Flurry of trademark rulings issued

In recent weeks, the Iranian courts have issued a series of rulings in trademark cases.

In VOV Cosmetics Co v Trademark Office (Case 976/3/81), the Third Branch of the Court of Tehran has reversed a Trademark Office (TO) decision to reject the registration of VOV as a trademark.

VOV Cosmetics Co Ltd, a Korean cosmetics manufacturer, filed an application to register VOV as a trademark for goods in Class 3 of the Nice Classification. The TO ruled that the mark was substantially similar to the VO5 mark registered for goods in Classes 3 and 5 by US firm Alberto-Culver Company. It therefore rejected the application.

VOV Cosmetics filed an appeal against the decision and argued that its mark was sufficiently distinctive and was unlikely to cause confusion. It also contended that the trademarks coexist in other countries without any difficulties.

The court reversed the TO's decision and upheld VOV Cosmetics' appeal.

The same court has also upheld Nike International's opposition to the registration of JORDAN and a device in the shape of a basketball player in Nike International v Qeshm Shan Hao Trading Company (Case 501/3/81).

Qeshm Shan Hao Trading Company, an Iranian firm, filed the registration application to cover shoes in Class 25. The TO found no similarity with the trademarks on file and, in spite of opposition from Nike International, allowed registration. Nike appealed.

In order to meet legal requirements and strengthen its opposition, Nike applied for registration of the mark JORDAN and a device in the shape of a basketball player for clothing, footwear and headgear in Class 25.

The court upheld Nike's opposition and allowed its application to register the JORDAN mark and device in its own name. It concluded that Nike had rights in the trademark, based on its prior and continuous worldwide use of the mark.

Meanwhile, in Texas Rice Export Inc v Agah (Case 1101/3/81), the Court of Appeal has upheld a decision to refuse registration of AGHACHI and AVACHI and related device for goods in Class 35 and Classes 29, 30 and 35 respectively.

The registration application, filed by an Iranian individual named Keyvan Agah was opposed by Texas Rice Export Inc based on a registration for goods in Class 30 of an APACHE trademark and a device similar to that set out in Agah's application. It claimed that (i) the marks were confusingly similar to its APACHE mark, and (ii) the application had been filed in bad faith. To support its claims of bad faith, Texas Rice argued that Agah had previously applied, and failed, to register the mark APACHE and device for goods in Classes 29, 30 and 35.

The TO rejected Agah's application and, on appeal, both the Third Branch of the Court of Tehran and the Court of Appeal upheld its decision.

Mohammad Badamchi, HAMI Legal Services, Tehran

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