Trademark Protection in Iran

The protection of trademarks in the Islamic Republic of Iran is guaranteed by internal legislation and by the country's adherence to the major international conventions in the sector. Iran protects trademarks both individually and collectively, in the dual profile of figurative trademarks and verbal trademarks¹.

It is of utmost importance for European entrepreneurs exporting their products to Iran to proactively register their brands within the country. Owning a commercial trademark in Iran entails a range of rights, the primary one being the ability to request and obtain licenses for importing foreign products. Only the company holding the trademark or its authorized local agent or the appropriate powers are the subjects entitled to apply for these licenses from the Iranian Ministry of Commerce and Industry.

The registration of a trademark in Iran can take place in two different ways: through the so-called "National deposit" or through "International deposit", the benefits and terms of which are summarized below.

The registration of a trademark in Iran through “National deposit”

The protection of trademarks in the country is governed by the “Law on the registration of patents, industrial designs, and trademarks”.

The European entrepreneur can request, through his attorney, the registration of his trademark directly with the Iranian Industrial Property Office, together with the compiled application with the reproduction of the trademark and the indication of the reference classes, according to the Nice Convention. In this regard, it is strongly recommended not to entrust the performance of these obligations to local agents or distributors who, if in bad faith, could qualify as owners of the trademark at the time of filing, illegally acquiring the ownership. There are generally no restrictions on the registration of foreign trademarks unless one of the following conditions is met:

• trademarks are contrary to Shari'a (Islamic law), public order, or morality;
• create confusion with other brands;
• are similar to other trademarks already registered in Iran;
• are capable of confusing the public about the origin, nature, or characteristics of a product;
• contain symbols or emblems referable to a state or other international organizations.

Iranian legislation also provides protection for what is known as a "well-known trademark," which refers to a trademark that, despite not being officially registered, has gained significant recognition in the market and is closely associated with a specific product. In relation to well-known trademarks, the law prohibits the registration of identical or similar trademarks, regardless of whether they are used for identical or similar products/services connected to the well-known trademark. Furthermore, even in cases where the trademarks are used for different products, the ban remains in effect if the registration of the new trademark has the potential to harm the owner of the well-known trademark.
In procedural terms, the national trademark filing is completed with the following procedure: After submission to the Trademark Office, the application is examined within 3-4 months. Once the admissibility has been verified, the Office gives permission to the publication of the application in the Official Journal of Trademarks. From that point forward, within a span of 30 days, the parties with conflicting interests in the registration can initiate an objection. In the event that such opposition takes place, the applicant is granted a right to reply within 20 days. After the mentioned terms have elapsed, it is necessary to regard the procedure as finished. Depending on the application and any objections or responses received, the Trademark Office will then determine whether to proceed with the registration or not.

The foreign trademark registered through “national filing” is effective in the country equal to that of any other registered Iranian trademark. The registration is valid for 10 years and is renewable.

The registration of a trademark in Iran through “International deposit”

Starting from 25 December 2003, the Islamic Republic of Iran became a contracting party to the Madrid Agreement and the Madrid Protocol, thus adhering to all effects of the “Madrid system”.

The Madrid System provides that the filing of trademarks in one of the Member States of the System itself may, under certain conditions, be fully effective in the other states as well.

In this case, in order to register a trademark in Iran through the Madrid System procedure, it is necessary to have filed the trademark at the National Trademark Office of the European country of the applicant or at the Intellectual Property Office of the European Union and request - jointly or even subsequently - the extension of the registration in Iran, through the Office of the World Intellectual Property Organization (or WIPO), which will consequently provide for the registration of the trademark also in the country.

This procedure, although it has the advantage of being able to be initiated directly from any European country, is particularly cumbersome from a temporal point of view due to the fact that the transmission of the registration application to the Iranian Trademark Office and its analysis can take from 2 to 3 years.

It should also be emphasized that, once the registration in Iran has been completed through the international filing, the trademark will not appear in the domestic Intellectual Property database: it is in fact necessary that the owner of the registration, with a subsequent application, initiates the so-called "Confirmation procedure", which consists of a request for recognition of the international registration at the domestic trademark office. This instance is followed by the issuance of a certificate.

In summary, it is crucial to emphasize that for optimal safeguarding of one's trademark within the country and to fully avail oneself of the punitive mechanisms established by the domestic legislation, it is highly recommended to pursue trademark registration in Iran via the national deposit method, as described in the initial paragraph.

Bologna - June 10, 2021

Avv. Dario Gorji Varnosfaderani – de Capoa Law Firm – Bologna – dario.gorji@decapoa.com

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¹ The law entered into force on February 12, 2008 and was enforced by the regulation of January 21, 2009 of the State Organization for the Registration of Documents and Properties;