فهرست مطالب mirghasem jafarzadeh

Protection of an industrial design requires several substantive requirements that one of them is "Non-functional requirement". Despite the long history of examining and analyzing this requirement in other legal systems, this important issue has been neglected in Iran's legal system. Insufficient attention to the said requirement has led to a confusion in interpretation and implementation. Considering the importance of this requirement on the one hand and the lack of research in this field on the other hand, this article aims to answer the following questions: (1) how does the registration office during the examination of an industrial design application and the judicial authority in the industrial design cases face the non-functional requirement? And (2) how is the requirement to be identified from the perspective of legislation, organizational procedure of the registration office and judicial procedure? In the following by analyzing, criticizing and evaluating these procedures, it shows that although the requirement is taken into consideration by the registration office and the judicial procedure in some cases, there are incorrect perceptions and approaches regarding its concept and criteria that the main origin is lack of attention to the theoretical justifications of the non-functional requirement. Finally, suitable legislative, organizational and judicial proposals are presented based on the analysis.

Functional dimensions and technical aspects of products are only protectable through the patent system. Therefore, other branches of intellectual property law -trademark law, industrial design law, literary and artistic property law (copyright)- cover only the non-functional features of products. This distinguishing feature is described as "Non-functional requirement". It seems that this requirement is intended to separate the scope of patent system from other branches of intellectual property law and promote efficient competition in the market. Despite the apparent similarity of all three systems concerning the non-functional requirement, the important issue is whether or not the concept and test of therequirement can be interpreted the same in all three systems, namely trademark, industrial design and copyright? Since this article, examining the non-functional requirement in all three aforementioned systems, finally with a comparative study of the issue in severalcountries conclude that according to the theoretical basis of such requirement in all above systems and their nature, the non-functional requirement has a wider scope in trademark law; for this reason, it is not possible to provide a uniform test for its determination in all three systems. At the end, based on the results of the issue in different countries, suitable legal solutions for all three systems, regarding legislating or applying appropriate criteria todetermine the requirement, has been presented in Iran's law.

The appearance and aesthetic aspects of the products can be protected as an industrial design under design law. In addition to the positive substantive requirements for protecting industrial designs, such as novelty, originality and individual character, another requirement is also provided under the title of "Non-functionality", which is described as a negative requirement in different legal systems. According to this requirement, a design that is solely dictated by functional aspects of the products and is made to solve a technical and functional problem of the products cannot be protected as an industrial design. Considering the lack of adequate research in this field on one side, and lack of clear law provisions in Iranian Law Design on another side, this article aims to answer the following questions through a comparative study in pioneer legal systems: why is the functional industrial design not to be protected? And how is the functional industrial design to be identified? And at the end, although this requirement is justified on the bases of different criteria such as the alternative solutions and causative approach the authors propuses that the main basis of this requirement is the separation of the industrial design system from the patent system, after which efficient competition is also maintained, On the other hand.

One of the areas where intellectual property law, contract law, and civil procedure intersect, is in determining the persons who have standing to sue for infringement of industrial property rights. In many countries, in addition to the owner, licensees are authorized to sue for infringement under specific conditions. Establishing standing for a licensee comes from the fact that the infringement also affects the interests and investments of the licensee, and for various reasons, including the difficulty and complexity of legal proceedings, sometimes owners are unwilling or unable to sue; In such instances, if the licensee lacks standing to sue, not only licensee's interests, but also interests of the society and legislative objectives of granting exclusive rights will be affected due to the failure to sue for infringement. Moreover, failure to establish standing to sue for licensees may result in a decrease in the worth of intellectual property, consequently reducing the motivation of innovators and investors. By examining the regulations of the European Union and the United States, and utilizing their legal precedents, this study aims to analyze the provisions of the “Law on Patents, Industrial Designs and Trademarks (2007)” and the "Industrial Property Protection Bill (2023)" with regards to licensee standing to sue. The study will critique these regulations and ultimately provide an interpretation that is both compatible with the economic realities of the country and serves the aims of the legislator, the interests of society, the holders of industrial property rights and licensees.

Recordal of a trademark license is an instrument established by legal systems to ensure the security of transactions and protect third parties. Perspectives of countries on registration requirements, including the applicant, the required documents and the content of the contract are not the same. This leads to differences in the views of countries on the effects of recordal, including use of a mark on behalf of the holder, the licensee’s right to sue  and the status of opposing trademark transactions; However, the commonality of these views can be described as “Effects vis-à-vis third parties”. In the present article, While analyzing the requirements and effects of recordal of trademark license under the Singapore Treaty, the EU Trademark Regulation and Iranian law, using the findings, an attempt has been made to criticize the “Industrial Property Protection bill” regarding the development of appropriate registration system for trademark licenses. According to this article, there is no need to register a trademark license in a notary public, and the license must be recordable by both the licensor and the licensee without having to provide all the provisions of the contract in the Industrial Property Office.

