Trademark protection in Iran

The protection of trademarks in the Islamic Republic of Iran è is guaranteed by domestic legislation and the country’s membership in major international conventions in the field.

Iran protects trademarks understood in both individual and collective forms, in the dual profile of figurative and verbal trademarks. È it is of crucial importance that the Italian entrepreneur who exports his products to Iran, registers his trademark in the country in advance. Ownership in Iran of a trademark, in fact, implies a whole series of rights, first of which is the right to apply for and obtain licenses for the importation of foreign products: only the company that owns the trademark-or its local agent with the appropriate powers-are the entities entitled to apply for the aforementioned licenses at the Iranian Ministry of Trade and Industry.

Registration of a trademark in Iran can be done through two different ways: through the so-called “national filing” or through the so-called “international filing”, the benefits and modalities of which are summarized below.

Registration of a trademark in Iran through national filing

The protection of trademarks in the country è is governed by the “Law on the Registration of Patents, Industrial Designs and Trademarks1”. The Italian entrepreneur can apply, through his attorney, for the registration of his trademark directly with the Iranian Industrial Property Office, accompanying his application with the reproduction of the trademark and the indication of the reference classes, according to the Nice Convention. In this regard, è it is highly inadvisable to entrust the performance of such fulfillments to one’s local agents or distributors who, if in bad faith, could qualify as the owner of the trademark at the time of filing, illegitimately acquiring ownership of it.

Generally, there are no limitations for registering foreign trademarks, unless one of the following conditions is met:

• the trademarks are contrary to Shari’a (Islamic Law), public order or morality;
.
• generate confusion with other trademarks;
.
• are similar to other trademarks already registered in Iran;
.
• are likely to confuse the public as to the origin, nature or characteristics of a product;
• contain symbols or emblems referable to a state or other international organizations;
.

Iranian Law also protects the so-called notorious trademark, which is that trademark which, although not registered, è is so widespread in the market that it is associated by consumers with a particular product. With reference to the notorious trademark, the law provides for the prohibition of registering trademarks that are identical or similar to it, whether they refer to goods/services that are identical or similar to those to which the notorious trademark is attached, or to different products: in the latter case, the prohibition operates as long as the registration of the trademark would be detrimental to the owner of the notorious trademark.

In procedural terms, national trademark filing is completed with the following procedure.

After submission to the Trademark Office, the application is examined within 3-4 months. Once it has been verified as admissible, the Office gives’place to the publication of the application in the Official Trademark Gazette. From this moment, within the period of 30 days, those interested in the registration may make an’opposition to it. In the event that such opposition takes place, the applicant è be allowed a right of reply within the period of 20 days. After the aforementioned time limits have expired, the proceedings shall be considered concluded and, on the basis of the application and any opposition or reply, the Trademark Office shall proceed or not proceed with the registration.

The foreign trademark registered through the so-called national filing has an’efficacy in the country equal to that of any other registered Iranian trademark. Registration is valid for 10 years and is renewable.

The registration is valid for 10 years and is renewable.

Registration of a trademark in Iran through international filing

As of December 25, 2003, the Islamic Republic of Iran è became a contracting party to the Madrid Agreement and the Madrid Protocol, thus adhering in all respects to the so-called Madrid System. The Madrid System provides that the filing of trademarks in one of the member states of the Madrid System may, under certain conditions, be fully effective in the other states as well.

In the present case, in order to register an Italian trademark in Iran through the System procedure, è it is necessary to have filed the trademark with any Italian Chamber of Commerce or with the Intellectual Property Office of the’European Union;European Union and apply - jointly or even subsequently - for the extension of the registration in Iran, through the World Intellectual Property Organization Office (i.e. WIPO), which will consequently register the trademark in the country as well.

This procedure, although it has the advantage of being able to be initiated directly from Italy, is particularly cumbersome in terms of time: in fact, the transmission of the application for registration to the Iranian Trademark Office and its analysis can take 2 to 3 years.

It should also be noted that, once the registration in Iran is completed through international filing, the trademark will not appear in the local Intellectual Property database anyway: in fact, it is necessary for the registration holder, with a subsequent application, to initiate the so-called “confirmation” procedure, which consists of a request for recognition of the international registration at the local trademark office. This application is followed by the issuance of a certificate.

In conclusion, we would like to emphasize that in order to best ensure the protection of one's trademark in the country and, in case of infringements, in order to benefit to the fullest from the sanctioning system provided by the’Domestic Ordinance2, è it is strongly advisable to proceed with the filing of the trademark directly in Iran through the so-called national filing, described in the first paragraph.

1 The law è entered into force on February 12, 2008 and è was made enforceable by the January 21, 2009 regulation of the’State Organization for Registration of Documents and Propertiesà;
2 In the R.I. of’Iran there are severe penalties for intellectual property infringement, punishing the offender with a fine of Rial 10,000,000 to Rial 50,000,000 and imprisonment from 91 days to 6 months.