Trademark and Patent
Using foreign names and trade names in the country will be governed in the framework of the criteria of commission resolutions subject of principle 138 of Constitution Law number 38043/205136 dated March 6, 2008.
Yes, trade marks are protectable in Iran. In fact, since 1931, Iranian has been among few countries in Asia which included the matters related to protecting trade marks in its state laws. Registry and patent of marks and inventions passed in 1931 and the executive bylaws of this law, passed in 1958 are the basis of this protection.
Yes, this is due to the rights a person finds on its ownership. That is, when the trademark is registered by a person or a company, using that right is dedicated to the registering person.
Such request can be made; however, as most famous marks have been patented in the countries that are members of global conventions, to which Iran has joined as well in Paris Convention, there is a great possibility that the owners of that trademark can immediately, upon being informed of such attempt, demand for the invalidation of your trademark in addition to the possibility to sue you and claim huge amounts of loss and damages. Of course, Department of Industrial Ownership adopts a conventional way in dealing with these subjects and often does not accept such requests.
Essentially, any product which is imported to Iran under a registered trademark should be cleared either by its owner and/or a person who holds proxy, representation or import permits by the owner. If you own a trademark and you find information on this importation, you can prevent the importation of that cargo via judiciary authorities and confiscate it.
Only countries that hold membership of Paris Convention can benefit from protection in Iran as well.
Yes, it is possible to register the role, shape or letters as trademark.
10 years from the date of declaration letter registry at the Department of Industrial Ownership.
No. In the Patents and Invention Registry Law, there have been some restrictions set for the registry of some types of figures, pictures and marks and the Department for the Registration of Industrial Ownership; too, conventionally sets some restrictions in its practical procedures including: flag of the Islamic Republic of Iran and other countries, governmental marks, emblems and decorations, images and speeches of official authorities, any written words, images and figures that are attributed to governmental and official authorities, logo of organizations, institutes and governmental bodies, logos of other official institutes such as the Red Crescent, Red Cross, images, sentences and figures which are against public decency and contrary to public order.
Consider the class which is provided here as an example: When you take actions for a trademark, you should specify for what type of goods you use this mark. Law requires you to mention the type of your cargoes. In law; too, a group of similar goods has been included in one class and your goods should have been in one of those classes. For example, class 8- Various types of tools and manual equipment (items that work manually), knives, spoons and forks, small guns, blades. For example, if a specific trademark indicates meat grinders that work by hand and you apply for its registry, it must be registered in this class and category. Of course, you should know you have the option of mentioning the name of any type of goods and in application for the registry of other irrelevant goods in different classes as well. Remarks: The Department for the Registration of Industrial Ownership, based on a method which in my view has no legal basis, brings excuses in accepting declaration letter for the registration of marks with no permit of official activities for it.
No. Based on the opinion of jurists, any trademark will have rights only in the class for which it had received registration certificate and other persons; too, can register other classes as well. Of course, there might be specific legal problems including similarity of trade mark and its aspects, which has a detailed legal discussion. We recommend you under no circumstances use any trademark under ownership of others.
There is no problem in litigation. Of course, it is only Justice Administration of Tehran City which has jurisdiction in judging this case; however, this does not prevent the courts of other towns from primary and initial proceedings and hearing; rather, as stipulated in the law, other courts in other towns should perform preliminary actions and they can proceed to the stage of issuing writ and send the file to Tehran for continuing the proceeding.
Department of Industrial Ownership is a governmental body and one of the sub-complexes of Deeds and Properties Registration Organization and a part of the Judiciary. The duty of this department is registration of trades and inventions. The term “industrial” is used since invention has industrial aspects and the trademarks; too, are labeled on the industrial items and indicates the product is an industrial product. Apart from the Department for the Registration of Industrial Ownership, there are some offices and organizations that register and patent literature and art ownerships; such as High Council of Informatics on software and offices of Culture and Islamic Guidance for the registration of cinema and authors’ works. In Iran, Department for the Registration of Corporations and Industrial Ownership work in one place and under supervision of a director general; and the corporations registration section has one head which works under supervision of director general; and the industrial ownership too, has a manager who works under supervision of the director general.
