Section (f) of Article 32 of the Patents, Industrial Designs, and Trademarks Registration Law of 2007 provides that, in the case of famous trade marks, identical or similar marks cannot be registered for goods or services that are dissimilar, provided that customarily there is a connection between the use of the mark and the owner of the well-known/famous mark and that such a registration is likely to damage the interests of the owner of the well-known/famous mark.

In 2016, an Iranian company applied to register the logo of PlayStation (pictured) for pharmaceutical and orthopedic items in classes 5 and 10. This trade mark is owned by Sony, known for gaming software and consoles. The Trade Mark Office, noting the absence of a registration history for Sony’s logo in classes 5 and 10, proceeded to accept and publish the trade mark registration announcement.

Sony filed an opposition to the published application within the permitted 30-day period for filing objections. Complying with Article 125 of the by-law of the Patent, Industrial Design, and Trademark Registration Law of 2007, Sony also submitted a registration application simultaneously with the opposition. The by-law stipulates that if the opposing party does not have a prior registration record, filing a simultaneous application is mandatory.

Sony claimed a 25-year history of activity with its logo in gaming software and consoles, establishing the trade mark’s fame through significant advertising expenses. Given that the target audience is predominantly young, the registration of the logo not only signifies the relationship between the applicant and Sony but also diminishes the value of Sony’s well-known trade mark.

Due to the rejection of Sony's opposition by the registration applicant, the case was referred to the Article 170 Commission of the by-law of the Patent, Industrial Design, and Trademark Law of 2007. This Commission is a quasi-judicial authority within the Intellectual Property Centre of Iran and is charged with resolving disputes and handling objections to decisions made by the Trade Mark Office.

Considering Sony’s continuous commercial use of the logo of PlayStation and its recognition in the Iranian market, the Commission deemed that registering a similar mark could potentially mislead ordinary consumers. Sony’s opposition was accepted and the registration application of the requested trade mark was rejected.

At this stage the applicant could file an appeal before the Tehran Public Court, which is the competent authority for reviewing objections to the decisions of the Intellectual Property Centre.

However, the applicant did not file an appeal within the 60-day grace period and therefore the decision became final in favour of Sony.

By Reza Badamchi of Reza Badamchi & Associates in Tehran, a member of MARQUES