In this research it is shown that attributing a contratio sensu to a description used by the legislator when providing legal rules is much debatable among Islamic Law Schoolars. The same debate seems to exist among Iranian legal writers. The detailed examination of this research does also show the fact that when justifying a contratio sensu for description, some scholars in Sheih Jurisprudence are of the opinion that in order to prove such implied indication for description it should be an exclusive causal link between description used and the express contemplated Legal rule. In contrary to this view, it is suggested by the writers that it would suffice if it is proved that there is definite causal link between the description used and the legal rule provided by express language.Likewise, althohgh the result is chalangeable in the Principles of Sheih Jurisprudence, it can suggsseted by confidence that such Sensu can be attributed to the Iranian Civil Law Lawmakers in most of cases. This view can be justified by various aruments such as the usual intention of the authority using such language to provide legal rules, normal perception of the addressed persons, reasonable meaning of the texts used by the legislator, constant precedents of the reasonable persons, the reasonability of the legislator, the principle of the necessity of generality in providing the legal rules and the usual use of such language in providing legal rules.Based on this suggestion and in order to identify what kind of description could result into a contratio Sensu or not, the description used in law texts, shall be divided into an indicative which has a contratio Sensu or an explanatory which has not. It shall also be divided into a description which is used to describe the subject-matter and the one which describes the legal rule. In the first case it has not a contratio Sensu and in the second one has. Finally, it is also shown that "the description used in the law texts, has in principle a contratio Sensu, unless it is proved to be an explanatory, or subject matter-conditioning or has no causl linkage with the legal rule provide by exress language."

A vertical agreement is an agreement between two or more economic entities, each of which operates at different levels of the commercial market. These agreements may contain non-price excluding terms that are contrary to competition law. One of the controversial issues in this regard is whether competition law will recognize non-price restraints on vertical agreements as detrimental to competition or not only does it not constitute a barrier to competition but also finds it useful in competition. The findings of the comparative studies show that non-price restraints on US and EU competition law are among the suspected restraints, however, due to the different approaches in competition law policies, the scope of inclusion in both legal systems is different. U.S jurisprudence has recognized it as independent restrictive arrangements and analyzes it under the rule of rationality. There are general and individual exemptions in EU law for the assessment of vertical restraints, which are declared legitimate if they meet the stated criteria. In Iranian law, the competitive approach to these restraints is ambiguous due to the lack of an explicit position, however, by relying on the general rules of competition law and the interpretation of Articles 44 and 45 of Law on Implementation of General Policies of Principle (44) of Constitution, we can find examples of restrictive procedures and agreements that can be adapted to these restraints in US and EU competition law.

Territorial restrictions are usually imposed by higher firms on lower firms about Sales domain of products subject to the contract or on the characteristics of customers in production or distribution chain. One of the controversial issues is the examination inconsistency or non-inconsistency of these with competition law. This study seeks to provide a clear answer to the fundamental question of whether territorial restrictions are considered necessarily a violation of competition law or are considered suspect restrictions. The results are evaluated according to the rule of reason in US competition law; While in EU law, exemptions are provided for evaluation the competitive effects declared legitimate and permissible if comply with the declared criteria. In the Iranian legal system, the legislator has simply mentioned two examples of territorial restrictions in Article 44 of the Law on Implementation of General Policies of Principle as anti-competitive restrictive conditions. Therefore, after explaining the concept and economic result, examines and analyzes the procedures of the courts and laws of the United States, the European Union and Iranian law from the perspective of competition law, and shows the surprising deficiencies provides suggestions to amend Iranian regulations to be more in line with the principles and objectives of competition law.

Digital products have been the subject of international trade over the recent decades. Due to such economic significance, the place of such new comer economic phenomenon in international sales law documents is becoming much more colorful for legal discussion, Nevertheless, the debate over the 1980 Vienna Convention which deals only with goods, has not been updated. The main question of this paper is what components of the term 'goods' under the Vienna Convention of 1980 and what attitude can be considered in digital content. The paper has tried to show how the word 'goods' has been used in European directives. In this regard, some of these recently adopted directives, such as the (Directive-SGD-2019), have been slightly softened and they have somehow treated digital products as goods. By employing these documents, finally, the present work answers its main problematic question about the CISG. Given the preamble to the convention and general principles of it, such as its international character, it can be said that this convention has confirmed contemporary custom of international trade, not just a historical usage of the pre1980s. Therefore, noting the possibility of physical reception through Articles 30, 53 and 60 of the Convention, those all refer to the ability of physical possess, it seems that the word 'goods' in the Convention remains on its own literal meaning. And the outgoing perception from mentioned articles will be the status of physical possession at the time of delivery of goods, as a condition in most digital products.

