Intellectual Property Law Dr. Behrooz Akhlaghi and Dr. Saeed Habiba,
Associate Professors, Law Faculty of
The University of Tehran
Tehran – IRAN Intellectual property is a brood concept that covers several types of legally recognized rights arising from some type of intellectual creativity. Intellectual property typically includes:
Copyright and related rights
Copyright and related rights
In Iranian Law, copyright and related rights are protected under The Law for Protection of Authors, Composers and Artists Rights (1970) and The Law of Translation and Reproduction of Books, Periodicals and Audio Works(1973). Also these works on the Internet are protected under the Electronic Commerce Act (2003). However, Iran has not acceded to any International Convention or Agreement on Copyright and Related Rights Protection (e.g. Bern and Rome Convention). Therefore there are some lacuna and contrary regulations with international conventions in our legal system. For Accession to WTO, Iran must accede to Bern Convention or admit Articles 1 to 21 of this Convention.
B- Industrial property law in Iran stems from:
The Paris Convention for the Protection of Industrial Property, Stockholm (1967 and 1979));
Madrid Convention and Protocol;
Lisbon Agreement for the Protection of Appellations of Origin and their International Registration;
Bilateral investment treaties;
Patent and Trademark Registration Act 1931 ("the Act");
Regulations for the Execution of the Patent and Trademark Registration Act 1958 ("the Regulations");
Software Act 2000 (Protection of Rights of Computer Software Act 2000);
Electronic Commerce Act for the protection of some industrial property in E-Commerce (on the Internet) (2003);
Appellation of Origin Act (2004);
Islamic Penal Code (1998);
Civil Liability Act (Articles 1 & 8) (1960);
However, the above list is not exhaustive. The Iranian government has adhered to a number of other international conventions and a committee composed of intellectual property law experts is working on a Draft Act on the Protection of Patents, Industrial Designs and Trade marks and names prepared by the International Bureau of the World Intellectual Property Organization (WIPO), which will soon be submitted to the Islamic Consultative Assembly.
After years of study and investigation, and having reviewed the positive and negative impacts of accession to the World Trade Organization (WTO), Iran finally decided to join the organization and in April 1996 submitted its application for membership. Although Iran's membership has been opposed by the US government, analysts are of the opinion that Iran will accede to membership in the next few years. Iran's membership in WTO as the official receiver was accepted in May 2005.
For the purposes of accession to the WTO, Iran must meet a number of prerequisites, including membership of WIPO. Upon accession to WIPO, Iran will be admitted to a number of conventions relating to this organization, inter alia, the Rome and Berne Conventions and the Treaty on Intellectual Property in Respect of Integrated Circuits and also the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). .
PROTECTION OF INDUSTRIAL PROPERTY
This Paris Convention provides that the protection of industrial property has as its objects:
indication of source; or
appellations of origin; and
the repression of unfair competition (Article 10(2)).
Apart from the provisions of the Convention, Iranian laws and regulations provide specific legal rules pertaining to a number of the above subjects. Not all of the above issues are covered by the laws of Iran. Therefore, by referring to the Conventions and other statutory instruments already mentioned, the existing lacunae should be filled.
Article 26 of the Act provides that, "Any new patent or discovery in different fields of industry or agriculture entitles the inventor or discoverer to an exclusive right prescribed in this Act…". The first condition that the Act stipulates for granting rights emanating from a patent or discovery is registering the patent with the Industrial Property Registration Office.
The patents shall only be issued for patentable inventions – that is, those meeting the following requirements:
There should be novelty of invention, i.e. it should be a new way or method of using existing knowledge to obtain a different result or product in industry or agriculture (Article 27).
The invention must have industrial applicability. Industrial application is to be interpreted in a broad sense. Although Article 27 refers only to industry and agriculture, practice shows that industrial application includes application in commerce, handicraft, fisheries and services in other words, by definition an invention can be made or used in all such fields.
However, no patent application is acceptable if the subject of the patent is:
Upon application, patents are granted in a formal procedure governed by certain legal provisions. The invention must be clearly and fully described in Persian. The application should be dated and signed. Comprising specific points such as name, profession, address and nationality of the applicant, the subject of the invention, in addition to any other specifically requested information. The Registration Office examines whether the formal requirements of the application are fulfilled and the following required annexes are attached:
a detailed description in triplicate of the invention or of the new process for which a patent is requested;
drawings necessary for comprehension of the mentioned description, in triplicate;
a receipt from the Registration Office, attesting to the payment of the required amounts;
a title of attorney, if the application is submitted through an attorney.