By search in official gazette in rrk.ir address to make sure a name exists; however, if the name you search is not found in the official gazette, you can not arrive into registration process with determination.
If you are using Latin letters, the commercial ID. of one of the owners must be presented.
Registry or patent of a trademark is an indication that distinguishes the products or services presented by a person/firm from the goods or services of other firms or persons.
According to article 30 of the Trade Mark Law, the Collective Mark and Trade name are:
Mark means any visible mark or indication that can distinguish the goods or services of natural persons or legal entities from each other.
Collective mark means any visible mark or indication which is introduced in the registry declaration letter as a collective mark and distinguishes the origin and/or any other properties and characteristics such as the quality of cargo or natural persons and legal entities services which use this mark under the supervision of the registered collective mark.
Trademark means the name or any title that indicates and specifies the natural person or legal entity.
It guarantees the customers are able to distinguish products from each other.
It enables companies to distinguish their products.
It serves as the marketing tool and the basis of creating prestige and business fame of companies.
It allows third parties to use it and can serve as a direct source of income from royalties.
It is a necessary part of representation award agreements.
It might be a valuable business assess.
It encourages companies to invest in maintaining or improving the quality of products.
It can be useful in applying for loans.
Although most businesses have fount out the importance of using trademarks for distinguishing their products from the competitors’ products, not all of them have understood the importance of protecting the trademark via registry and patent.
After registry of the law, according to the registration and patent of trademark, the person/company finds exclusive right and by virtue of which, you can prevent supply of similar goods by third parties under trademark which are similar or identical with your trademark.
If the trademark is not registered, the competitor companies will use the same trademark or a similar trademark which might mislead the customers for the same goods or similar goods and therefore, investment in marketing a product might be wasted. If one of the competitors use identical or similar trademark, the customers might assume that product belongs to the same company and consequently buy the competitor’s goods. This not only might reduce the profit of the person/company and mislead customers, but also, it might damage the fame and prestige of the company; especially if the product has a low quality.
With respect to the value of trademark and the importance a trademark might have in determining the degree of success a product might have in the market, making sure and guaranty that the trademark is registered in the relevant market is a necessity.
In addition, granting permit to third companies to use a registered trademark is much easier and therefore, it can create a source of income for the company/person; or serve as the basis of concluding an agreement letter for awarding sale representation.
Sometimes, a registered trademark which enjoys good fame among customers might be used for the purpose of receiving financial sources or loans from financial institutes which are increasingly aware of the importance of trademarks in business.
The validity of trademark registry is ten years from submitting the registration declaration letter. This period could be extended for subsequent ten-year periods by paying the required fees. A six-month bonus deadline which starts at the end of the expiry date will be considered for paying extension expenses by paying delay penalty.
Any word, letter, number, picture, image, colour, label or their combination which are considered in identifying the goods or services is considered trademark. In some countries, advertisement mottos are also considered as trademark and in national registration offices of trademark patents, they are registered as trademark. An increasing number of countries allow registering forms of trademarks which were not customary before as well, such as colours, tri-dimensional images (goods forms or packages), audible signs (sounds) or smells. Nevertheless, in many countries there are some restrictions set for the items that could be registered as trademark and usually allow registration of items that could be seen or shown in graphic images.
Common words. For example, if your company plans to register the trademark “chair” for selling its chair, the application for the patent will be rejected for this mark because “chair” is the common name for this product.
Descriptive terms: Those are the words which are used for describing the product. For example, registering the word “sweet” will not be acceptable for chocolate because it describes the product. In fact, if the chocolate producer is awarded with the right of using the word “Sweet” for marketing its products, it will be unfair. In the same manner, quality words such as “quick”, “the best”, “classic” or “innovative” will be probably rejected unless they are a part of a specific mark. In such cases, printing a phrase that indicates using the mark does not imply exclusive right will be necessary.
Misleading (deception) signs: They are trademarks that deceive or mislead the consumer about the nature, quality or the geographic origin of the product. For example, marketing “margarine” by the trademark with the image of “a cow” will be rejected; for the mark will mislead the consumers; and the consumers probably will assume this trademark is for dairy products (such as animal butter).
