04-02-2013 (Newsletter Issue 4/13)
Additional Formalities to Trademark Applications Required
The Iranian Intellectual Property Office (IIPO) has recently updated its formalities for trademark applications in Iran.
IIPO will no longer accept general terms for products and services; trademark applicants will be asked to submit a serial number specifying each good or service according to the specifications found on the WIPO Nice Classification system found at http://www.wipo.int/classifications/nivilo/nice/index.htm.
IIPO also announced that a power of attorney, certified and legalized up to the Iranian consulate, a certified copy of the company extract, as well as pantone codes of the trademark colors in order to claim colors of the mark (documents which are required in support of trademark applications in the country) must all submitted within two months from the date of notification issued by the registrar, in addition to the serial number.
Source: Saba & Co., Lebanon
02-18-2013 (Newsletter Issue 2/13)
New Payment Regime for Foreigners
The Iranian Trade Marks Office has changed the official fees payment regime in January 2013.
As per the new payment regime, the Iranian Trade Marks Office only accepts payment of official fees for foreign applicants in Euros or Swiss Francs.
In fact, there have been no structural fee changes, but applicants are required to pay the official fees based on the currency exchange rates on the payment day. As the Euro/Franc currency exchange rate is not fixed, the official fees will vary from time to time. The restrictions of international money transactions on Iranian banks have made the payment issue more difficult.
The implementation of the new payment regime will also be imposed on the registration fees for pending applications.
The official fees for Iranian applicants are still payable in local currency, Rials.
Source: Raysan Patent & Trademark Agents, Iran
12-04-2012 (Newsletter Issue 18/12)Trademark Electronic Application System LaunchedThe Iranian Trade Marks Registry launched a system for electronic trade mark application system on November 18, 2012. This development follows successful inauguration of electronic application for patents and industrial designs a few months ago.
Currently, the Trade Marks, Patents and Industrial Design Registries only accepts electronic filing of applications. There have been no changes in filing procedures or formalities requirement, but a new application number format will be assigned automatically by the electronic application system. The original supporting documents (i.e. power of attorney, applicant’s incorporation document) are still required to be submitted to the Office in hard copy.
The electronic platform for filing of trade mark applications and workflow system is available at http://iripo.ssaa.ir. The platform is only designed in Persian and no English version is available yet.
The system provides for examination, correspondence, publication and registration procedures electronically. However, the opposition, hearing, renewal, assignment and license recordation procedures are handled as before.
The electronic platforms for filing of patent and industrial design applications and workflow system are available only in Persian at the same address at http://iripo.ssaa.ir.
The Iranian Industrial Property Office is gradually shifting to a completely paperless office in a phased manner during the next years.
Source: Raysan Patent & Trademark Agents, UK
02-23-2011 (Newsletter Issue 3/11)
New Trademark Filing Requirement
According to the new amendment of the Iranian Trademark Office, it is now required to submit a copy of the Certificate of Incorporation from the Commercial Register or any equivalent document for new trademark applications.
In case the applicant is an individual, then a photocopy of his passport will suffice.
Source: NJQ & Associates
Legal basis is a new Intellectual Property Law “The Law of Registration of Patents, Industrial Designs and Trademarks”, in force since May 2008.
Iran is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Israelis or Israeli companies cannot apply for trademarks.
Nice classification, 9th edition
There is no trademark protection for alcoholic beverages class 32 “Beer” and class 33.
Medical and veterinary products may only be used in Iran, if they have been previously registered as trademarks (exception: small amounts for personal use). Pictures of women and words which can be considered immoral are not registrable as trademarks. Foreign words must be translated in order to be examined for their moral integrity.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, holograms, colours, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, certification marks, trade names and titles of establishment.
The application is filed online at the Trademark Office. The electronic platform for filing of trade mark applications is available at http://iripo.ssaa.ir.
Multiple-class applications are possible.
Foreign applicants need a domestic agent/registered address.
A power of attorney authenticated by an Iranian consulate is necessary.
A copy of the Certificate of Incorporation from the Commercial Register or any equivalent document is required.
Foreign applicants need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration is approx. 8 months. The first office action is taken after approx. 2 months. The examination is followed by a publication of the application and then a publication of the registration of the trademark.
The opposition period is 30 days from publication date of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
Protection begins with the date of application. A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.
In case a registered mark is not put into use within three years from registration date, the registration will become vulnerable to cancellation action on the grounds of non-use.
The official fee for filing an application and registration for a trademark is approx. EUR 320.00 for one class and approx. EUR 54.00 for each additional class.
The Iranian Trade Marks Office only accepts payment of official fees for foreign applicants in Euros or Swiss Francs.
Trademark Licence Agreement
In Iran a licence agreement has to be in writing. Licensing of unregistered trademarks is not permitted. A trademark may be licensed for some or all of the goods or services in respect of which the trademark is registered. The sale of a registered trademark does not automatically terminate the licence. The licensor must exercise effective quality control over the licensed products. Failure to do so will invalidate the licence agreement.
There are provisions in law for the recordal of a licensee. The recordal is mandatory. There is no time frame for a recordal and there is no prescribed form or content for the validity of a licence agreement.
The following documents are required for a recordal:
1. A power of attorney, executed by the licensor or the licensee, notarised and legalised up to an Iranian Consulate
2. The licence agreement, certified and legalised up to an Iranian Consulate
3. The original trademark registration certificate for endorsement of the recordal of the licence agreement
The licence agreement becomes effective and enforceable against third parties upon application date for the entry of the licence agreement into the Register. The recordal of a licence will be published in the Trademark Gazette once after registration.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings and may also call upon the owner to institute infringement proceedings. He may institute proceedings in his own name if the proprietor fails to bring an action within a reasonable period of time after having called upon the licensee to do so. The licensee does not need to cite the trademark owner as co-defendant in any such proceedings
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We would like to thank the following law firms for their assistance in updating the information provided:
Dastani & Dastani LLP, Tehran, Iran
Raysan Patent & Trademark Agents, Tehran, Iran
Dastani & Dastani LLP, Tehran, Iran
Raysan Patent & Trademark Agents, Tehran, Iran