran Patents, Industrial Designs and Trademarks Registration Act”, in force since May 2008 and the respective executive By-Laws. In addition, Iran is a contracting party to the Paris Convention, Madrid Agreement and the Madrid Protocol and adopted the related rules and regulations.
In Iran, trademark protection is obtained by registration either nationally before Intellectual Property Office of Iran or internationally via Madrid System.
Iran has adopted the 10th edition of the Nice Classification and the goods and services should be selected from a pre-defined list of goods and services available in the electronic data base of the Intellectual Property Office which is mostly in line with the list of goods and services of the 10th edition of the Nice Classification. Applicants may apply for goods and services other than those listed by the Intellectual Property Office if they receive a confirmation of the Head of the Trademark Registration Office which is a division of the Intellectual Property Office.
According to the article 30(A) of the Iran Patents, Industrial Designs and Trademarks Registration Act “Mark means any perceptible marking which can distinguish goods or services of natural or legal persons”. This definition only covers the perceptible marks; therefore, the intangible marks such as sound and smell are not registrable in Iran. Registrable trademarks are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, holograms, colours, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs. The following trademark types are registrable: trademarks, service marks, certification marks, trade names and titles of establishment. Device and figures of women and words that are considered as contrary to good morals and public order are not registrable.
Registered Trademarks are valid for 10 years and can be renewed for successive 10-year periods. The grace period for renewals is 6 months from the expiration date of the trademark subject to the payment of delay penalty equivalent to 50% of the renewal fee. Once lapsed the trademark cannot be restored. It would be possible to file a new application for the mark.
In Iran, “use” is not required for trademark registration. However, if a registered mark is not put into use within three years from its registration date, the registration will become vulnerable to cancellation action on the grounds of non-use by interested third parties. The trademark owner has to submit the evidence of use in court and the claimant is required to prove a legitimate interest in the cancellation of a trademark. Partial cancellation of a trademark based on non-use is available in Iran. Use of a trademark is required to be established in Iran and the use of the trademark outside the territory of Iran would not be sufficient. There are no provisions in the Iranian Trademark Law as to the manner of use of a registered trademark. Use can be proven by means of products, photographs of products or product packages bearing the mark, labels, catalogues, price lists, invoices, advertisements, shipping documents related to the export/import of the products bearing the trademark etc.
Furthermore, it is also possible to bring cancellation action against a trademark which has been registered in bad faith with no time limit before a civil court. Criminal proceedings are also possible under the Iranian Law against the violation of a registered owner’s Intellectual Property rights.
Submitted by: Dr. Mahnaz Mehrinfar & Dr. Shahin Fadakar