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A Handy Insight to Iran IP Law

Iran as a member of WIPO and party to the Convention for the Protection of Industrial Property (Paris Convention), the Madrid Agreement and the Madrid Protocol for the International Registration of Marks, the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration have adopted several laws, bylaws and regulation for the purpose of protecting Intellectual Property Rights (IPRs) in line with its international undertakings. Main laws pertinent to IPRs are Patent, Industrial Designs and Trademarks Registration Act (2008) (PITRA), Act for Protection of Authors, Composers and Artists (1970) (PACA), Act for Protection of Geographical Indications (2005), Electronic Commerce Law (2003) and Act on the Protection of Rights to Computer Software (2000).
There is also an increasing judicial tendency toward better and stricter enforcement of IPR. Such tendency is also being reinforced by general state’s policy since such protection can be one of the most important criteria for foreign investors.
Intellectual property is a broad concept covering several types of legally recognized rights. In
It typically includes, Copyright and related rights, Patent, Industrial Design, Marks, Domain Names (Part I). There are also some agencies which shall be known in order to deal with enforcement of IP law (Part II)

Most Important IP Rights Protected in Iran

Within Iran jurisdiction, most known IP rights are well protected. However, here we try to introduce and give a general insight to most important rights for the purpose of investment in Iran.

Copyright and related rights

Copyright is a legal right created by the law of a country that grants the creator of an original work exclusive rights for its use and distribution.This is usually only for a limited time.
Iran has a legal code to protect the proprietary and intellectual rights of works produced inside Iran called “Law for the Protection of Authors, Composers and Artists Rights”, dated January 12, 1970, passed by Iran’s National Consultative Assembly, supplemented with the “Law for the protection of Rights of the Authors of Computer Programs” [3] passed on 2000 (Iranian year 1379).[4]

On 22 August 2010, Iran’s Islamic Consultative Assembly passed a reformation of article 12 of Law for the Protection of Authors, Composers and Artists Rights and increased the copyright length based on author’s death to 50 years after death of author; this law only applies to works that were still in protection when the law passed on 22 August 2010.
However these laws do not cover works from outside Iran as it is not a signatory to the Berne Convention for the Protection of Literary and Artistic Works or the WIPO Copyright Treaty, or a member of the World Trade Organization (WTO). In 2012 Iran announced plans to join international conventions on the protection of literary, artistic, scientific works, including Berne Convention and Rome Convention which is yet subject to national and international negotiations.
The Parliament is also working on the Comprehensive Bill for the Protection of Literary and Artistic Works and Related Rights.
Registrable works subject to PACA includes books, pamphlets, plays and all other literary, scientific and artistic writings, irrespective of the way they are written, recorded or broadcast; audiovisual works for stage or screen performances or for broadcasting by radio and television; paintings, pictures, drawings, designs, decorative writings, geographical maps or any decorative and imaginative work produced in any simple or complex manner; sculptures of all types; architectural works, designs, sketches and buildings; photographic works produced by any original methods; original articles of applied handicraft and industrial art, carpet and rug designs; original works based on folklore and national heritage of culture and arts.
However, the problematic limitation which emphasizes the national protection under PACA is set by Art. 22 which provides: “The Author will be protected under this law only if the work has been printed, published or implemented for the first time within Iran without any precedent of being printed, published or implemented within other states.
Similar to most legal systems, Copyright is recognized in Iranfor any completed work, without any requirement for formal registration.

Patent

Article 26 ofPITRA 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 stipulated by the act for the purpose of granting rights emanating from a patent or discovery is registering the patent before 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:
– a financial plan;
– a new invention or development of an existing invention which is harmful to public order or morality or health;
– a pharmaceutical formula or compound.
Patents are registered for 5, 10, 15 or 20 years, at the option of the applicant.A patent will be vulnerable to cancellation if it is not worked during the five-year period following its date of granting. Although there are no explicit provisions concerning nominal working, in lieu of actual working, it is recommended that there be nominal working before the fifth anniversary of granting.
Patent Granting Procedure
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.
Remedies Available to the Patent 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 from 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.

Trademarks

PITRA defines trademark as “[a]ny 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: distinguishing the 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.
A trademark may be registered for ten years, renewable indefinitely for additional ten-year periods subject to payment of prescribed fees.
Registration gives an owner the exclusive right to use a trademark on the goods for which the trademark is registered. The owner may prevent other parties from using the trademark on competing products.
Any trademark, whether already registered or being presented for registration, may be contested by the person who claims that it belongs to him, or that the resemblance is so close that it may mislead the consumer.
Any opposition to the registration of a trademark on the grounds of prior use or close resemblance, and/or claims relating to the infringement of a registered trademark, may be filed with the General Courts of Tehran. The right to contest a trademark is in force for three years, starting from the actual date of its registration. The registered trademark then becomes incontestable in the courts.
Registration Procedure
To register a trademark, an applicant (Iranian or foreign) should refer in person or through an attorney to the Registration Office for Industrial Property, in Tehran, and file a request for obtaining a certificate of trademark registration. Applications are published in the official gazette so that interested parties may inspect and, if needed, contest them. The registrar examines applications for format, content and consistency in compliance with the relevant rules of registration. If the registrar rejects an application, the applicant may appeal in court.

In addition, the office formally examines trademark applications for any conflict with previously registered trademarks or applications and for compliance with Iranian patent and trademark law. Resemblance of a trademark to a previously registered mark or application takes into account appearance, pronunciation, form of writing or any other similarity.

To register a trademark, the applicant must present the following information: full name and address of applicant(s); power of attorney duly recognized by the Iranian Consulate (a single power of attorney is sufficient for all trademarks); details of the trademark, presented with 12 samples; specifications of goods and classes (according to International Classification).
Remedies Available to the Trademark Owner
The proprietor is entitled to take civil legal actions and/or lodge complaints involving legal penalties to prevent third parties from infringing his right of ownership. Remedies may include damages, costs, and an injunction preventing further violations. Under Articles 529 and 530 of the Islamic Penal Code (Taazirat), commission of forgery or unauthorized use of registered trademarks incurs civil liabilities and imprisonment of up to two years. Punishment for the forgery of trademarks of governmental and municipal companies and establishment as well as using such forged trademarks varies from 3 to 15 years and from six months to three years of imprisonment, respectively.

Domain Names

General protection for domain names is provided for in the Electronic Commerce Act. Art. 66, without going into more details, considers domain name as trade name protected against any use by others of the same or similar, misleading name.
Domain name dispute resolution is subject to WIPO arrangements. The WIPO Arbitration and Mediation Center provides time- and cost-efficient mechanisms to resolve internet domain name disputes, without the need for court litigation. This service includes the WIPO-initiated Uniform Domain Name Dispute Resolution Policy (UDRP). Iran’s domain name (.ir) is subject to .IR Domain Name Dispute Resolution Policy.
This arbitration requires expertise in both legal and technical aspects. For any such services, reference to legal consultant is absolutely a must.

Agencies responsible for IP policy in Iran

The Department of Authors, Composers and Artists at the Ministry of Culture and Islamic Guidance is the main responsible body for copyright matters,
The Industrial Property Office at the Organization for Registration of Deeds and Estates of the Judiciary of Iran is in charge of industrial property affairs.
The Iranian Research Organization for Science and Technology deals with the operationalization of national technology development plans and policies, issuance of scientific certificates and examination of feasibility or industrial applicability of proposed projects and inventions.
Finally, civil or criminal cases regarding IPRs shall be referred respectively to general civil and criminal courts. However, specific branches of general courts have been commissioned to IP related cases.