CANARY mark partially cancelled for non-use

The Court of Appeal has upheld an action brought by Virgin International Limited for the partial cancellation of a trademark registration based on non-use (court file No 9109980226300779; judgment No 9209970221201166).

Under Article 41 of the Iranian Trademark Law, a registered trademark may be vulnerable to cancellation if it has not been put to genuine use within three years of the registration date.

UAE company Virgin International Limited filed an application for CANARY for goods and services in Classes 21, 25, 27, 28, 29, 30, 32, 35 and 39 of the Nice Classification. The application was refused based on a prior registration for CANARY in Persian transliteration.

The applicant carried out an investigation into the use of the cited mark in business. As no evidence of use was revealed, it brought a cancellation action based on non-use of the cited mark in business in Iran.

The defendant, Mr Ghasem Taherkhani (an Iranian individual), submitted a sample of products in Class 21, claiming that the use of the mark for goods in Class 21 constituted use of the mark and that the registration should remain on the register.

The First Instance Court accepted the defendant’s arguments and dismissed the cancellation action, holding that use of the mark for goods in Class 21 constituted use of the mark in Iran and the mark should be allowed to remain on the register.

The applicant appealed the decision before the Court of Appeal, seeking the cancellation of the cited CANARY mark in all classes, except Class 21.

The Court of Appeal allowed the appeal, reversed the lower court judgment and ordered the partial cancellation of the cited mark based on non-use on the grounds that no evidence of use of the mark in Classes 25, 27, 28, 29, 30, 32, 35 and 39 had been submitted.

The Court of Appeal's judgment is final; the notice of cancellation was published in the Trademark Gazette on February 1 2015.

Mohammad Badamchi, HAMI Legal Services, London

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