Reza Badamchi discusses a recent case involving an Iranian and a Belgian company in this post for Class 46.

In 2020, an Iranian company submitted an application to register a trade mark for confectionery and sweets business. The trade mark had already been registered by a Belgian company but the Iranian company had a letter of consent issued by the Belgian owner.

The Iranian Trade Mark Office rejected the application on the grounds that the mark in question was already registered by the Belgian company that had issued the letter of consent. 

Objection filed

The applicant objected to this refusal of its application by filing an objection before the article 170 Commission under the by-law of the Patents, Industrial Designs, and Trade Marks Registration Law of 2007. 

The Commission found that the same trade mark cannot simultaneously be registered by two owners because it misleads the ordinary consumers. Therefore, regardless of the letter of consent for a peaceful coexistence issued by the Belgian company, it rejected the objection and confirmed the refusal of the application, citing articles 30 and 32 of the Patents, Industrial Designs, and Trade Marks Registration Law of 2007. 

Appeal

The applicant then filed an appeal before the civil court objecting to the commission’s decision.

In a ruling in September 2023, the court found the commission’s decision unacceptable and reversed the decision.

The civil court argued that the Iranian applicant and the Belgian owner have a joint venture contract between themselves; to refuse the regulation application would therefore limit the owner’s ownership rights because one of the applicants is the owner of the previously registered trade mark.

Therefore, there is no obstacle to registration of the application and the assumption that consumers will be misled is not justified. 

After the court decision became final the application was successfully registered.

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