In Iran, contrary to many other countries, the Registration Office does not examine whether the grant of a patent is justified on substantive ground. Such an examination requires sophisticated human and technical resources which are not available. Moreover, for carrying out such an examination, the personnel must have an advanced scientific training, enabling them to search the patent documentation and technical literature collection to verify the applicant's claim. A lack of the necessary resources does not permit the Registration Office to establish a system of substantive examination. Therefore, it is up to the industrial and enterprise sectors to keep an eye on patent registered to ensure that their rights are not hindered.
RIGHTS EMANATING FORM A PATENT
Under the Act, a patent confers upon its owner the right to decide who shall and who shall not use his patented invention. Hence, he may transfer, in whole or in part, the ownership or right of use of his invention to another person. Such a transaction must be made by an official document and entered into the register of the Registration Office.
Furthermore, the owner of a patent has the right to prevent others form exploiting his invention by manufacturing or importing the patented product or using the patented process or by putting on the market products manufactured in violation of the rights conferred upon him (Article 33). Consequently, any form of infringement of patent rights whether deliberate, through pirating or counterfeiting of the patented invention, or accidental by producing the same invention via a different route, may subject the person committing the infringement to court proceedings.
REMEDIES AVAILABLE TO THE PATNET OWNER
The remedies available under Iranian patent law constitute two forms, namely civil sanctions and criminal sanctions. These sanctions are provided to ensure the respect and deference of the exclusive rights of the patent owner.
Civil sanctions are available in all cases of infringement. The courts of Iran have the competence to issue an injunction ordering the person committing the infringements to refrain from so doing or to award damages to the patentee for any loss suffered or any benefits form which the patentee is deprived. Also in these cases, Article 1 of Civil Liability (1960) is applicable.
The criminal sanctions for infringing patent rights are not clearly defined in the laws of Iran. Apparently there is no other solution but to resort to general legal rules. However, Article 37 of Draft Act provides certain criminal sanctions.
Article 1 (2) the Paris Convention determines the utility models as industrial property; but in PCT, they are protected under patents international system.
Utility models are not mentioned in Iranian law. However, Iran is a party to the Paris Convention and has to implement Article 11 of the Convention, which states:
The countries of the Union shall, in conformity with their domestic legislation, grant temporary protection to … utility models, industrial designs .., in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them.
In Iranian legal system, utility models are registered as patents in the Industrial Property Registration Office.
Although Article 5 bis of the Paris Convention obligate the contracting parties to have Industrial designs protection in their national laws, Iranian laws are silent on industrial designs. One of the practical solutions being applied by owners of industrial designs is that they register their designs as trademarks. Although the definition of a trademark does not correspond with that of an industrial design, this solution has never been objected to by the Industrial Property Registration Office.
As mentioned above, Article 11 of the Convention provides a limited protection for industrial designs in Iran.
Article 14(a) of Draft Act defines the industrial designs. This Article protect any compound of lines or colures or three-dimension shapes with lines or without them provided that this compound or shape makes from an industrial product or a manual industry and it is used as a design for an industrial product or manual industry.
The Act gives the following definition of a trademark:
Any type or form of marking, being a drawing, picture, number, wording, seal, phrase, special wrapping, etc. adopted with the purpose of distinguishing or specifying a particular industrial or agricultural product…
Under the above definition, a trademark can be used for four main purposes: the distinguishing of marked goods, their origin, their quality and their promotion in the marketplace. The second part of the above Article refers specifically to the origin of the marked goods:
A trademark may be adopted to distinguish or specify the product of a group of farmers or industrialists, or commercial firms, or a city or town, or a region of the country.
It should be emphasized that origin in the above context refers to the enterprise that produces the product. It is not, however, the function of a trademark to indicate geographical origin of a product. As will be seen below, it seems that the definition mentioned in Article 1 also covers appellations of origin.
Article 21 of Draft Act gives the following definition of a trademark:
Mark means any perceptible marking which can distinguish goods or services of natural or legal persons.
This definition only covers the perceptible marks; therefore, this Draft does not protect the invisible marks e.g. sound marks.
PROTECTION OF A TRADEMARK
Under Iranian law, a trademark can be protected on the basis of registration. Registration of a trademark must contain the following information:
date (day, month and year) of registration in words;
name, business, address and nationality of the owner of the trademark and of his attorney (if the application has been made through an attorney);
name and description of the product or category of products for which the trademark has been registered;
a brief description of the trademark, with specific reference to the parts that the owner wishes to reserve for his own use exclusively;
the registration fee;
The following items are subject to compulsory registration: pharmaceutical, medicinal, veterinary and toilet preparations and the packaging of foodstuffs and beverages.
