Nathalie Dreyfus
Dreyfus
Dreyfus recently held a seminar on trademarks and domain names in Iran as international brands look toward the country for opportunities. Nathalie Dreyfus reveals what was discussed, and how brands can benefit

Why did you decide to hold an event on the subject matter of trademarks and domain names in Iran?

Since international sanctions were lifted on Iran in January of 2016, the country now presents more opportunities for both foreign investment and for the development of the Iranian economy.

Intellectual property professionals and holders must ensure that their IP strategy is suited and if necessary, reassessed.

Iran and France have always had a special relationship and it will be interesting to see how this relationship develops.

What is specific about trademark protection in Iran?

When international brands are planning to register a trademark in Iran, it is important for them to understand local nuances in order to make a successful entry in the market. Indeed, Iran has several specificities regarding trademark registration.

First, according to Article 5 of the Trademark Registration Law, trademarks that are not in accordance with sharia law, public order or morality are not registrable. For example, you wouldn’t be able to register trademarks containing elements that may be interpreted as immoral, or national flags or emblems of Iran.

Also, all trademarks in classes 32 (beer, ale and porter) and 33 (alcoholic beverages except beers) are prohibited.

Then, if the application is accepted by the Iran IP Office (IRIPO), the Iranian designation of the international trademark must be published in the Iran Trademark Gazette and the applicant must pay for the publication and the registration fees, otherwise the registration will not be validated.

Once published in the gazette, it is deemed to be registered if no opposition is filed within 30 days.

Iran represents an exciting opportunity for international brands. What options exist in Iran in terms of domain names?

Domestic ecommerce has grown enormously in Iran and online shopping is nearly as common as in Western countries. There is huge opportunity for companies to register .ir extensions. While an American registrar isn’t yet able to register domain names due to the embargo, Dreyfus, as a French firm, is able to register .ir domain names quickly and cheaply.

How should international brands go about securing domain name protection before launching their websites locally?

In Iran, there are no specific requirements regarding the registration of a domain name: any domain name can be registered. Furthermore, it is a quick and cheap process. International brands should only pay attention to one point: not infringing a third party’s prior IP rights. Otherwise, they may be subject to a WIPO complaint, according to the rules of a variation of the Uniform Domain Name Dispute Resolution Policy (UDRP) procedure known as the IR Domain Name Dispute Resolution Policy (IRDRP).

Are there many domain disputes in Iran? What challenges are international brands likely to face?

Since 2002, 99 IRDRP complaints have been filed regarding .ir domain names. In 2015 alone, 19 were filed. The number of domain disputes is growing significantly and international brands are more likely to face cases of cybersquatting of their trademarks. Therefore, we advise individuals and companies to register their trademarks under .ir and .co.ir before a cybersquatter does. International brands must protect their IP rights on the internet. Moreover, we are facing the same problem in Vietnam with .vn domain names, which are subject to cybersquatting more and more. Cybersquatting tends to follow the economic growth of developing countries.

How robust and useful is the IRDRP?

The IRDRP is as useful as the UDRP. Nevertheless, there are some specific rules under the .ir domain name dispute resolution policy:

∙ Procedures are always conducted in English. According to the UDRP rules, the procedure is conducted in the language of the domain name registration agreement, which can be different from English.

∙ As part of the UDRP procedure, in order to obtain a transfer or cancellation of a domain name, one must prove both registration and use in bad faith of the domain name. Whereas for .ir domain names, it is necessary to prove either registration of the domain name or use of the same in bad faith, but not both.

A large audience of international firms attended our event on trademarks and domain names in Iran.

Following our success, we will continue to organise events in the months and years to come.

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