Octanorm-Vertriebs GmbH recently filed a petition against Octiran Ltd, which was licensed to sell Octanorm's products in Iran, requesting annulment of the trademark OCTANORM (word and design) in Classes 6, 19 and 20, which had been registered in Octiran's name.

Octanorm alleged that the licensee was authorized only to use the trademark for the period of the licensing contract, and that the registration of the mark in the licensee's name was in bad faith.

Octiran argued that under Article 22 of the Trademark Law, no opposition may be accepted after the expiry of the three-year period for filing oppositions, which begins to run on the date of registration.

Article 22 of the Trademark Law further states that if a trademark owner can prove that the party opposing the registration became aware of this registration within three years of the registration date, but nonetheless failed to file an opposition within this period, then any subsequent opposition will be rejected.

Since Octiran used the trademark pursuant to a licensing contract, and since prior and continuous use of the trademark by the licensor was not precluded by the licensing contract, the court cancelled the registration of the OCTANORM trademark. Octiran appealed.

The appellate court upheld the decision. Pursuant to Article 22 of the Trademark Law, it confirmed that Octiran failed to prove that the licensor was aware that the trademark had been registered in its name and nonetheless did not file an opposition during the three-year opposition period.

For further information on this topic please contact Mohammad Badamchi at HAMI Legal Services Inc by telephone (+98 21 204 36 84) or by fax (+98 21 204 36 86) or by email ([email protected]).