Once, between parties to a contract, a dispute arising out of sanctions imposed by a third country is raised before dispute resolution authority, the authority can apply the sanctions to the contract and obligation of the parties thereto as “overriding mandatory rules” only if three significant requisites are fulfilled: “application worthiness of the sanction”, “close connection between the disputed contract and enacting state” and “prevalence of the benefit of a decision to give effect to a sanction over a decision to disregarding it”. Lack of each of the requisites will preclude the application of the sanctions enacted by a third country. This research will provide an answer to this question: concerning a sanction enacted by third countries what the nature of “application worthiness requisite” is what the criteria to fulfill this requisite are. Sanctions enacted by a third country will be worth applying as an overriding mandatory rule only if the object and purpose of the sanctions require considering it. I.e., according to the standards of the state of seat (in court proceedings) and the standards acceptable by the international community (in arbitral proceedings) benefits secured by means of sanctions must be “legitimate and be worthy of protection”, and the sanction must be a necessary and proportional means to achieve its purpose as well.

Significant advances in technology have led to the formulation of legal principles governing the collateralization of intellectual property as one of the most valuable assets of companies in the contemporary economy. Preventing the abandonment of intellectual property, generating revenue and increasing market influence are effective factors in promoting commercialization of intellectual property contracts such as licenses and collateralization of intellectual property. The expansion of international trade relations and the importance of corporate financing, in addition to material property restrictions, have brought unprecedented attention to the legal system of intellectual property collateral and licensing rights. The challenge with these contracts is the imperfection of the rights of each party to collateralization. To this end, the laws of the countries have considered the mere transferability of the rights arising from these agreements to be sufficient. Iran have Adopted Functionalism in its Secured Transactions system and all of the collateral contracts based on the principle of contractual freedom are permitted. Three types of Contracts are available related to the intellectual property license, ie Acquisition Security Right, Collateralize the rights of license agreement and contractual substitution. With regard to the description of the consequential increased security interest involved in the rights of the secured creditor, in the case of transferability of the rights and preventing the licensee to pledge his rights by licensor and his secured creditor, we could imagine various security rights in the same contract simultaneously.

Trademark infringement is unauthorized utilization of a trademark without collection of permission from trademark holder. Unauthorized utilization of the trademark leads to civil liability for the infringer. What is not clear is the effect of awareness on the unauthorized utilization of the trademark. This dilemma has more confusion on indirect trademark infringement. Civil law on some countries takes liability of the infringer on the awareness. In this study using direct evaluation of internal laws of Iran and United State of America the role of infringer in civil liability after indirect trademark infringement was assessed. Results showed that according to current civil liability laws existance of damage and relationship between damage and infringement is essential for civil liability. In both systems awareness of infringer lead to criminal liability. However for indirect infringer the internal law of Iran is silent in regard to this matter. For this purpose it should be referred to civil law to assess awareness of infringer. Hence, the legislator need to clarify type of civil liability according to basic civil law to not be in contrary with other countries from intellectual property point of view. This new role may inhibit direct interpretation in Iranian courts.

Determining the scope of the proprietor protection on the one hand and preventing potential misuse of this legal protection on the other hand with the aim of establishing a fair and equitable balance between the interests of the investor and the entrepreneur and the interests of competitors and the public Consumers in the market, are challenging trademark rights issues. This article, while emphasizing the need to restrict this right and the need to strike a reasonable balance between the interests of entrepreneurs and third parties, seeks to demonstrate through a comparative study along with an analysis of domestic and foreign case law, the design of a system of appropriate restrictions and exceptions. The most effective legal mechanism is to achieve this. The results of this review and analysis suggest that trademark law has a fundamental underlying principle, namely, the nullity of trademark exclusion. In pursuit of this fundamental principle, firstly, the legislative support business creation and prosperity by investors and entrepreneurs. Secondly, this protection should not prevent the proprietor competitors from doing business without justified reason.

One of the most common criteria for the computation of damages in patent infringement litigations in U.S.A Case Law is reasonable royalty. This is because that, it is not possible to properly estimate the lost profits in patent infringement in many cases, and therefore, damage is awarded by calculating reasonable royalty. In U.S.A law, different approaches are applied by courts to determine reasonable royalty-based damages, but the most prominent one has been put forward in Georgia-Pacific Corp. v. U. S. Plywood Corp, which includes 15 factors for determining reasonable royalty-based damages. It has been said that the case law suggested criterion, is a "universally accepted test" for determining reasonable royalty-based damages. While examining this criterion and the place of reasonable royalty in U.S.A law, this study shows that invoking the quantum merit in Iranian patent law could not be a proper method for loss computation. This is for a number of reasons, including statutory prohibition on the application of the quantum merit in compensation for patent infringement, being of patent right as intangible property and confidentiality of the amount of royalty in licenses. Therefore, due to the inconsistency of this Criterion with Iranian legal standards and given the lack of explicit or implicit legal prohibition on using of reasonable royalty as computation method, employing this method by the courts is suggested. To solve the legal ambiguity, it is also suggested that the Iranian legislature introduce reasonable royalty as a criterion for the computation of damages in patent infringement litigations.

