TRADEMARK PROTECTION IN IRAN

Avv. Dario Gorji Varnosfaderani

Trademark protection in the Islamic Republic of Iran is guaranteed by domestic legislation and the country's adherence to major international conventions in the sector.
Iran protects trademarks in both individual and collective form, in the dual profile of figurative trademarks and word trademarks. 
It is crucially important that European entrepreneurs who export their products to Iran register their trademarks in the country in advance. Ownership of a trademark in Iran implies a whole series of rights, the first of which is the right to apply for and obtain licenses for the importation of foreign products: only the company that owns the trademark or its local agent with the appropriate powers is entitled to apply for such licenses from the Iranian Ministry of Commerce and Industry. 
There are two ways to register a trademark in Iran: through a “national filing” or an “international filing”, the benefits and procedures of which are summarized below.

Trademark registration in Iran through national filing

Trademark protection in Iran is governed by the “Law on the Registration of Patents, Industrial Designs, and Trademarks”.
European entrepreneurs can apply, through their attorney, to register their trademark directly with the Iranian Industrial Property Office, accompanying their application with a reproduction of the trademark and an indication of the relevant classes, in accordance with the Nice Agreement. In this regard, it is strongly inadvisable to entrust the performance of these formalities to local agents or distributors who, if acting in bad faith, could qualify as owners of the trademark at the time of filing, thereby illegitimately acquiring ownership.
Generally, there are no restrictions on the registration of foreign trademarks, unless one of the following conditions applied:

• the trademarks are contrary to Sharia (Islamic law), public order, or morality;
• they create a risk of confusion with existing trademarks;
• they are similar to other trademarks already registered in Iran; 
• they are likely to confuse the public as to the origin, nature, or characteristics of a product;
• they contain symbols or emblems referring to a state or to an international organization.

Iranian law also protects so-called well-known trademarks, i.e., trademarks that, although not registered, are so widespread in the market that consumers associate them with a specific product. With regard to well-known trademarks, the law prohibits the registration of trademarks that are identical or similar to them, both in cases where they refer to products/services that are identical or similar to those associated with the well-known trademark and in cases where they refer to different products: in the latter case, the prohibition applies insofar as the registration of the trademark would be detrimental to the proprietor of the well-known trademark. 
In procedural terms, the national trademark application is completed through the following process. After submission to the Trademark Office, the application is examined within 3-4 months. Once its admissibility has been verified, the Office publishes the application in the Official Trademark Gazette. From this moment, within 30 days, parties opposed to the registration may file an opposition. If such an opposition is filed, the applicant is entitled to a right of reply within 20 days. Once these deadlines have expired, the procedure is considered concluded and, on the basis of the application and any oppositions or replies, the Trademark Office decides whether or not to proceed with the registration.
A foreign trademark registered through the so-called national filing has the same effect in the country as any other registered Iranian trademark. The registration is valid for 10 years and is renewable.

Trademark registration in Iran through international filing

On December 25, 2003, the Islamic Republic of Iran became a contracting party to the Madrid Agreement and the Madrid Protocol, thereby joining the Madrid System in all respects. The Madrid System provides that the filing of trademarks in one of the member states of the System may, under certain conditions, also be fully effective in the other states. In this case, in order to register a trademark of a European company in Iran through the System procedure, it is necessary to have registered the trademark according to the national law or with the European Union Intellectual Property Office and to request - jointly or even subsequently - for the extension of the registration in Iran, through the World Intellectual Property Organization (WIPO), which will then register the trademark in that country as well.
Although this procedure has the advantage of being able to be initiated directly from any country, it is particularly time-consuming: 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 noted that, once registration in Iran has been completed through international filing, the trademark will not appear in the local Intellectual Property database: the owner of the registration must submit a subsequent application to initiate the so-called “confirmation procedure”, which consists of a request for recognition of the international registration at the local Trademark Office. This application is followed by the issuance of a certificate.
In conclusion, it should be noted that, in order to ensure trademark protection within the country and, in the event of infringements, to fully benefit from the penalty system provided under domestic law, it is strongly recommended that the trademark be filed directly in Iran through the so-called national filing procedure, as described in the first paragraph.