Appeal Court rules on commencement of opposition period

In Octanorm-Vertriebs GmbH v Octiran Ltd (Case 1899), the Iranian Court of Appeal has upheld the cancellation of the defendant's trademark registration because the defendant failed to prove that the plaintiff knew of the registration but failed to file an opposition claim within the three-year period prescribed by Article 22 the Iranian Trademark Law.

Octiran was licensed to sell Octanorm's products in Iran. However, Octiran went further, registering the trademark OCTANORM & design in its own name in the early 1990s. Many years later, upon discovering that Octiran had registered the mark, allegedly in bad faith, Octanorm brought proceedings to have the registration cancelled. Octiran, however, argued that the three-year period for filing a cancellation claim, which begins on the date of registration, had expired.

The court of first instance ruled that the three-year period prescribed by Article 22 begins to run on the date of registration, but only against parties in opposition who know of the registration. Since Octiran provided no evidence that Octanorm actually knew of the registration on the date of registration, the court had no other option but to accept Octanorm's claim that it brought cancellation proceedings as soon as it learned of the registration. The court therefore ordered the cancellation of the mark.

Octiran appealed but the appellate court upheld the lower court's decision.

Mohammad Badamchi, HAMI Legal Services, Tehran

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