In summary, the current position is that IP rights owners are not prohibited from protecting and enforcing their IP rights in Iran and Syria, under the existing EU and US sanctions.
However, difficulties remain and businesses should ensure that any company or individual with which they conduct business in Iran and Syria (including licensees, distributors, customers and professional advisors) are not listed on the designated persons registers maintained by the national governments in the EU and by the US government.
IP rights owners with a presence in the EU or the US, or with employees who are nationals from the EU or the US, will be required to comply with all applicable sanctions. It is therefore important that businesses with interests in sanctioned countries conduct regular assessments in order to avoid a breach of EU or US sanctions and the serious penalties that would then apply.
We set out below a more detailed review of the EU and US sanction regulations, together with some suggested action points for IP rights owners with interests in Iran and Syria:
1. EU sanctions against Syria and Iran
The EU has implemented economic and trade sanctions against Iran and Syria, and specific entities and individuals in these countries.
The EU sanctions apply to any person in the EU, entities which are incorporated in the EU and nationals of EU countries, as well as to any business carried out within the EU. The EU sanctions effectively restrict certain activities in relation to:
- Iran under Regulation 267/2012 (as amended); and
- Syria under Regulation 36/2012 (as amended),
(collectively the EU Regulations).
There are two key restrictions under the EU Regulations:
1.1 "Identity Based" restrictions
These restrictions prohibit those persons subject to the EU Regulation from engaging in any economic activity with certain designated persons. The relevant factor is whom the person is trading with (as opposed to which activity is being undertaken).
Specifically, persons subject to the EU Regulations have to freeze funds and economic resources of designated persons, and so are restricted from dealing with them, whether directly or indirectly through a third party.
Accordingly, it is important to check the lists of designated persons (which are maintained and updated by the national governments in the EU) to ensure that business partners and customers do not appear on these lists.
1.2 "Activity Based" restrictions
The EU Regulations also prohibit certain defined activities from being carried out in Iran or Syria by persons subject to the EU Regulations.
The activities targeted in the EU Regulations are principally those connected with the oil and gas and shipping industries (specifically the export of certain key equipment and technology), insurance, as well as banking and finance.
Accordingly, for those persons who are subject to the EU Regulations, it is important to identify precisely what activity is being carried out in relation to Iran and Syria in order to ascertain whether the activity is prohibited. Unless an activity is expressly prohibited by the EU Regulations, it is permitted.
The protection and enforcement of IP rights is not one of the activities restricted in the Regulations.
1.3 Impact on IP rights owners
Accordingly, IP rights owners are not prohibited from protecting and enforcing their IP rights in Iran or Syria by the EU Regulations.
In any event, IP rights owners should ensure that they avoid any dealings which would breach the "identity based" restrictions by carrying out due diligence on current and future licensees, distributors and customers in Iran and Syria to ensure that they are not designated persons.
Breaching the EU regulations can result in penalties being imposed against companies and individuals, including imprisonment and/or fines.
2. US sanctions against Iran and Syria
The Office of Foreign Assets Control (OFAC) at the US Department of Treasury administers the sanction regime in the US.
The US has imposed financial and trade sanctions which generally prohibit US Persons from trading with sanctioned countries, including Iran and Syria. A list of specific individuals and companies which are considered specially designated nationals is maintained and published by OFAC.
The US sanctions apply to ‘US Persons’, which is widely defined to include any person in the US, entities incorporated in the US (and their foreign branches), US subsidiaries (under the Iran sanctions) or branches of foreign companies, US citizens and permanent residents of the US.
2.1 Scope of restrictions
US Persons are required to comply with the following regulations:
- the Iranian Transactions and Sanctions Regulations (31 C.F.R. Part 560) and other relevant laws (the US Iranian Sanctions), subject to certain exceptions; and
- the Syria Sanctions Regulations 31 C.F.R. Part 542 (2011), Executive Orders (13606, 13608, 13338, 13582) and other relevant laws (the US Syrian Sanctions)
(collectively the US Sanctions).
The US Sanctions generally prohibit US Persons from engaging in transactions concerning Iran and Syria. Failure to comply with the US Sanctions can result in severe penalties being imposed, including civil and criminal fines and/or imprisonment.
2.2 Exceptions for IP rights owners
IP rights owners can seek to rely on exceptions relating to the protection and enforcement of IP rights under the US Sanctions. Specifically, the following transactions in Iran and Syria are considered to be authorised:
- the filing and prosecution of any application to obtain a patent, trade mark, copyright or other form of IP protection;
- the receipt of a patent, trademark, copyright or other form of IP protection;
- the renewal or maintenance of a patent, trademark, copyright or other form of IP protection;
- the filing and prosecution of oppositions or infringement proceedings with respect to a patent, trademark, copyright or other form of IP rights, or actions taken to defend such proceedings; and
- the payment of fees currently due to the Government of Iran and Syria; and
- the payment of reasonable and customary fees and charges to attorneys in Iran and Syria.
These permitted transactions are subject to the prohibition on any dealing with or the transfer of any funds to specifically designated persons, as determined by the US Secretary of the Treasury. Accordingly, by way of example, no payments should be made to the accounts of any specifically designated persons regardless of whether the funds relate to the protection or enforcement of IP rights.
3. Action points for IP rights owners
With discussions regarding the lifting of sanctions in Iran ongoing, many businesses are looking to expand their operations into the country. This puts pressure on those managing these businesses’ IP rights to ensure that suitable protection is in place.
The good news is that under the EU and US sanctions regimes, IP rights owners are permitted to take action to protect and enforce their IP rights in Iran and Syria, subject to ensuring that they are not dealing with any individuals or entities which have been ‘blacklisted’ as designated persons.
Although there are serious criminal consequences for companies and individuals found to be breaching the sanctions regulations, it is relatively straightforward for IP rights owners to ensure compliance by undertaking an audit of current and proposed partners and customers in Iran and Syria.
However, IP rights owners should also consider other potential impacts of the sanctions regimes on their businesses, including in relation to the restrictions on the export or import of specific equipment and products. It is also important for IP rights owners to monitor the sanctions regime to ensure ongoing compliance, given the volatility of the political situation in the region.