However, according Article 5 of the Act, the following signs or marks are not registrable:
national flags and the ex-Royal standard of Iran;
emblems of the lion and sun;
decorations, meals and emblems of Iran;
portrait of the ex-king and the ex-crown prince;
words and expressions referring to Iranian authorities, such as the Government;
marks contrary to public order or morality.
The protection granted by law to trademarks is valid for 10 years and can be renewed several times indefinitely for the same period on the tenth anniversary of the date of the previous filing. For late renewals, a grace period of six months is allowed. The sanctions for failing in renewal of a mark during the said period will be expiration of the validity of the trademark.
Assignment of a trademark
If the owner of a trademark transfers his rights in the trademark by legal means, in the application of changing the name of the trademark owner the following points should be mentioned:
the number of registration in Iran;
the name, address and nationality of the new owner;
the name and address of his legal representative in Iran.
Legal documents or the transfer, the power of attorney and the certificate of registration in Iran must be annexed to the application. In case the assignment is registered outside Iran, a certified copy of the excerpt of the registration carried out by the foreign trademark office will be sufficient.
Where the transfer of rights arises from the issue of a license, it can be registered in Iran. For this purpose, a written request of the owner of the trademark or his authorized representative or the licensee and the receipt of payment of the registration fee and of the advertisement charges must be annexed to the application. The advertisement contains the name of the trademark owner, licensee, the number of the trademark and a summary of the contents of the license agreement. The Registration Office is responsible for registration of the application as well as the publication of the advertisement.
OBJECTION TO A TRADEMARK
After submission of the registration application, any person who believes that the trademark for which the application is submitted belongs to him may object to the application. In the same way, if a person believes that the trademark is sufficiently similar to his own trademark, he must submit his objection letter to the Registration Office or the competent court. In either of the above cases, if the person who objects has not already registered the trademark in his name simultaneous with his objection, he should apply for registration of the trademark under dispute. In case the objection is against a registered trademark, the person who has raised the objection must directly take his case to the competent court in Tehran to request cancellation of the registration. Today, there is an allocated chamber of the public court for proceeding of these claims.
The Article 22 of Act provides that the objection to a registration must be under taken within three years from the date of registration of a trademark. The only exception to the above rule is where it can be proved that the applicant was at the time of registration aware that the trademark had been continuously used by the objector or by another person who has transferred the trademark to the objector. Today, three-year limitation has been abrogated; also, Draft Act does not provide it.
CANCELLATION OF REGISTRAITON
Under Article 13 of the Regulations, any interested party may apply to the competent court for the cancellation of an Iranian registration of a trademark which has not been utilized for commercial purposes without a plausible reason within three years form the date of registration. The meaning of "interested party" in the above Article is not clear, but it would appear that the expression refers to any person who has a legitimate interest in cancellation of the trademark, such as a person who wants to register it in his own name after cancellation of the previous registration.
CHANGES IN TRADEMARK
Any changes pertaining to a trademark or class of merchandise will not be officially recognized in Iran unless registered by the Registration Office, it will be affected as per an official application signed by the owner of the trademark or his legal representative.
The application must be made in triplicate, indicating the changes in detail. All the relevant documents including the payment receipt of the registration fee must be attached to the application.
Protection of Trade Mark in E-Commerce Act
Article 66 of Electronic Commerce Act provides the protection of trade marks and domain names on the Internet. Also, Article 76 provides the imprisonment and the fine for the infringement of right of owner trademark.
A service mark is defined as a sign used by enterprises offering services, such as hotels, airlines and restaurants in order to distinguish their services from those of other enterprises.
The Act does not make clear reference to service marks. In fact, the definition of Article 1 refers specifically to industrial or agricultural product. However, a classification of merchandise is annexed to the Regulation which includes in its class 35 Marks reserved for services. By taking the above texts into consideration as a whole, it can be inferred that Article 1 of the Act should be interpreted in a broad sense in order to cover service marks. In practice, this interpretation is accepted and implemented.
In TRIPS Agreement, service marks have been protected and Iran for conformity with the Agreement must provide particular regulations. It is necessary to say that Article 21 of Draft Act covers both trademarks and services marks.
A trade name is the name or designation identifying the enterprise of a natural person or legal entity. Article 576 through 582 of the Commercial Code are the only statutory regulations that can be referred to in this field in case of need.
