How to protect your trademark in Iran?


  • How to protect your trademark in Iran?
  • Source :

By Ayman Mahmoud El Ghonemi
TAGLegal Iran-(
This article is intended for general information purposes only and does not constitute a legal advice. 

• General Overview

The Islamic Republic of Iran (hereinafter referred to as “Iran”) joined the Convention for the Protection of Industrial Property (hereinafter referred to as “Paris Convention”) in 1959; also, in 2001 the latter became a member of the World Intellectual Property Organization (hereinafter referred to as “WIPO”).
In 2003, Iran signed the Madrid Agreement and the Madrid Protocol for the International Registration of Marks.
In addition to the above-mentioned international treaties, Iran has its own local law, which is the Patent and Trademark Registration Act of 2008 (hereinafter referred to as “Trademark Law”) and the E-commerce Law of 2003 hereinafter referred to as “E-Commerce Law).
In Iran, a trademark, which is not registered cannot be protected, since the protection is only provided to a registered trademark as per the Trademark Law, especially Article 31 and Article 40.
Article 31 of the Trademark Law states: “The exclusive right to use a Mark shall belong to the person who registers his Mark in accordance with the provisions of this Act.”
While Article 40 of the Trademark Law states: “Rights Conferred by Registration, Duration and Renewal of Registration shall be as follows:
a) The use of any Mark registered in Iran by any person other than the registered owner shall require the consent of the latter. 
b) The registered owner of a Mark shall have the right to institute court proceedings against any person who infringes the Mark by using, without his agreement, the Mark as previously mentioned or who performs acts which make it likely that infringement will occur. This right shall extend to the use of a Mark similar to the registered Mark and the use thereof in relation to similar goods and services that shall cause confusion.
Based on the above-mentioned, any party can use his trademark in Iran without registration, however, the latter cannot be protected and cannot stop any infringement that might occur unless the said party registered its trademark.
In case any party who owns a registration notices the existence of a trademark application, registration or domain name which infringes his trademark right, the latter can either file an opposition against the application or a court action (Civil or Criminal) against the registered trademark or domain name, which shall be explained in detail below.

• Opposition Procedures

As per Article 37 of the Trademark Law, any interested party may, within thirty days (30) starting from the publication date, file an opposition against a published trademark application before the Iran Intellectual Property Office (hereinafter referred to as “IIPO”).
Aside from having a local registration, a signed and dated POA along with the Certificate of Incorporation of the owner (if the owner is a corporation) must be presented at the filing stage; a legalized and notarized copy of each document can be presented at a later stage.

Evidence of prior use or business relationship with the applicant by the owner will increase the chance of success, since it will show the bad faith of the other party.
Nevertheless, in case the trademark is registered, the action to be taken shall be before the court and can be either a civil or a criminal action.

• Civil Action

The main goal of the civil action is the cease of the infringement along with the request for a compensation and the action is filed before the Commercial Court directly via a memo submitted.
Article 41 of the Trademark Law grants the owner of a prior trademark the right to file the civil action in case of the violation of Article 30 Section (a) or Article 32 or in case the opponent has not been using his trademark for a period of three years starting from the date of registration up to one month prior to filing the request. 
However, if it is established that the use of the Mark has been prevented due to Force Majeure, the registration shall not be invalidated. 
Aside from the civil action, the owner can file a criminal action, however, the same takes longer due to the numerous procedures.

• Criminal Action

The main goal of a criminal action is the punishment of the opponent (imprisonment + a fine), also in criminal actions, the plaintiff may request a compensation through a civil claim which will be ruled by the same judge who is handling the criminal case.

The Criminal action is filed before the Public Prosecutor via a complaint; the latter examines the complaint, after careful examination, the Prosecutor issues an injunction against the infringer.
According to Article 529 of the Criminal Law of 1996 (hereinafter referred to as “Criminal Law”), forgery of the trademark/tradename of a company is punished by imprisonment ranging from 3 months to 2 years and compensation of inflicted damages. 
It is worth mentioning that the above procedures take more time than the procedures related to the civil action, however, the owner is able to lodge a civil claim in order to request for compensation along with the criminal action, but the opposite is not possible.
Aside from dispute before the court, there is also the possibility to file legal actions against domain names in Iran as per the E-Commerce Law.

• E-Commerce Law

Article 66 of the E-Commerce Law states: “……use of trademarks as domain name or any online usage of trademarks which may mislead or deceive the other party in terms of the originality of goods and services is illegal and the offender will be sentenced according to this Law.” 

Accordingly, the use of a mark as described in the above Article is prohibited by the law and is considered an infringement of the owner’s right and the owner has the right to file a criminal action against the opponent. Article 76 of the E-Commerce Law defines the amount to be paid along with the duration of the imprisonment (if decided by the judge). 

For more details, please contact us at rizm@gzt-ovtzo.xln

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