Signs and marks that are against public decency and good intention. In general, words or images that breach with the generally accepted norms, good moral and religious measures will not be acceptable for registering the trademark.
Flags, royal emblems, official logos of government, countries and international organizations, a sample of which has been announced to the World Intellectual Property Organization (WIPO) are not usually registered.
If they can not distinguish the goods or services of a company from goods and services of another company.
If they are against religious laws or public order or good intention.
If they mislead trade or public centers especially on the geographic origin of goods, services or properties.
The exact copying military decorations, flags or other governmental logos, the name or abbreviation or the first letters of an official name or logo of a country, inter-state organizations or organizations which have been established under international conventions, or the mentioned items are a part of that logo unless the authorized official of the relevant country or organization has already issued permit for using it.
The trademark is misleadingly similar to or translation of a trademark or name which is famous for the same goods or similar services belonging to another company in Iran.
The same or similar mark had been already registered and known for dissimilar services provided that there is conventionally relationship between using the mark and the owner of the famous trademark, and its registration does not harm the profits of the owner of the previous trademark.
If it is the same trademark which had been already registered in name of another owner and/or the application date of patent dated before, or has priority right for the same goods, services and/or for goods and services which might lead to deception and misleading due to the relationship and similarity.
Applicant’s identity documents
Natural persons: Copy of birth certificates and copy of national ID. cards
Legal entities: The last official gazette on the management, the copy of birth certificate and national ID. card of legal signatories
Documents of legal representative: If the application is made by legal representative (attorney, proxy, legal signatories for legal entities…) the documents must be attached.
The graphic sample, copy or image of the requested trademark, maximum in 10 x 10cm size.
Presenting doucments on activities in the relevant field, for example, declaration of establishment or permit of Ministry of Industries or utilization permit of Ministry of Industries, production license of Ministry of Health and Medical Education, occupation or business license…
Receipt of legal expenses payment
A) The cost of declaration letter lodged by natural persons is 200,000 Rials and for legal entities, it is 400,000 Rials, payable to SIBA account 2171329015001 of Bank Melli, Centralized Account for Revenue for Registration Services of Genweal Department of Industrial Ownership (payable in any branches across the country) to be attached to the doucments.
B) The equivalent foreign currency of all tariff costs and expenses for trademark patent in Swiss Franc should be remitted to foreign currency account number 740001 at Bank Melli, Abbasabad Gharbi Branch (803) in name of Registration Services of General Department of Industrial ownership.
Important- If the trademark is in English, the commercial card is necessary.
According to article 37, any beneficiary may send his objection on not following clause A of article 32 of this Law to the Industrial ownership Office maximum within thirty days from the date of notice publication; in this case:
The Department of industrial Ownership will notify the copy of letter of objection to the applicant and give him twenty days deadline to inform its opinion. The applicant, in case of insisting on his application will send a counter notice to the mentioned department along with the relevant reasoning; otherwise, his declaration letter will be regarded as returned.
If the applicant sends a counter note, the Industrial Ownership Department will give a certified copy to the complainant and by considering the views of the parties and provisions of this law, it decides to patent the trademark or reject it.
According to articles 124 and 125 of the executive bylaw, an person who has any complaint against trademark registry application in Iran shall send his objection to the registration office within 30 days from the date of notice publication in two copies on failure of observing clauses A and B of articles 30 and 32, subject of articles 120 of this bylaw.
After registration of the objection, the second copy to it, by printing the date and number of receiving the letter is returned to the complainant. The registration office, by determining the subject will ask the applicant in writing to remove the defects; otherwise, the objection letter will be regarded as null and void.
Note- The deadline for removing the defect for the persons abroad is 60 days.
If the objection of the applicant on ownership right claim is about the mark the declaration letter of which had been already submitted to the registration office and notice publication, if the trademark had not been registered in advance, simultaneously by sending his objection, he shall send an application for registry of his trademark according to the law and this bylaw and pay the entire patent fee for the declaration and the trademark as per the classes. The registration office pursuant to article 124 of this bylaw should notify to the registration applicant within 10 days from receiving the objection, a copy of the letter of objection enclosed to the certified to the copy of documents and evidences. The applicant is obligated to submit his written reply on the entered objections to the registration office within 20 days. No reply by the applicant to the notification within the deadline will be regarded as his acceptance.
