Court of Appeal orders cancellation of mark based on unfair competition and bad faith

In Parfums Parour v Nouri (Court file No 9309980226300012, Judgment No 9309970226300513, July 7 2015), the Court of Appeal has held that the registration of a trademark identical to a mark already registered in another member state of the Paris Convention constituted unfair competition and bad faith on the registrant's part.

Parfums Parour, a French company, brought an action for the cancellation of the trademark LOMANI in Classes 3, 5, 8, 11, 16, 21, 35 and 39; the mark was owned by an Iranian registrant, Mr Jalil Nouri. The First Instance Court sustained the action and ordered the cancellation of the LOMANI mark on the basis of Parfums Parour's prior use of the mark in Iran and prior registration of the mark in another member state of the Paris Convention (ie, France).

The registrant appealed the decision but the Court of Appeal dismissed the action based on a formality, holding that Parfums Parour, having no prior valid application or registration for the mark in Iran, should have filed a new application for the mark at the time of bringing the cancellation action.

Parfums Parour complied with the Court of Appeal's instructions, and, in order to meet the provisions of the law, filed a new trademark application for LOMANI at the same time as bringing a new cancellation action with the court.

In the new action, the appellate court upheld the first instance decision ordering the cancellation of the LOMANI mark in the name of Mr Nouri, holding that the registration of a trademark identical to a mark which has already been registered in another member state of the Paris Convention constituted unfair competition and bad faith on the part of the registrant, and was a basis for the cancellation of the mark in Iran.

Parfums Parour’s application for LOMANI will proceed to registration once the contested trademark has been cancelled and removed from the register.

Mohammad Badamchi, HAMI Legal Services, Tehran

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