Contrary to the belief of many businesses, Iran is not out of bounds when it comes to the protection and enforcement of IP rights. EU and US sanctions permit rights holders to protect and enforce their IP rights in Iran, as long as they do not deal with any individuals or entities which have been blacklisted. Therefore, it is possible to register IP rights in Iran and take appropriate enforcement action against infringement.
KIA Motors Co took cancellation action against an infringing trademark application filed by Roadstar Co for the trademark KIA. KIA Motors, in claiming ownership of the trademark, argued that Roadstar had applied for the same trademark, intending to exploit its fame. However, Roadstar denied any similarity, stating that the products covered by the two trademarks were different.
Renowned food company Société des Produits Nestlé SA recently requested the cancellation of an Iranian trademark application for the mark NIMO in Farsi, claiming that it was confusingly similar to its own NIDO trademark. While Nestlé was unsuccessful at first instance, the appellate court agreed with its arguments and cancelled the application.
Tescoma sro, a leading producer of domestic and professional kitchen utensils in the Czech Republic, has blocked registration of the mark TESCOMA-PRAKTIK. It successfully argued that the addition of the word 'praktik' did not make the mark distinctive from its own TESCOMA trademark and would confuse consumers as to the source of the goods.
The court has resolved a dispute over an Iranian trademark application for the Latin letter 'E' in red and white, covering goods in Classes 9 and 35. Energy International Company Limited successfully argued that the trademark was identical to its trademark previously registered in Class 35 and requested the addition of Class 9 to its own registration.
Rothmans of Pall Mall (Australia) Ltd, one of Australia's largest tobacco manufacturers and the producer of the prominent Winfield brand, has successfully blocked an application for registration of the BUSINESS ROYALS mark in Iran, on the grounds that it was deceptively similar to its own ROTHMANS ROYALS and ROTHMANS ROYAL trademarks.
Italian footwear company GEOX SpA opposed an application filed by an Iranian eyewear manufacturer to register the GEOX trademark in Iran. The court found that the mark belonged to the Italian company and was in prior use, and ordered that the application for registration be cancelled.
A recent decision upheld an appeal filed by Ketab Aval Co, the Iranian publisher of the Yellow Pages directory and owner of the trademark KETAB AVAL, meaning 'first book', against the registration of the trademark KETAB DOVOM, meaning 'second book'.
Pars Optic Co filed an Iranian trademark application for the word mark DERIGO for sunglasses, glasses and optics in international class 9. De Rigo Vision, an Italian manufacturer of optics and glasses, objected to the application based on its prior use and registration of DERIGO in other countries. The court held that the opposition was justified and De Rigo Vision had prior rights to DERIGO.
Gillette Canada Company brought an action against Hassan Ghasemzadeh and Yousef Darouiyan, the Iranian registrants of the mark DR ORAL for toothbrushes, seeking to cancel the trademark registration. The Iranian Supreme Court upheld the lower courts' findings that the defendants' mark was confusingly similar to Gilette's ORAL-B mark.
Biofarma Societe Anonym, the owner of the DIAMICRON trademark, recently opposed an Iranian trademark application for registration of the word mark DIMICON in Farsi and Latin script. The court agreed that the minor differences between the marks were insufficient to prevent consumer confusion and ruled in favour of Biofarma.
Disney Enterprises filed an opposition against an Iranian company after the latter filed a trademark application for the word MOBARAK in Farsi and Latin script, along with the famous Mickey Mouse cartoon figure, covering goods in various international classes. The court ruled in favour of Disney and ordered the cancellation of the Iranian trademark application.
Cotton Incorporated recently brought an opposition against a trademark application filed by Bandhaye Pezeshki Iran (BPI), an Iranian pharmaceutical company. The mark for which BPI sought registration contained the Farsi word 'nasim' - meaning 'breeze' - and 'cotton' in the Latin alphabet, together with a cotton boll logo. BPI was duly ordered to withdraw its application.
The Colgate-Palmolive Company is one of the largest companies in the world, producing a range of goods including household cleaning products and oral and personal care products. An Iranian court recently rejected an application from a British company to register the trademark COLGATE in the Latin and Farsi alphabets, because the similarity with Colgate-Palmolive's trademark was too great.
The prior registration of a trademark abroad proved an important factor in a recent disagreement between an international electrical machinery company and its sole Iranian representative. Fujian Mindong Defeng claimed that Vedad Kala Co had registered its trademark in an attempt to exploit its international reputation.
The German-based Melitta Group has successfully challenged an application to register the trademark MELISSA in Iran, on the grounds that the similarities between the two marks would cause consumer confusion. The applicant argued that 'Melissa' is an authentic Persian name, but this was outweighed by Melitta's registration of its own brand name in Iran over 25 years ago.
An Iranian court recently found in favour of Grünenthal Group Ltd, a multinational pharmaceutical company, in its case against an Iranian competitor, Karhkanejate Daroupakhsh Co. The dispute arose over the use of the trademark TRAMAX DP for a pharmaceutical product; the multinational insisted the trademark was too similar to its own TRAMAL brand name.
Barilla, the world's leading pasta brand, has successfully challenged an application by a British company to register the trademark BARILLA in Iran in the Latin and Farsi alphabets. The application was rejected in view of the BARILLA mark's long-standing well-known status.
Nokia Corporation recently filed an opposition against an Iranian national's application to register NOKIAN in Farsi covering goods in international class. The Iranian claimed that the NOKIAN mark had its own meaning in Farsi and was not similar in appearance to the mark NOKIA, but the courts were not swayed by this argument.
An Iranian court recently found that the marks ZADITEN and ZATIFENE, registered for pharmaceutical preparations, are not confusingly similar. It pointed out that pharmaceuticals are prescribed by physicians and dispensed by pharmacists who are well educated and would not be confused or misled by the similarity of the marks.