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Definition of a Trademark
According to article 1 of the Iranian Trademark Law, a trademark is a sign of any description such as device, drawing, numeral, letter, phrase, seal, wrapper etc. adopted to distinguish industrial products, commercial commodities or agricultural produce. A trademark may be adopted to distinguish the products of a particular group of farmers, industry owners, or merchants, or the products of a town or a district of the country.
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Compulsory Registration
Pharmaceutical, medicinal, veterinary and toilet preparations, packaged foodstuffs and beverages must bear a registration number, a public health permit number and in case of pharmaceuticals, the name and address of the manufacturer and the country of origin.
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Non Registrable Trademarks
According to article 5 of the Trademark Registration Law, the below mentioned are not registerable:
– National flags of Iran or any other flag prohibited by the Iranian Government, Standards of Iran.
– Emblem of Crescent Moon.
– Decorations, medals and emblems of Iran.
– Portrait of the governmental representatives, words and expressions referring to the authorities of Iran.
– Marks contrary to public order or morals.
In addition to the above, since the Islamic Revolution, all trademarks in class 33 and “beer, ale and porter” in class 32 are prohibited for registration and renewal. |
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Requirements for Filing
– Full name and address of applicant(s).
– Power of attorney duly legalized up to the Iranian Consulate. A single power of attorney is sufficient for all trademarks applied for in the name of the same applicant.
– Details of the trademark together with 24 specimens thereof.
– Specifications of goods and classes (according to the 10th edition of Nice classification).
– If priority rights are to be claimed, a certified copy of application or registration is required. |
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Applicants
The first user of a trademark, be it a firm, or a person, a corporation or the state. Foreigners and non-residents have to be represented by an authorized attorney. |
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Classification
As Iran acceded to WIPO, the Nice classification will be adopted. Although a new legislation has not been passed in the Iranian Parliament as regards class 33 (alcoholic beverages), the Registration Office prompted by the need to observe Islamic principles, refrains from accepting new trademark applications and rejects renewal applications for trademarks already registered in class 33. |
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Validity of Registration
Ten years from filing date, renewable thereafter for like periods. A six months period of grace is granted for late renewals, without any fine, after which it will definitely lapse. |
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Use of Trademark
An applicant does not have to use his trademark at the time of filing the application, but a trademark registered in Iran should be used, within three years from the date of registration, either in Iran or abroad. Any interested party may request the court to cancel a registered trademark, if not used on a commercial scale either in Iran or abroad within three years from registration. The use should be made by the registered owner, no parent, daughter or sister company use would be equal to user by the Registrant, unless a licence agreement is recorded at the Iranian Trademark Office. When the use is made by anyone other than the registered owner, the licence of use must be recorded with the Trademark Office. |
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Renewal
If our office was not responsible for the filing of the previous renewals, a simple recto verso copy of the registration certificate is required. If the trademark has already been renewed, a copy of the last renewal certificate will be necessary. The period for the renewal of a trademark is maximum 6 months before the expiry date of ten years. The application for renewal cannot be filed before this period in the Registration Office. If no application for renewal is filed within this period, a six month grace period to renew the trademark, is granted from the renewal due date with a fine. |
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Changes
According to the Iranian Trademark and Patent Law, all changes brought about in a trademark previously registered must be recorded in the Iranian Registration Office. Therefore, the change of name , address, status of the proprietor, or an assignment should be recorded in the Iranian Trademark and Patent Office.
Change of Name
Change of Address
Merger
Change of Legal Status
Assignment
Duplicate of Registration/Renewal Certificate
License
Addition/ Deletion of Class(es)
Substitution (replacement of the national trademark by international registered trademark in Iran)
Alteration of Trademark
Cancellation
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Late Filing of Documents
A six-month respite is granted to foreign applicants to complete their documents |
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Rejection by Registration Office
After submitting the application with all the required documents to the Registration Office, within a period of approximately one month, the Registrar will either accept the application and the registration procedure will start or he will reject it with an official notification to the applicant or his legal representative. The applicant has the right within 60 days from the date of notification, to contest the Registrar’s decision by filing a response with the Special Commission. In such a case, the registration procedure or the nullification of the application depends on the Special Commission’s decision. If the Commission’s decision is in our favor. We arrange for the first publication in the Iranian Official Gazette. If there is no third party opposition within 30 days from the advertisement is published, then the trademark will be registered in Iran. In contrary, we may file a petition with the court against the Commission’s decision. |
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Administrative Opposition
Anybody who considers that a trademark covered by an application is confusingly similar to his own mark may, within 30 days after the date of publication of the application in the Iranian Official Gazette, lodge an opposition with the Iranian Registration Office. Such opposition should be notified to the applicant, who within 20 days (for Iranian applicants) or 40 days (for foreign applicants) from the date of notification may surrender to it and withdraw his application, or contest the same.In the meantime, our opposition will be notified to the applicant who should file an answer within 20 days (for Iranian applicants) or 40 days (for foreign applicants) from notification date, either contesting it or submitting thereto. In case the applicant does not file a response, it will be considered as his submission to our opposition. In the event our opposition is contested, you may raise the matter in a special
Commission in the Iranian Registration Office within the specified period, failing which the
contested application will issue to registration at the expiry of the subject period.
If the opposer’s mark is not registered in Iran, an application should be filed for its registration at the time the opposition is lodged.For filing an opposition we need:
- A document regarding identity/registration of the company (full name, address, the company registration number, field of activity and legal form of the applicant(s) must be mentioned in the said document). This document must be legalized up to the Iranian Consulate.
- It is mandatory to have a valid Power of attorney duly notarized and legalized up to the Iranian Consulate in hand.
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Legal Actions
In Iran, in the field of Industrial Property two kinds of judicial actions can be taken Penal Action
Civil Action |
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Legal Action for Defending Trademarks
An applicant does not have to use his trademark at the time of filing the application, but a trademark registered in Iran should be used, within three years from the date of registration, either in Iran or abroad. Any interested party may request the court to cancel a registered trademark, if not used on a commercial scale either in Iran or abroad within three years from registration. The use should be made by the registered owner, no parent, daughter or sister company use would be equal to user by the Registrant, unless a licence agreement is recorded at the Iranian Trademark Office. When the use is made by anyone other than the registered owner, the licence of use must be recorded with the Trademark Office. |
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Penal Action
Penal action can be taken with respect to infringement of a trademark or unfair competition. Like all penal actions it can be introduced by a complaint.
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Civil Action
Civil action can be taken against the applicant filing a trademark similar to a previously registered trademark. This similarity of trademarks may be in terms of outer appearances, or pronunciation, or writing or in any other way misleading the ordinary consumer. The appreciation of the similarities belongs to the Ruling Judge. In recent years, contrary to the law, the appreciation of the said similarities is sometimes referred to an expert by the Judge. Civil procedures are introduced by action of cancellation of similar, illicit or fraudulous trademark. This action begins with filing a petition with the relevant court.
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| Search
We have to inform you that search in the files of the Iranian Registration Office not being authorized, we can conduct word mark searches in our files the results of which can’t be 100% accurate. Further please be informed that we are not able to conduct searches for device marks. The results of our search will be forwarded to your attention within 2-3 working days from the date we receive your instruction.
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