In a decision delivered on August 5 2001 but only recently published, the Tehran Court of First Instance stated that the unfair use of a registered trademark will cause the registration to be cancelled.

The owner of the RAHA trademark, registered in Persian in class 3, sought an injunction against the owner of the trademark RAJA, also registered in Persian for the same goods, claiming that use of the RAJA trademark constituted an act of unfair competition.

The Tehran court granted the injunction, holding that the design and manner of use of the RAJA trademark constituted a slavish imitation of the RAHA mark, and as such should be cancelled.

The court's ruling was based on the fact that although the trademarks in themselves were not sufficiently similar to confuse ordinary consumers, the design and manner of use of the RAJA mark were clearly intended to create such confusion, and registration of the RAJA mark was thus subject to invalidation.

The decision accords with Article 9(2) of the Patent and Trademark Registration Act, which prohibits the registration of trademarks that confuse ordinary consumers in order to implement the unfair competition rules of the Paris Convention and safeguard consumer rights.

The decision illustrates that a registered trademark will be rendered null and void not only if it is confusingly similar to an existing registered mark, but also if it is used unfairly.

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]).