TRADEMARKS FILING AND PROSECUTION IN IRAN
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Iran may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.[1]
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. The registration procedure in Iran is goverened by the “Iran Patents, Industrial Designs and Trademarks Registration Act” which comes into the force in 2008.[2]
| Relevant office | Intellectual property center of the Islamic Republic of Iran |
| Nice classification | Yes (10th edition) |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | Yes |
| Documents required for filing a trade mark application | Legalized Power of Attorney, notarized certificate of incorporation or a extract of commercial register |
| Prosecution process | Filing publication of the mark in the trade mark journal opposition(within 30 days from the date of publication) registration renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademark searches in Iran
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Iran can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of the Intellectual property center of the Islamic Republic of Iran
Trademark word search edition of Iran follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Iran to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Iran. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Iran can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark applications in Iran
A person may file multi class or single class trademark applications in Iran.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Iran:
Ordinary trademark applications filed in Iran are applications without claiming any priority. Ordinary applications in Iran are filed online on the trademark office website http://iripo.ssaa.ir./ and foreign applicants need agent and also an address for service. Multi class trademark applications can be filed in Iran. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.[3]
Priority trademark applications in Iran/Convention trademark applications Iran:
A priority trademark application may be filed in Iran. A priority trademark application should be filed in Iran within 6 months after the date on which the application was made in the convention country.[4]
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Iran within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Iran follows the nice classification of classes. Intellectual property center of the Islamic Republic of Iran uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
It is to be noted that Iranian trade mark office does not accept the trademark application covering the goods under class in class 33. The international applications for registration for the class 32 applying for “beers” should provide clarification that the goods covered are “non-alcoholic beers”. [5]
Trademark examination in Iran
Once the application is submitted it goes through the examination stage. The application is examined on the relative and absolute grounds and the application is also examined if it complies with all the legal requirements for the registration.
The examination report is issued in thirty days usually.[6]
Trademark opposition in Iran
In the event of successful completion of the examination stage, the application for the registration is accepted and published in the trademark gazette for the observation by the third parties. Any interested person within thirty days from the date of the publication may file a notice of opposition.
The industrial property office shall serve the copy of the opposition to the applicant, who shall within a period of twenty days file counterstatement along with the grounds on which he relies to the industrial property office.
The copy of the counterstatement will be served to the opponent and after taking into considerations the various submissions and statements of the parties, the industrial property office will decide whether to register the mark or not.[7]
Trademark registration in Iran
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from the filing date and the registration certificate is issued.
[1] https://ssrana.in/global-ip/international-trademark-filing-registration/trademarks-in-united-states/
[2] https://www.country-index.com/country_surveys.aspx?ID=89
[3] https://www.country-index.com/country_surveys.aspx?ID=89
[4] https://www.wipo.int/treaties/en/ip/paris/summary_paris.html
[5] https://www.country-index.com/country_surveys.aspx?ID=89
[6] https://www.country-index.com/country_surveys.aspx?ID=89
[7] https://www.country-index.com/country_surveys.aspx?ID=89