Reza Badamchi summarises a recent dispute in Iran concerning a whisky trade mark.

According to Article 32, Clause B of the Iranian Law on Registration of Patents, Industrial Designs, and Trade Marks of 2007, a trade mark will not be eligible for registration if it contradicts legal standards, public order or moral values.

In line with this, Class 33 of Iran’s trade mark classification list has been removed. This is because the production, purchase, sale, and consumption of any kind of alcoholic beverages are prohibited in Iran according to Islamic regulations and are punishable offences. (This prohibition applies to Muslims only.)

Trade mark application filed

In 2018, an Iranian citizen applied to register a trade mark that was already registered and known in Western countries for the production and distribution of alcoholic beverages.

The request was made to the Trade Mark Registration Office and covered Classes 3, 8, 11, 21, 26, 35, and 39. As there was no record or previous application for the mentioned mark in the specified classes at the Iranian Trade mark Registration Office, the application was accepted, the necessary procedures for its registration were carried out and the applicant received a registration certificate (number 311243).

Cancellation action

The owner of the Scotch company holding the original whisky trade mark initiated a lawsuit to nullify and cancel the trade mark certificate issued in Iran on the grounds of non-compliance with the Shariah, public order and moral values.

The litigant claimed that the registered Iranian trade mark was exactly the same as the trade mark already registered for whisky abroad and would mislead Iranian consumers regarding the origin of the goods and remind them of a forbidden product.

Based on Article 32, Clause B of the Law on Registration of Patents, Industrial Designs, and Trade Marks of 2007, and the third part of Article 6 of the Paris Convention, the court of first instance accepted the argument and cancelled the Iranian trade mark certificate.

The court argued that the registration of a well-known whisky trade mark is contrary to Shariah, public order, and moral values even when it is used for other goods because the reminiscence is always there.

Appeal decision

Following an appeal by the Iranian party, the appellate court found flaws in the first instance court's ruling and overturned it.

The appellate court’s reasoning was that the registration of the Scotch company’s trade mark outside the territorial jurisdiction of Iran for alcoholic beverages does not come under the grounds for invalidating a trade mark in Iran and Article 41 does not apply because the trade mark is not used in Iran and is therefore not known to Iranian consumers.

Iran is also a signatory to Article 6 of the Paris Convention, and its regulations are incorporated into domestic law under Article 9 of the Civil Code of Iran. According to these regulations, a trade mark that contradicts moral values or public order and misleads the general public can be invalidated.

To determine whether a trade mark is eligible for protection, all relevant circumstances and facts related to the trade mark must be considered.

In this case, the requested trade mark has been registered for permissible goods and services, and it is only protected for those specific goods and services according to the regulations.

The whisky company allegedly uses this type of trade mark for alcoholic beverages outside of Iran but it is impossible for it to carry out activities in Iran. Therefore, the mark does not mislead or deceive ordinary Iranian consumers and does not lead to unfair competition in trade.

The decision was issued last year and is final.

Reza Badamchi is managing partner of Reza Badamchi & Associates in Tehran and is a member of MARQUES