CHAPTER 1) Registration of Trademarks
A trademark is any type or form of marking composed of drawing, picture, number, wording, seal, phrase, special wrapping, etc. which is chosen to distinguish or specify a particular product. A trademark may be chosen to distinguish or specify the product of a group of farmers, industrialists, commercial firms, a city or town or a region of the country.
NOTE: The right to have a trademark is optional unless the government declares it compulsory.
The right to use any certain trademark is recognized only for the person who has registered the trademark.
Iranian or foreign nationals in Iran with commercial, industrial or agricultural establishments who, have their trademarks registered under the provisions of the articles given herein under, shall benefit from all privileges of the law.
Persons with commercial, industrial or agricultural establishments abroad, may enjoy the privileges of the law under the following provisions: 1. Register their trademarks in Iran according to regulations.
2. The country in which their establishments are situated have treaty relations, or domestic laws, protecting Iranian trademarks.
None of the following markings may be used as a trademark in whole or in part of the trademark:
1. The state or any other flag, the use of which is unauthorized by the government of Iran, medals, decorations and arms of the Iranian government.
3. Phrases or words which may give the impression of a connection with official authorities of the state or government.
4. Insignias of official authorities such as the Red Cross, etc.
5. Signs which disturb public law and order or harm public morality.
Registration applicants must, personally or through an attorney, request the registration of their trademark from the special branch which has been established by the First Instance Court of Tehran for this purpose. The application must be made in a written statement which will be entered into a special book upon receipt by the special branch, and a receipt issued for same.
The officer in charge of the said branch (see article above) must decide whether to accept or refuse the application within fifteen days from the date of receipt of the application and other annexed documents.
If the application for registration is rejected, the reasons must be clearly stated. The applicant may file a petition before the First Instance Court of Tehran within ten days from the date of rejection of his application. The court's verdict is also subject to appeal to a higher (supreme) court.
If the application for registration of a trademark is approved by the officer in charge of the special branch, or if, after his rejection of the application, the application is upheld by a final court verdict, the Tehran Department of Deeds Registration will be required to register the trademark and issue an official registration certificate within 15 days of receipt of a copy of the approval, or court verdict.
The officer in charge of the special branch (ref. Article 6) may reject an application on the following grounds:
1. When the mark is contrary to the Law.
2. If the mark has already been registered in someone else's name, or if the resemblance between the mark under application and an already-registered mark is so great that ordinary members of the public, the consumer and persons without specialized knowledge, may be confused by it.
The registration of a trademark shall have the following data:
1. Date (day, month and year) of registration in words.
2. Name, profession, address and nationality of the owner of the trademark and his attorney (if the application has been made through an attorney).
3. Name and description of goods or the category of goods for which the mark has been registered.
4. A brief description of the trademark, with specific reference to the parts which the owner wishes to reserve for his own use exclusively; and
5. The registration fee charged.
Any change in the trademark, or the goods covered by such trademarks, must also be registered in accordance with the law, otherwise the changes will not be subject to the protection of the law.
A trademark may be assigned or transferred, but such a transfer or assignment to a third party will be legal only when it is registered in accordance with the law.
The registration of a trademark or changes thereof, will be published in the Official Gazette of the Ministry of Justice within fifteen days from the date of registration by the Tehran Deeds Restration Department but at the expense of the applicant.
Registered trademarks will enjoy protection from the date of submission of the original application. The validity period of registration of a trademark is ten years, after which period the owner may apply for a further period of ten years.
The registration fee charged for the registration of trademarks can be obtained from HAMI Legal Services.
The following persons may object to a trademark for the registration of which an application has been submitted:
1. Persons who consider the trademark to be their own; and
2. Persons who consider the applicant's trademark sufficiently resembling their own as to confuse ordinary consumers.
In either of the above two cases, if the objector has not already registered the trademark in his own name, he should at the same time of his objection, take action and to apply for the registration of the trademark under dispute. He must pay all the registration and other costs in advance. For persons whose establishment is situated abroad, the right to object will be conditional upon reciprocal arrangements as specified in Section 2 of Article 4.
If the objection is filed before the registration of the trademark under application, the objection must be transmitted to the applicant in the manner, and within the period specified in the regulations. If the applicant does not concede the right of the objector and does not withdraw his applications, then the objector may file a petition within the period specified in the regulations with the First Instance Court of Tehran.
The procedure regarding the registration of the application will be suspended during the filing of the petition. If however, the objector does not file a petition within the specified period (or when he does, he fails to prosecute) the trademark will be registered in the name of the applicant and all moneys deposited by the objector will be confiscated by the government.
If the objection is concerning a trademark which is already registered, the objector should refer directly to the First Instance Court of Tehran and must request the cancellation of the registration.
Except otherwise provided for by the Ministry of Justice regulations, all such petitions shall be dealt with under Commercial Law and in any case the decision of the court will be subject to appeal to a higher (supreme) court.
NOTE: The final court decision will be published (at the expense of the winner of the case) in the Official Gazette of the Ministry of Justice and also in a daily newspaper in Tehran; the winner may demand the cost of publication along with other damages from the loser.
Should the objector prove to have priority right in respect of a trademark resulting from prior continuous usage, the court shall hold that the trademark be registered in the name of the objector, and if the said trademark has already been registered at the Tehran Deeds Registration Department, then the court shall hold that the former registration be canceled and the trademark to be registered in the name of the objector.
The above mentioned procedure shall be followed in the case of an objection to the assignment of a trademark, changes in the trademark or changes in products included under that trademark.
If no objection is raised against the registration of a trademark within the first three years from the date of registration, no objection will be considered afterwards unless it is proved that the applicant was aware, during the course of registration, that the trademark had been continuously used by the objector or by another person who had transferred the trademark to the objector. If the applicant can then prove that the objector was aware of the registration within the three years then the objection will be rejected.
The necessary regulations will be prepared by the Ministry of Justice for the enforcement of this law.
Trademarks registered by persons with industrial, commercial or agricultural concerns in Iran, registered under the Industrial Patents Act of 1923, shall remain valid for the balance of the period of ten years since registration.
Persons with commercial, industrial or agricultural concerns outside Iran who have registered their trademarks according to the Act of 30 March 1926 (9th Farvardin 1304), or who have applied for registration under that Act but obtain their registration after the approval of this Law, will enjoy the protection of this Law for the balance of their ten years provided that the country in which their establishment is situated offers such protection
under treaty with Iran or through it's international laws.