IP Law Under Iranian Law (Part two)
In the first part of this article we have discussed the Copyright Law (IP Law Under Iranian Law – Part 1). In this part, we are exploring industrial property rights within the Iranian legal framework, examining the extent of support provided for preserving these rights, instances of their violation, applicable penalties, and examples of judicial decisions concerning this subject matter.
A) Trademark under Iranian law
In Iran, trademark protection is grounded in the Intellectual Property Law, known as the “Iran Patents, Industrial Designs, and Trademarks Registration Act,” (hereinafter the “Trademark Law”) effective since May 2008, (For more information, you can click Trademark Law) along with its executive by-laws. As a member of the Paris Convention, Madrid Agreement, and Madrid Protocol, Iran adheres to the related rules and regulations. To secure trademark protection in Iran, one can opt for national registration through the Intellectual Property Office of Iran or international registration via the Madrid System.
According to Article 30(A) of the Trademark Law “Mark means any perceptible marking which can distinguish goods or services of natural or legal persons”. Registered trademarks hold a validity of 10 years, followed by the option to renew them for additional 10-year terms. Within a 6-month grace period, starting from the trademark’s expiration date, renewal can be completed while incurring a delay penalty equating to 50% of the renewal fee.
Upon expiration, the trademark cannot be reinstated; however, one can file a new application to protect the mark. In Iran, trademark registration does not necessitate actual use. However, if a registered mark remains unused for three years post-registration, it becomes susceptible to cancellation initiated by interested third parties.
The trademark owner must present proof of use in court, while the claimant needs to demonstrate a legitimate interest in canceling the trademark. Iranian law allows for partial cancellation based on non-use. To maintain a trademark’s validity, its use must be established within Iran’s territory, and use outside the country alone is insufficient. The Iranian Trademark Law does not specify particular methods for employing a registered trademark.
Trademark infringement under Iranian law
Profiteers can exploit a registered trademark by deceiving consumers through the brand’s positive reputation, or by introducing counterfeit products bearing well-known brands in the market. Legal safeguards are in place to uphold the rights of trademark owners when the trademark usage leads to consumer confusion.
Sample of judgments and court decisions related to infringements of the trademarks
- As established by the Tehran Court of Appeal’s ruling, according to Article 47 of the Trademark Law unregistered tradenames and trademarks are legally safeguarded. Consequently, if the precedence of usage for an unregistered trademark is substantiated, a similar registered trademark may be deemed invalid. This judgment was prompted by a case wherein an individual employed a trademark continuously for eleven years without registration, followed by another person registering the same trademark. Upon the initial user’s complaint, the court rendered this decision, affirming the unregistered party’s rights to the trademark.
- As per Tehran Court of First Instance’s ruling, it is permissible to register a single trademark for various goods. This decision is based on the distinction between goods and services, which makes consumer confusion and misleading situations improbable. Additionally, the rights of the initial registrant are protected. Consequently, when two separate companies market distinct products under the same trademark, there is no issue, as consumers can differentiate between the brands.
B) Patents under Iranian law
According to Article 2 of the Trademark law “An invention shall be patentable if it includes a new innovation, and is industrially applicable. An innovation includes anything that has not been anticipated by prior art and would not be obvious to a person having ordinary skills in the art. An invention shall be considered industrially applicable if it may be made or used in a given line of industry. “Industry” is to be construed in the broadest meaning of the word and shall include handicrafts, agriculture, fishery and services as well.”
As per the existing law in Iran, the patenting process is declaration-based, where the individual who initially submits an invention registration application is recognized as the inventor. This status can be challenged if substantial evidence demonstrates otherwise.
In the event of a patent application rejection during the grant procedure, the administration must provide clear explanations. The applicant then has ten days from the rejection date to submit a petition to the “First Instance Court of Tehran.” If dissatisfied with the court’s decision, an appeal can be made to the court of appeal for further review.
Patent infringements under Iranian law and sample judgments and court decisions under Iranian law
According to Iranian legislation, patent protection is granted upon registration. In case of patent infringement, both civil and criminal measures can be initiated to safeguard the intellectual property rights of the patent holder.
As per the Tehran Court of First Instance’s ruling, the requirement for patent infringement involves the alleged offender utilizing the patent owner’s rights post-application filing. Consequently, if an individual registers a patent and another person subsequently exploits that right, the patent owner has the authority to initiate legal action against the offender.
C) Industrial design under Iranian law
In the context of intellectual property law, industrial design refers to the aesthetic aspects pertaining to a product’s shape, structure, patterns, and decorations, which are produced through an industrial process. The registration of industrial designs in Iran requires the consent of the owner.
According to Article 21 of the Trademark Law, “An Industrial Design is registrable if it is new and or original.” An Industrial Design shall be new if it has not been disclosed to the public, anywhere in the world, by publication in tangible form or by use or in any other way, prior to the filing date of the application or, where applicable, the priorities date of the application for registration.
Exploiting a registered industrial design, through manufacturing, selling, or importing goods incorporating the design, is subject to legal restrictions.
The owner of a registered industrial design has the authority to initiate legal action against any individual who, without their consent, engages in the activities mentioned or perpetrates actions that routinely lead to future infringements. In essence, the registration of industrial designs serves to protect against unauthorized duplication and functions as a foundation for consumer trust in commercial assets.
Industrial design infringement and sample judgments and court decisions under Iranian law
When an industrial design is registered, any unauthorized use or exploitation of another person’s design constitutes a violation of rights. Legislators safeguard these rights through registration, and in cases of unregistered designs, copyright protection may apply.
- As per the Tehran Court of Appeal’s ruling, for an industrial design to be legally registered and safeguarded in Iran, it must possess either originality or novelty. In the context of this particular case, the design may not be entirely innovative, but it exhibits originality by being a manifestation of the designer’s creativity and not a mere imitation.
- In the Tehran Province Appeals Court’s ruling, it is assumed that an industrial design possesses originality. Once registered, if someone disputes the originality, they must substantiate their claim. In this specific case, the complainant challenged the respondent regarding the chair production ban, asserting that their company had previously imported the chair type from China to Iran. The court dismissed the claim, stating that simply importing an item does not grant one ownership over the ensuing industrial rights and intellectual property.
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