By Rachel Armstrong
Sunday 27th of November 2016.

Introduction

As a result of the US and other nations looking to ease the sanctions imposed on Iran, the international business community is once again starting to look at the opportunities presented by the largely untapped market of Iran. Although the US and EU sanctions relating to Iran did not previously prohibit the registration or enforcement of IP rights in Iran, brand owners have tended to proceed with caution in Iran. Although some hesitancy remains, there has been a noticeable increase in international brand owners looking to protect their intellectual property rights in Iran, as a prelude to entering the market.

Due to this shift in focus towards Iran, now is an opportune time to look at some of the potential issues that brand owners face when protecting their rights in Iran.

This article focuses on the particular issue of opposition procedures in Iran with focus on the process for opposing international registrations (“IRs”), that can result in practical challenges.

Overview of the opposition process in Iran

The opposition procedure in Iran is similar to that of many countries in the Middle East / North Africa (“MENA”) region. Once a trade mark application has been examined, accepted and published in the Iranian Trade Mark Gazette, any interested party may, within 30 days after the publication date, submit an opposition claiming that the application should not be permitted to proceed to registration. This is the process followed for both national and international filings in Iran.

Delays in examination

On the face of it, the process is straightforward. However, what happens when there is a delay in the examination, acceptance and publication process – such as is the case for IRs?

With the Iran Trade Mark Office prioritising national applications, there have been sporadic delays in the examination of IRs. It can take anywhere between three months and two years for an IR application to be examined.

Such delays can mean that IRs can take several years to be published in Iran for third party opposition. This delay creates a particular issue when it comes to international applications. On one hand, IRs may not published for third party opposition in Iran; on the other hand, the usual 18 month period for the Iranian Intellectual Property Office (“IIPO”) to notify WIPO of a refusal still applies in the background.

In accordance with Article 18ter of the Madrid Protocol, in the event that no provisional refusal has been recorded prior to the expiry of the refusal period, the application will be considered registered. Therefore, the delay in examination can result in a mark being deemed registered in Iran without third parties having had the opportunity to oppose the application (or the IIPO examining the application).

Another issue – publication

In addition to the potential issues faced by the delay in examination of IRs, if the application does happen to be examined within a shorter time frame, say three months, the IR application still has to overcome another hurdle: publication.

There are a number of issues with the publication of IRs in Iran. This is because, at the current time, international applications, once accepted are not being published with national applications in the Iranian Trade Mark Gazette. The only way an IR would be published in the Iranian Trade Mark Gazette is if the applicant specifically instructs a local agent to pay the publication fees to the IIPO (that is, in addition to the official fees already paid to WIPO for the IR).

Therefore, unless the applicant is prepared to pay additional fees, the application will not be published in the Iranian Trade Mark Gazette, removing the opportunity for interested third parties to oppose. Unless the applicant specifically requires the registration in Iran (for example, for enforcement purposes), the applicant is likely to allow this process to take its course and wait for the application to be deemed registered after 18 months by virtue of Article 18ter of the Madrid Protocol.

Alternative publication

The IIPO has, however, implemented a separate publication mechanism for IRs, which are published in an electronic magazine. However, as the electronic magazine is not provided for in the 2008 Patents, Industrial Designs and Trademarks Registration Act of the Islamic Republic of Iran (the “Iranian Trade Mark Law”), there is a concern that any oppositions filed on the basis of publication in the electronic magazine may well be deemed invalid on the basis that the electronic magazine does not constitute “publication” for the purposes of the opposition provisions of the Iranian Trade Mark Law.

The Iranian Trade Mark Law is due to be updated to provide a legal basis for publication in the electronic magazine for opposition purposes. However, as it currently stands, there is no stipulated timeframe in which the necessary amendments to the Iranian Trade Mark Law will be made.

It is therefore possible that IRs will automatically mature to registration under the WIPO rules when the 18 months period expires, without an opportunity for third parties to oppose the marks.

In addition, there are currently no provisions allowing third parties to oppose or otherwise object to a trade mark application or IR before publication in the Iranian Trademark Gazette.

Recent developments

Due to the issues with the process for IR applications in Iran, the IIPO has recently confirmed that publication of IRs in the electronic magazine will now be considered a valid publication to enable interested third parties to oppose.

In practice, this means that, interested parties will need to monitor both the electronic magazine (as the source which automatically publishes accepted IR applications) and also the Iran Trademark Gazette in case the applicant take the extra step to pay additional publication fees directly to the IIPO or there is a change in practice and the IIPO re-commences publishing IRs.

What does this mean in practice?

On the basis of the current practice outlined above, brand owners should consider implementing a watch service for both the Iran Trademark Gazette and the electronic magazine in respect of all trade marks that it is interested in protecting in Iran.

Should potentially infringing marks not be opposed and subsequently mature to registration, the only remedy available to brand owners is to file a cancellation action before the courts in Iran.

The opposition procedure for IRs is still evolving procedure, and one that we hope to see clarified with the introduction of the amended Iran Trademark Law. Due to the projected increasing importance of Iran to business globally, we hope to see the requisite changes implemented in the near future.