If the applicant obeys the objection of the claimant in writing, his request for the trademark registry will be regarded as returned and the subject will be notified to the complainant in writing;
thus, if his trademark has not been already registered, he can take actions for the registry. In case of applicant’s disobedience, the registration office will notify the subject to the complainant within 10 days and he will have 20 days deadline to submit his objection to commission of article 170 of this bylaw via registration office. The same process should be observed that the objection of the complainant on claiming some rights rather than property right targets the trademark the registration declaration letter of which had been already submitted to the registration office, but it has not been registered in Iran so far; unless the trademark is not legally fit to be patented. In this assumption, there will be no need to submit the trademark patent declaration to the registration office. The decision of commission, according to article 172 of this by-law, could be objected in the court with legislation as stipulated in article 59 of the law.
Note 1- If the submitted declaration letter does not lead to patent of the trademark, the processing fee will not be refundable.
Note 2- In case of rejection of the objection in the commission, the objection fee will not be refundable.
Note 3- If the protesting person is not an Iranian resident, the deadline mentioned in this article will be doubled.
Follow articles 126, 127 and 128 and the clauses and notes, article 131 and the notes of article 132, article 133, and the clauses and para, article 134 and its clauses, articles 135 and 136.
Article 138 describes changes in trademark, in the meantime, please see the notes.
Article 139 discusses transfer of trademark. In the meantime, pay attention to articles and notes of article 139; particularly transfer by legal mandate.
Article 130 Discusses transfers of parts of goods and services on patented trademark, more attention must be also paid to its notes/para.
Yes, the trademark can be transferred. It is exactly like registry with the difference that there should be a 10-year exclusive certificate as well. This is done by person by proxies or legal representatives.
Following articles 141, 142 and 143, and more attention to full observation of article 142 on the quality and standardization. This article should be followed by the permit recipient and the process must be described. In addition, attention shall be paid to the two clauses 1 and 2 of article 143.
Necessary documents on article 143 and its notes
Article 144 is on withdrawal from the trademark. Necessary documents must be presented. In addition, attention must be paid to notes 1 and 2 of article 144.
Article 145 stipulates that if the transfer, award, utilizing permit, cancellation and termination are done before the deadline of utilization permit or withdrawal from ownership of the patented trademark outside the country, the original, certified copy and duplicate of the relevant document containing the date of patented trademark in Iran should be confirmed by the Islamic Republic of Iran representative and serve as reasons for the registry of changes in Iran.
Chapter four of Section Five of General Regulations
Article 175 of this bylaw is on absence/loss of trademark patent which will be explained in details in next discussions. In the meantime, please see note to article 175.
No, all three convey the same meaning.
Yes. In any form, the permit must be presented.
If the trademark is in English or Latin alphabet, commercial ID. card is necessary; otherwise, no, there is no such requisite.
No, there is no need for legal representation; the person could do the same.
At least two working months.
Yes, if you like, you can pay the fee and take an inquiry within 24 hours; however, it is valid to 60 people because those inquiries do not identify the similarities; it just informs the existence of the same mark.
The Industrial Ownership Department Site and clicking on Trademark Patent.
Yes, but the trademark will be issued in the name of same person.
Exactly the same procedure as registration with the difference that there must be a 10-year exclusive certificate too. This is done by person via legal representative.
To prepare documents as per being legal entity or natural person and starting registration via internet.
It is exactly like the initial registration, both in terms of registry and costs.
No. All trademarks should be patented in Tehran and at Industrial Ownership Department.
Yes. In any case, the permit or license should be present.
Around two months from the declaration letter date; however, the declaration letter can be issued in one day.
Copy of birth certificate, copy of national ID. number.
Graphic example or copy of the image of the trademark which is to be presented for patent, maximum in 10 in 10 dimensions.
If the name is in English or Latin alphabet, commercial Id. card should be presented as well.
Preseting work permit or license.