Although according to Article 576, registration of a trade name is optional, it seems that under Article 578, protection of a trade name is conditioned upon its registration therefore, non-registered trade names are not protected under Iranian law, from a practical point of view, it is interesting to add that although in Article 582 it is expressly stated that the Ministry of Justice shall, in accordance with by-laws, set the procedures for the registration of trade names, their announcement and the principles relating to suits regarding trade names, after almost 70 years, the Ministry has yet to approve any regulations in this regard. The practical result of this failure is that in Iran, trade names are being registered under the cover of trademarks.
TRIPS Agreement does not express the trade names, but since the contracting parties should respect Articles 1 to 12 and 19 of the Paris Convention(1967), therefore they should follow the requirements of Article 8 of this Convention. But Iran – as a member of the Paris Convention – does not have any particular system for the protection of trade names and owners often register their trade names as a trade mark.
However, Article 29(a) of Draft Act provides the particular regulation in the field of trade names.
INDICATION OF SOURCE AND APPELLATION OF ORIGIN
An indication of source refers to any denomination, expression or sign indicating that a product or service originates in a country, region or specific place. Appellation of origin, on the other hand, denotes a denomination of a country, region or specific place which designates a product originating there, the characteristic qualities of which are due exclusively or essentially to the geographical environment. Section 3 of TRIPS Agreement protects Geographical Indications which include Indication of Source and Appellation of Origin.
Although none of the above expressions have been referred to in Iranian law, it seems that under Article 1 of the Act they may be registered in Iran. According to Article 1:
A trademark may be adopted to distinguish or specify the product of a group of farmers or industrialists or commercial firms, or a city or town, or a region of the country.
In 2004, the Protection of Geographical Indications Act was approved and Article 1 (a) of this Act expressly defines the geographical indications.
PROTECTION AGAINST UNFAIR COMPETITION
In Accordance of Article 10 bis (2) of Paris Convention, Unfair competition constitute any competition that is, contrary to honorable industry or trade.
The only legal provision in Iranian law concerning protection against unfair competition was Article 244(A) of the abrogated Penal Code of Iran, which prescribed:
Unfair competition is forbidden and its perpetrator shall be punished by three to six months of imprisonment and payment of a fine of between rials 1000 and rials 5000 or to one of the (above) punishments.
Unfortunately, Article 729 of the Islamic Penal Code (1998) abrogates all of the provisions of the pre-Islamic Revolution Penal Code. Consequently, one can only resort to Articles 1 and 2 of the Civil Responsibility Act 1960, which provide limited civil sanctions for unfair competition:
Article 1- Any person who, without legal authority, intentionally or as a result of carelessness, inflicts an injury or loss to body, health, property, freedom, dignity, commercial reputation or any other right created for individuals by law, which causes tangible or intangible loss to another persons, shall be responsible for the payment of compensation for the damage arising out of his act.
Article 2- Where the act of the party inflicting the injury or loss has resulted in either tangible or intangible damage to the injured party, the court, after trial and establishing the facts, shall issue a judgment against him to pay compensation for the said damage.
Clearly, filling the existing gaps in intellectual property law in Iran is painstaking and time-consuming.
Industrial property includes Trade Secrets and Designs of Integrated Circuits. There are not any special articles which protect these objects. However, Electronic Commerce Act (Articles 62, 64 and 65) covers the protection of them on the Internet.
IRAN’S ACCESSION TO WORD TRADE ORGANIZATION (WTO)
One of the greatest evolutions in political, economic and legal domain of Iran is the decision adopted by the Iranian Government for accession to WTO. At last, after years of study and investigation, and having made and estimation of positive and negative impacts of the accession to this global Organization, Iran preferred to accede to this Organization.
It is about ten years that has submitted its application for being a member of WTO. Although the issue of membership of Iran was opposed by the Government of United States of America. However, due to some developments Iran has been accepted to be member and the analysts are of the opinion that the membership of Iran in WTO will be realized in the near future.
Iran, for the purpose of accession to WTO must meet some pre-requisitions; among the measures for satisfying those requirements, currently, the issue of Iran's membership in the World Intellectual Property Organization (WIPO) is being discussed in the Islamic Consultative Assembly, the Islamic Republic of Iran Parliament. Upon accession to WIPO, Iran will be admitted to many Conventions relating to this Organization, inter alia, the Agreement on Trade Related Aspects of Intellectual Property Rights – TRIPS Madrid and Bern Conventions.