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 crucial importance that the Italian entrepreneur who exports his products to Iran, registers his brand in the country in advance. The ownership in Iran of a commercial trademark, in fact, implies a whole series of rights, first of which that of requesting and obtaining licenses for the import of foreign products: only the company that owns the trademark - or its local agent with the appropriate powers - are the subjects entitled to apply for the aforementioned 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 the so-called "International deposit", the benefits and terms of which are summarized below.
The registration of a trademark in Iran through the National deposit
The protection of trademarks in the country is governed by the “Law on the registration of patents, industrial designs and trademarks”.
The Italian 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 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.
The Iranian law also protects the so-called well-known trademark, namely the trademark which, although not registered, is so widespread in the market that it is associated by consumers with a specific product. With reference to the well-known trademark, the law prohibits the registration of trademarks identical or similar to it, both in the case in which they refer to products / services identical or similar to those to which the well-known trademark is connected, or if they refer to different products: in the latter case, the ban operates as long as the registration of the trademark can damage 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 rise to the publication of the application in the Official Journal of Trademarks. From this moment, within 30 days, the counter-interested parties in the registration can make an opposition to the same. In the event that such opposition takes place, the applicant is granted a right of reply within 20 days.
Once the aforementioned terms have expired, the procedure must be considered concluded and, considering the application and any objections or replies, the Trademark Office will proceed with the registration or not.
The foreign trademark registered through the so-called 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 to the so-called 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 an Italian trademark in Iran through the System procedure, it is necessary to have filed the trademark at any Italian Chamber of Commerce 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 started directly from Italy, is particularly cumbersome from a temporal point of view: in fact, 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 local 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 local trademark office. This instance is followed by the issuance of a certificate.
In conclusion, it is important to highlight that in order to best guarantee the protection of one's trademark in the country and, in the event of violations, in order to fully benefit from the sanctioning system provided for by the internal law2, it is strongly advisable to proceed with the filing of the trademark directly in Iran through the so-called national deposit, described in the first paragraph.
Bologna - June 10, 2021
Avv. Dario Gorji Varnosfaderani
– de Capoa Law Firm – Bologna – email@example.com
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;
2 In the Iranian R.I. Iran has severe penalties for infringement of intellectual property, which punish the perpetrator with a fine ranging from Rial 10,000,000 to Rial 50,000,000 and imprisonment from 91 days to 6 months.