Successful opponent forced to bring court action due to administrative error

Sheraton International Inc has been successful in its attempt to cancel an identical registration for SHERATON in Classes 35 and 39 of the Nice Classification.

On March 13 2007 an Iranian individual, Farhad Faramarzi, filed an application for SHERATON in English and its Persian transliteration for tourism, business, consulting, administration, information, advertising, marketing and similar services in Classes 35 and 39.

The application was examined and allowed for publication in the Trademark Gazette. Sheraton International filed an opposition against the application during the 30-day opposition period based on its prior registration for SHERATON in Iran.

Notwithstanding the fact that the opposition was successful, the mark proceeded to registration.

According to Trademarks Office practice, once a trademark matures to registration, the only competent authority to cancel the registration is the Court of Tehran.

Although the registration of the mark was an administrative error, Sheraton International had no alternative but to bring an action before the court to cancel the registration of the mark, even though it had been successful in the opposition proceedings before the Trademarks Office.

The court ruled in favour of Sheraton International and ordered the cancellation of the mark based on Sheraton International's prior rights in the SHERATON mark in Iran (Judgment No 910 997 0226 300 500, Court File No 900 998 0226 300 926).

The first instance court’s judgment became final and neither party appealed the decision.

Mohammad Badamchi, HAMI Legal Services, Tehran