New IP laws come into force
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On March 10 2009 the Iranian IP Office introduced implementing regulations which bring into effect the new copyright, industrial design, patent and trademark laws that were originally published in April 2008.
The regulations clarify the legal position in Iran in respect of IP rights. There had been confusion over the past year, as the office applied the previous laws, while the Iranian courts implemented the new laws. Under the regulations, the new laws will be implemented by the office with immediate effect, as well as by the Iranian courts. Consequently, a number of changes will come into force.
First, trademark applicants will have 60 days from the filing of their application to complete the relevant formalities (eg, the filing of the original power of attorney). A 60-day extension may be granted at the discretion of the office. Rights holders should be aware that the office may refuse to grant an extension; therefore, it is advisable to work to the initial 60-day deadline if the supporting documents are not available at the time of filing.
Moreover, the new trademark legislation allows for the first time the cancellation of a trademark on the grounds of non-use if the mark has not been used for an uninterrupted period of three years. This change is especially important for foreign rights owners with mature portfolios in Iran which may not have used, or been able to use, their marks in the past three years or more in the country.
The trademark legislation also introduces new opposition procedures. While the law should offer protection to well-known trademarks and trade names, it is now compulsory for the opponent to file a trademark application simultaneously with the opposition proceedings if the opposition is based on an unregistered right. If the opponent fails to do so, the opposition is likely to be dismissed.
In addition, it will be possible to apply for the renewal of a trademark within the 12 months preceding the renewal date. A six-month grace period has also been introduced for the renewal of trademark registrations. However, in this case applicants will incur additional late filing fees.
Another interesting feature of the new legislation is that published trademarks will benefit from the same protection as registered marks. Therefore, trademark applicants wishing to take action against third parties will be able to do so at a much earlier stage - that is, before the mark is registered. However, rights holders will need to balance the interest in taking swift action against an infringer against the risk that the latter may file a retaliatory opposition.
Additionally, the period during which IP rights holders may appeal decisions of the office to the courts has been increased to two months.
The changes also affect other IP rights, including patents, copyright and industrial designs. For the first time, it will be possible to register industrial designs in Iran. The registrations will last for a maximum of 15 years, with renewal fees paid every five years. Some of the procedures introduced for trademarks (eg, the grace period for renewals and the 60-day period to file supporting documents for new applications) will also apply to patents, copyright and industrial designs. Importantly, the penalties for the infringement of all types of IP rights have been increased: the courts may now impose fines ranging from $1,000 to $5,000 and custodial sentences of 91 days to six months.
Finally, in addition to these changes to the IP laws, the office has increased its official fees significantly. The increase exceeds 100% in many cases.
Jon Parker, Rouse, Dubai
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