Trademark Registration Laws: Prohibited Marks and Licensing Requirements

Trademark registration is a legal process that enables business owners to obtain exclusive rights over a name, logo, or other distinctive sign that identifies and distinguishes their goods or services. However, trademark law involves various rules and requirements, and understanding them can help applicants navigate the registration process more efficiently.

These rules cover prohibited trademarks, mandatory trademark registration, naming requirements, trademark licensing, opposition and cancellation procedures, and other legal matters.

Prohibited Trademarks

Under Article 32 of the Iranian Trademark Law, certain trademarks cannot be registered. These include:

• Marks that are identical or confusingly similar to a trademark previously registered in the name of another owner for the same or similar goods or services.
• Marks that are identical or highly similar to another trade name, or a translation of it, where such similarity may mislead or confuse consumers.
• Marks that lack the distinctive character necessary to distinguish the goods or services of one business from those of another.
• Marks, words, images, or signs that are contrary to applicable laws, public morality, social norms, or Islamic principles.
• Marks that imitate official emblems, military symbols, flags, names, or other identifying signs belonging to Iran, international organizations established under international conventions, or other intergovernmental organizations.
• Marks that reproduce or contain any of the above-mentioned official signs, even as part of a larger mark, unless the competent authority has authorized their use.
• Marks that may mislead the public regarding the place of production, geographical origin, or source of goods or services.
• Marks that are identical or confusingly similar to the translation of a well-known trade name in Iran for the same or similar goods or services.

When Is Trademark Registration Mandatory?

Under the relevant Iranian trademark legislation, trademark registration is generally optional, unless the government has made registration mandatory for specific categories of goods or services.

In certain cases, registration is required for reasons related to public health, consumer protection, and public interest. If a person or business fails to register a trademark where registration is mandatory, they may not be able to prevent others from using that mark.

Under the applicable regulations, trademark registration has been made mandatory for certain categories, including:

1. Pharmaceutical products, whether sold by prescription or over the counter, including certain medical and veterinary products.
2. Liquids such as syrups, fruit juices, and carbonated mineral water that are sold under a specific name and in designated containers.
3. Cosmetic and hygienic products such as soap, perfume, ointments, and cologne that are applied directly to the human body or skin.
4. Food products such as canned goods, cheese, butter, and milk that are sold under a specific name and in designated packaging or containers.

Trademark Naming Requirements

When selecting a trademark, applicants should consider the following requirements:

• The proposed trademark should not be identical or confusingly similar to an existing registered mark.
• If the trademark contains numbers, the numbers should generally be written in words where required by the applicable registration rules.
• Where applicable, the proposed name should comply with the requirements concerning Persian-language and acceptable terminology.
• The trademark must not contain terms or expressions contrary to applicable laws, public order, or accepted standards of morality.
• The mark should contain sufficiently distinctive elements to distinguish the relevant goods or services.
• Certain protected names, including the names of martyrs and individuals subject to specific legal protections, may not be used without the required authorization.
• The use of the names of certain living poets, scientists, and other public figures may also be subject to legal restrictions or require authorization.

Rights Arising from Trademark Registration

The rights arising from trademark registration, its term of protection, and renewal are governed by the applicable provisions of Iranian trademark law, including Article 40.

The owner of a registered trademark has the exclusive right to use the mark for the goods and services covered by the registration. Unauthorized use by another individual or legal entity may give the trademark owner the right to take legal action.

This protection may cover situations such as:

• Unauthorized use of an identical or confusingly similar mark;
• Use of a similar mark for identical or similar goods or services where consumers may be confused or misled; and
• Other acts that infringe upon the rights arising from trademark registration.

The registration of a trademark does not necessarily prevent the use of the same or a similar mark in every circumstance. The scope of protection depends on the goods and services covered by the registration and the applicable legal provisions.

A registered trademark is generally valid for 10 years from the filing date of the trademark application. The owner may renew the registration for successive ten-year periods by submitting a renewal application and paying the applicable fees.

A six-month grace period is generally available after the expiration of each ten-year period, subject to payment of the applicable late-renewal fee.

Licensing the Use of a Trademark

A trademark owner may allow another individual or company to use the trademark without transferring ownership. Such an arrangement is generally referred to as a trademark license.

