More than two years after Iran’s Industrial Property Protection Act was enacted in 2024, its practical strengths and weaknesses are becoming clear. One provision deserves particular attention from foreign IP owners: Article 136, under which the address a rights holder has on file with the registration authority counts as the address for service in all administrative and judicial proceedings. In practice, a trademark, patent, or industrial design can be challenged and cancelled without its owner ever being notified.
Drawing on our experience, this article first explains why service of process matters in any lawsuit and what Article 136 says. It then uses an example to show how the rule works against a foreign company whose Iranian attorney is the only person served. Next, it presents a real case from Hengam’s legal team, in which a forty-year-old trademark owned by a French company was cancelled for non-use after the petition was served on its registration attorney. It closes with practical steps for managing this risk.
1. A Brief Note on Service of Process and Why It Matters
In every civil action, service of process is essential. The party bringing the claim (the plaintiff) must give the court an address for the opposing party (the defendant) so that the petition and its attachments can be served on them. This allows the court to hear the dispute in an informed manner and with respect for both parties’ rights.
Intellectual property disputes are no exception. Before the Industrial Property Protection Act was enacted in 2024 (1403 in the Iranian calendar), service in these cases followed the general rules of the Code of Civil Procedure, the details of which are beyond the scope of this piece.
The Industrial Property Protection Act, however, contains a special provision on this matter. It can, at times, determine the fate of an intellectual property asset without its owner’s knowledge, and many IP owners have overlooked it.
2. What Does the New Provision Say?
The final part of Article 136 of the Act reads:
“The address declared to the registration authority, or the address held in the registration authority’s electronic system, shall be regarded as the record of service in all administrative and judicial proceedings.”
3. Why Does This Article Matter, and How Can It Change an IP Asset’s Fate Without the Owner’s Knowledge?
An example will explain.
Imagine you are a foreign company that registered trademark X in Iran through an Iranian attorney.
Before this provision, anyone wishing to sue you and challenge your mark had to state your address in the petition, most likely an address outside Iran. The petition and its attachments would be translated and sent to you through Iran’s Ministry of Foreign Affairs in accordance with the applicable rules. The court would begin hearing the case only once satisfied that you had been identified at the stated address and that the petition had been properly served on you.
Knowing a suit had been filed against you, you could retain counsel and defend your rights. Under the new law, you may have lost that advantage.
Under the new rules and practice, if a petition is filed against you in the scenario above, the court retrieves the address that your attorney entered in the Intellectual Property Center’s system when registering or renewing your mark in Iran. The petition is then served on the registration attorney, and the court is ready to proceed, even if your attorney has not informed you.
4. An Example of a Judgment Obtained by Hengam’s Legal Team Relying on This Provision
A few months ago, a client came to Hengam’s office wanting to challenge the validity of a competitor’s mark, owned by a French company. The mark had been registered in Iran about forty years earlier and renewed regularly.
Hengam’s legal team examined the matter and found that the French company was not using its mark in the Iranian market. A petition was therefore drafted and filed against the French company, seeking cancellation of the mark for non-use.
After the petition was assigned to a court branch, the address of the attorney who had renewed the mark was requested from the Intellectual Property Center, as the new provision requires, and the petition was served on that attorney. A hearing was held and the expert examination was completed. A judgment cancelling the mark for non-use was then issued and became final. The certificate of finality was obtained and submitted to the Intellectual Property Center.
The judgment reads as follows:
Regarding the claim of Mr. … and Mr. …, represented by Mr. Sadegh Shamshiri and Mr. Ehsan Minaeifard, against (1) [the French company], represented by [its registration attorney], and (2) the State Organization for Registration of Deeds and Properties (Trademarks and Geographical Indications Registration Office), seeking an order for registration of a trademark and cancellation of trademark certificate no. …: Having reviewed all the documents and the contents of the case file, and in light of the opinion of the official court-appointed expert, which indicates that the defendant did not use the disputed trademark within the statutory period, and which has remained unchallenged, the court finds the plaintiffs’ claim established. Pursuant to Article 110 of the Industrial Property Protection Act and Article 198 of the Code of Civil Procedure, it rules and declares the cancellation of the defendant’s trademark registration certificate no. … This judgment, rendered in the presence of the parties (hozuri), may be appealed before the provincial Court of Appeal within twenty days of service.
At no stage did the registration attorney mount a defense or even respond to the expert’s calls. It is not clear whether the attorney ever told the French company about the suit.
In effect, the mark was cancelled permanently, and the French company may still be unaware that it has lost its asset. This is why we called the matter grave at the outset.
5. Our Recommendation: How to Avoid This Major Risk
If you are a foreign company that has registered a trademark or other IP assets in Iran through an attorney, you need to be especially careful in choosing that attorney. Skill in registering intellectual property is not the only consideration. You must be able to count on the attorney’s trustworthiness and availability over the long term.
Likewise, if you have worked with an attorney or law firm in this area before, make sure they are still active and in contact with you.
For further consultation, you are welcome to contact Hengam’s legal team.