An Iranian chocolate company, Shokouh Shad Shanejan, registered an industrial design for the packaging of chocolate in class 9. Chocoladefabriken Lindt & Sprüngli Aktiengesellschaft AG (‘Lindt’) commenced legal proceedings for the cancellation of that industrial design registration both because it was not new and because it was confusingly similar to Lindt’s own package designs, registered as trade marks, and was misleading to ordinary consumers.

Lindt argued that (i) it had used this particular package design for many years before Shokouh Shad Shanejan registered it as an industrial design, (ii) it had been distributing its products in this format through its agents in Iran and other countries, and that (iii) it had registered the design in dispute as a trade mark. Accordingly the registered design would mislead ordinary consumers as to the source and origin of the products.

The registered design owner argued that the two designs lacked confusing similarity since its design was in fact new. It argued as follows:

1. The company had registered AYSUDA as its trade mark in both Farsi and English formats and used that trade mark on the packaging of its products.
2. 2-    Some elements on the package design like ‘cacao’, ‘mint’ and ‘dark’, are generic terms upon which no one has exclusive rights, and the other elements are different from Lindt’s.
3. 3-    Some terms, like ‘noir’ and ‘excellence’, are on Lindt’s package design, but they are not present in the disputed industrial design.
4. 4-    The design in dispute has the additional word ‘sweet’.
5. 5-    The company’s full name and address was printed on the back of the package, which differentiates it from Lindt’s.
6. 6-    The percentage of cacao in Aysuda chocolate is different from that of Lindt, this being another distinctive factor.

 The court ruled as follows:

 1-    Lindt’s trade mark certificates, which were obtained for cacao and other chocolate products, were all registered prior to the opponent’s disputed industrial design.  

2-    The industrial design in dispute is in general similar to the packing design that Lindt had been using before the design registration. It seemed clear that the design registrant had imitated Lindt’s package design in its disputed industrial design and this was forbidden under the Paris Convention, Article 10bis, which prohibits unfair competition.

3-    Due to the prior use of the similar package design, the industrial design was not new, and based on Articles 20 and 21 of the Patent, Industrial Designs and Trade Mark Registration Act, should not be registered.

Accordingly, in favour of the plaintiff, the court’s ruling cancelled the industrial design registration No. ID-2801. The announcement of the cancellation was published in the Iranian Official Gazette on March 24, 2012. 

Legal protection was, for the first time, extended to industrial designs in 2007 by the enactment of the Patent, Industrial Designs and Trade  Mark Registration Act. The Iranian law considers an industrial design to be registrable only if it is new and/or original.  To be new means that it should not been disclosed to the public, anywhere in the world, by publication in tangible form or by use or in any other way, prior to filing date of the application or, where applicable, the priority date of the application for registration. In recent years, a considerable number of newly registered industrial designs have been cancelled due to the lack of new element.

Source: Hossein Badamchi, Ph.D. (Reza Badamchi & Associates), Tehran, Iran.