The trademark owner may either:

• Transfer ownership of the trademark to another person or company, in which case the relevant trademark rights are transferred to the new owner; or
• Grant a license to use the trademark while retaining ownership of the mark.

For a trademark license to be legally effective, it must be properly recorded in accordance with the applicable registration requirements.

Requirements for Granting a Trademark License

A trademark license should be formally recorded in Iran in accordance with the applicable legal requirements. This helps establish the rights and obligations of both parties.

The trademark owner may receive a royalty or licensing fee in exchange for granting permission to use the mark.

A licensing agreement should clearly define the terms and conditions governing the use of the trademark and should be formally registered where required.

A properly structured trademark license allows the owner to generate income from the trademark while retaining ownership and control, while enabling the licensee to benefit from the reputation and commercial value associated with the brand.

Important: Under Article 44, a trademark licensing agreement must provide for effective control by the trademark owner over the quality of the goods or services supplied by the licensee. If such effective quality control does not exist or is not properly exercised, the agreement may be considered invalid under the applicable law.

Opposition to a Trademark Application or Registered Trademark

Under the relevant provisions of Iranian trademark law, individuals and legal entities may have the right to oppose the registration of a trademark if they believe the application violates the law or infringes upon their rights.

In certain circumstances, where an opponent has not previously registered a similar trademark, they may be required to file an application for their own trademark at the same time as submitting the opposition and pay the applicable fees.

An opposition may be based on circumstances such as:

• A claim of ownership over the trademark;
• Prior rights in a similar trademark; or
• Similarity between the marks that may cause confusion among consumers.

When Can a Registered Trademark Be Cancelled?

A registered trademark may be subject to cancellation under certain circumstances, including:

• The trademark has not been genuinely used for the legally prescribed period and an eligible interested party requests cancellation;
• The trademark is contrary to Islamic principles, public order, or accepted standards of morality;
• The registered mark is identical or confusingly similar to another mark or lacks sufficient distinctiveness;
• The trademark has been used in a manner that unlawfully interferes with the rights of others;
• The trademark reproduces or imitates protected national, military, or official symbols without authorization.

The specific grounds and procedures for cancellation depend on the applicable legislation and the circumstances of each case.

Important Points About Trademark Registration

Trademark registration is an important step in protecting a business’s brand identity and commercial interests. Applicants should consider the following points:

• A separate application is generally required for each trademark.
• Changes to the trademark owner’s address or other relevant information should be properly recorded with the registration authority.
• A registered trademark may be assigned or transferred, subject to the applicable legal requirements.
• If the trademark is intended to be used by authorized parties outside Iran, the relevant licensing or authorization arrangements should be properly documented and registered where required.
• Trademark protection is generally granted for a 10-year period and can be renewed for successive periods.
• Trademark registration is generally optional unless registration is mandatory for a specific category of goods or services.
• Under the applicable provisions, an applicant may withdraw a trademark application before its registration, subject to the relevant procedures.

Conclusion: Understanding Trademark Registration Laws

Trademark registration is an important legal process for protecting a business’s brand identity, reputation, and commercial rights. While registration is generally optional, certain categories of goods and services are subject to mandatory registration requirements.

Marks that are identical or confusingly similar to existing trademarks, lack distinctiveness, violate applicable laws or public morality, or reproduce protected official and international symbols may be refused.

Choosing a distinctive trademark and conducting a proper trademark search and legal assessment before filing can significantly reduce the risk of refusal or opposition.

Frequently Asked Questions About Trademark Registration Laws

Who Has the Exclusive Right to Use a Trademark?

The exclusive right to use a trademark generally belongs to the person or legal entity that has properly registered the trademark in accordance with the applicable law.

What Are the Main Reasons for Trademark Registration Refusal?

Common reasons for refusal include:

• The mark is identical or confusingly similar to an existing registered trademark;
• The mark is descriptive or generic and lacks sufficient distinctiveness;
• The mark is contrary to applicable laws or public morality;
• The mark conflicts with protected national or international symbols;
• The mark cannot sufficiently distinguish the relevant goods or services from those of other businesses.