Karimi & Associates law firm and Smart Invest Iran joint newsletter for June 2018 is published.
By enacting the “Patents, Industrial Designs, and Trademarks Registration Act of Islamic Republic of Iran”(PIDTRA ACT) in 2008 and acceding to the Madrid System (including the “Madrid Agreement Concerning the International Registration of Marks” and its related protocol) and the “Paris Convention for the Protection of Industrial Property”, Iran has attempted to create a favorable environment for trademark protection and adjust to international standards. Below we’ll briefly address some of the main questions likely to arise regarding trademark legal protections in Iran.
THE ABSOLUTE NECESSITY OF REGISTRATION
In order for a trademark to acquire protection in Iran, it must necessarily be registered. This is explicitly provided for in Article 31 of the PIDTRA Act, which states that:” The exclusive right to use a Mark shall belong to the person who registers his Mark in accordance with the provisions of this Act”.
While the same registration requirement exists for collective marks, i.e. signs capable of distinguishing the origin or other characteristics of certain goods or services, trade names, i.e. the names and designations identifying or distinguishing a natural person or legal entities are protected without the need for registration.
REQUIREMENTS FOR TRADEMARK REGISTRATION IN IRAN:
The registrability requirements of a trademark are fulfilled provided that the grounds for refusal do not exist. Divided in two categories of “absolute refusal grounds” and “ relative refusal grounds”, such grounds are as follows:
A.ABSOLUTE REFUSAL GROUNDS
• Non-Distinguishability: Marks devoid of the distinctive character such as generic marks or marks that merely describe the nature or qualities of goods or services cannot be registered in Iran.
• Non-Visibility: Registration is not available for non-visible marks such as sounds, olfactory, and flavor/taste trademarks, even if such marks are graphically presentable.
• Public order and morality: lacking any specific legal description, public order and morality have a blurry meaning under Iranian law. In practice, however, in examining whether a mark is against public order and morality, the authorities give special weight to the rules of Islam and Sharia, and Islamic culture.
• Misleading character: A mark likely to mislead the public, in particular regarding the geographical origin of the goods or services, their nature or characteristics cannot be registered in Iran.
B.RELATIVE REFUSAL GROUNDS
• Identicalness or similarity to well-known trademarks or trade names for the same/similar products: regardless of the registration of a well-known trademark or trade name in Iran, a mark cannot be registered if it is identical or confusingly similar to that well-known trademark or trade name and covers the same or similar products and services.
• Identicalness or similarity to well-known trademarks or trade names for dissimilar products:
Even if such a mark does not cover the same or similar products or services of a well-known trademark or name in Iran, as long as the well-known mark or name is registered, there is a connection between the use of the mark and the owner of the well-known mark and its registration is likely to damage the interests of the well-known mark owner, the registration shall be refused.
• Identicalness to previously registered marks: marks identical to previously registered marks not only cannot be registered for the same goods and services, but the prohibition exists also in respect of the goods or services that, due to resemblance or connection are likely to cause confusion or deception.
• Identicalness or imitation of official names or marks: There is no protection for marks Identical, imitating or containing flags, armorial bearings, names, initials, or official signs or hallmarks adopted by the state or intergovernmental organizations unless authorized by them.
The protection of a trademark against infringements, or abuse starts from the date of filing the registration application and subject to final approval, continues for a renewable period of ten years.
There are basically two main categories of criminal and civil sanctions for trademark infringement under Iranian law. While ceasing the infringement and request for damages is available regardless of the sanction sought, there are differences between the two.
A. Civil sanctions
A request for annulment of a trademark or an application for registration of trademark results in invalidating the concerned trademark/application as a purely civil sanction.
B. Criminal sanctions
• Criminal sanctions under PIDTRA: Subject to Abuse or infringement of the exclusive rights of a registered owner is criminalized under Iranian law. Infringement includes a wide range of activities such as registration or unauthorized use punishable by monetary fine, imprisonment, or both, provided that the infringing activity is carried out knowingly and intentionally.
• Criminal sanctions under the Islamic Penal Code: In certain circumstances, an infringement may also constitute a forgery, entailing a more severe punishment of up to 2 years of imprisonment.
C. Provisional Order
Before a final decision on merit is taken in either criminal or civil procedure, a request for a provisional order to stop the infringement and seize the products bearing the mark can be made by the competent court.
While a trademark may exceptionally be protected in Iran such as the case with well-known marks, registration is a prerequisite for protection against potential infringements. When filing a trademark application, regard is to be had to the registration requirements in order to minimize risks of refusal.
Protection against infringement could be enforced through criminal or civil sanctions. While the option to request for damages and provisional orders is available under both procedures, depending on specific circumstances, one might choose to file either a civil or criminal action. Before taking any action for registration or opening a lawsuit, it is strongly recommended to consult an IP lawyer.