Trademarks – Reza Badamchi & Associates

Trademarks

Every business needs a separate identity and trademark serves this purpose of differentiating between the two businesses. Over a period of time a trademark becomes distinctive to the business and immense goodwill is attached to it. Therefore, the proprietors need to protect their business against the misuse of the trademarks by persons of mala fide intentions.
Reza Badamchi & Associates supported by highly experienced team of Attorneys and Agents assist our valuable clients in order to protect their business from unscrupulous users of the trademarks. Our practice includes searching, filing, prosecution, opposition and infringement litigation. Apart from this, we also provide watch service for our clients about the occurrence of similar trademarks in the market or applied for registration.

Filing Requirements
Renewal
Recording Assignment and Merger
Recording License Agreement
Recording Change of Name
Recording Change of Address
General Information

Filing Requirements

A Power of Attorney legalized up to the Iranian Consulate.
Notarized Summary of Official Corporate Records if the applicant is a company.
The name and address of the applicant.
The list of the goods and the classes pertaining thereto.
A priority document if priority is to be claimed.

Renewal

The registration of a trademark may be indefinitely renewed for periods of ten years on application to be made preferably within 12 months before expiration date. There is a 6-month grace period within which late renewal application can be filed. It is important to note that late renewal applications during this grace period are subject to additional fees, including a 50% fine for the delay. In this regard the following documents are required.

Certified and legalized Power of Attorney by the Iranian consulate.
Notarized Summary of Official Corporate Records if the applicant is a company.
A copy of the Iranian certificate of registration or renewal.

Recording Assignment and Merger

Certified and legalized Power of Attorney by to the Iranian Consulate from assignee.
Certified and legalized version of deed of assignment by the Iranian Consulate.
Notarized Summary of Official Corporate Records if the applicant is a company
Original and valid Iranian registration certificate for endorsement of assignment

Recording License Agreement

Certified and legalized Power of Attorney by the Iranian Consulate from the licenser and licensee.
Certified and legalized license agreement by the Iranian Consulate.

Recording Change of Name

Certified and legalized Power of Attorney by the Iranian Consulate in the owner’s new name.
A certificate showing the relevant change of name legalized by the Iranian Consulate.
Notarized Summary of Official Corporate Records if the applicant is a company.

Recording Change of Address

Certified and legalized Power of Attorney by the Iranian Consulate.
A certified and legalized certificate showing the relevant change of address.
Notarized Summary of Official Corporate Records if the applicant is a company.

General Information

– Registerable Trademarks

Collective marks: Collective marks may be registered in Iran. For the registration of a collective trademark (intended to identify the product of a society, a town or city, or a district of a country), a certificate issued by a competent authority attesting the right of use of the trademark by the manufacturers of the goods covered by that mark must be filed.
Three-dimensional marks: Three-dimensional marks may be registered in Iran. Applicants must present different dimensions of the mark so that it may be clearly represented.
Color marks: Color marks may be registered in Iran. Applicants must clearly indicate the colors that are being claimed. The Office does not require certain specific standards and mere description of the claimed colors is sufficient. The Office classifies color marks according to the International Classification of the Figurative Elements of Marks.

– Non-Registerable Trademarks

If it is not capable of distinguishing the goods or service of one enterprise from those belonging to another enterprise.
If it is contrary to Rules of Sharia, public order or morality.
If it is likely to mislead the public or trade centers, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics.
If it is identical with, or is an imitation of or contains as an element, an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any State, intergovernmental organization created under an international convention, unless authorized by the competent authority of that State or organization.
If it is identical with, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well known in Iran for identical or similar goods or services of another enterprise.
If an identical or similar mark has been registered or become well know for services that are not similar provided that customarily there is a connection between the use of the mark and the owner of the well know mark and that its registration is likely to damage interests of the owner of the well-known mark.
If it is identical with a mark registered in the name of a different proprietor with an earlier filing date or a priority right in respect of the same goods or services or for goods and services that, due to connection or resemblance, is likely to deceive or cause confusion.

– Classification System

Iran uses the International Classification of Goods and Services for the Purposes of Registration of Marks (Nice Classification).
The Ministry of Justice has passed a new law concerning the registration of service marks. This law, published in the Official Gazette No. 16966 and dated May 31, 2003, came into effect on June 15, 2003. In accordance with the provisions of this law, applicants may register trademarks for services pursuant to the international classification system from class 35 to 45. Class 35 has been so far reserved for types of services.

– Certified Copy of Home Registration

In the case of a trademark previously registered in a foreign country, certified copy of such registration in the original language with a non-legalized translation into Iranian language will be required.

– Publication

The trademark application will be published twice in the Official Gazette.

– Duration

The duration of the registration of a trademark shall be 10 years as from the filing date of the application for registration.

– Use Requirement

If an owner of a mark, his legal agent, or successor does not use it without any legitimate reasons in Iran or abroad within the period of three years from the registration date, such mark may be canceled if applied for by any concerned party.
Trademark owners are not required to submit any proof of use of the mark, unless a third party files a request for cancellation on the ground of non-use during the term indicated above.

– Cancellation

If the owner of a mark, his legal agent, or successor does not commercially use the mark during three years from the date of registration, any interested person may request the cancellation of such mark without mentioning any grounds therefor whether in or outside Iran.