Under articles 37 and 48 of the United Nations Convention on Contracts for the International Sale of Goods (CISG), the seller is entitled to cure the lack of conformity of the goods due to specific circumstances. The same legal establishment has been accepted in the Article 7-1-4 0f the Unidroit Principles of International Commercial Contracts (UPICC).Anticipating the seller’s right to cure, one controversial issue raised is the status of the buyerchr('39')s right to avoidance. Subsequently, the question arisen is whether the sellerchr('39')s right to cure is prior or the buyerchr('39')s right to avoidance. While there are various interpretations of Article 48 leading to disagreements, in UPICC, the buyer has no right to avoidance in case of seller’s cure under Article 7-1-4. Similarly, according to general principals including Article 478 of the Civil Code in Iranian legal system, the buyer has no right to terminate if the seller is ready to cure.To conclude, we can say the seller’s right to cure from the perspective of the doctrine, judicial precedent, legal and economic analysis has priority over buyer’s right to avoidance.

In addition to the important and decisive role of trade marks in prosperity of business, the trademark is one of the most valuable assets of large and medium-size enterprises. Due to such importance, todays few have doubted the necessity to protect trademark owners.In this paper, it has been shown that trademark law is faced with this requirement at three levels: at the ownership recognition level, at the level of the preservation of the right as well as at the level of right to resort to the remedial provisions by the right holder in the infringement proceedings against competitors. This paper has also shown that the role of practical use in the third level seems unclear in the trademark legislation, case law as well as in the doctrine. this article does it best to examine the issue on the base of comparative study, legal principles, economic requirements and the general policies upon which the legal protection is justified. This examination, criticizing the Iranian Trademark Registrar practice, shows that many trademarks on the market are imitated and are intended to hoard and eliminate commercial competitors on the market. and for this reason shall cautiously construe the scope of protection of the right holder in civil and criminal actions.

In this research, protection of commercial expectation has been examined. The main question is how we could identify and assess existence of commercial expectations. In response, commercial expectation are acquisition of expectable benefit in market, mass production, absence of technical failure in licensed knowledge and so on. Therefore, it is essential to response by analysis of contract law and market necessities. Therefore, it is suggested that commercial expectation should be analyzed by subject matter of contract, contractual framework, protect condition like usefulness (industrial application), content of Applications for patent particularly description and summary and document of patent. As a result, identification of commercial expectations in product contract law is different from patent contract law.

After concluding TRIPs agreement, the sphere of negotiation in respect of protecting new kinds of intellectual property rights especially pharmaceutical inventions transferred to bilateral and regional arrangements. TRIPs agreement has some flexibility to attract all countries. Industrialized countries believed that multilateral agreements protections based especially in regard of pharmaceutical inventions are not fairly enough and because of this, they are searching new stage to negotiate and apply their views. This evolution occurred in pursuance of industrialized countries endeavors to protect their national’s intellectual property rights abroad. In recent years industrialized countries began to negotiate bilateral agreements with their trading partners. Some of these agreements are concluding in trade and investment field but also contain important provisions about intellectual property rights including pharmaceutical inventions, while others directly aim at intellectual property rights. Standards of these treaties prevail those of multilateral agreements such as TRIPs and because of this, these treaties are known as TRIPs-plus treaties. Industrialized countries in TRIPs-plus protection from pharmaceutical inventions focus on several points in their bilateral and regional negotiations such as identifying new types of intellectual property rights, taking TRIPs-plus standards in intellectual property protection and setting limits on existing flexibilities in TRIPs agreement. In this article we study the concept and scope of TRIPs-plus rules in the realm of pharmaceutical inventions. We will also show that standards of these types of treaties go further than those of multilateral intellectual property treaties such as TRIPs.

Disclosure grace period” is a length of time in which the applicant can file patent or industrial design application after public disclosure of the subject-matter and without impairing the novelty requirement. To provide “grace period” in patent law, the legislature should consider four elements: duration of grace, type of disclosure, absolute or relative immunity of investor’s disclosure against third parties’ publications and priority right. This article discusses the mentioned elements and also pros and cons of grace period by analyzing Iranian law and through comparative studies. It is concluded that grace period is like a double-edged sword which means, on the one hand, that providing broad grace period along with strong shielding for inventor’s disclosure can promote academic inventors and SMEs, but on the other hand, this approach can be misused by strategic delay or disclosure. Additionally, interaction of priority right with grace period can be a barrier for technology transfer and attracting investors. Considering the status of Iran as a developing country, it is suggested that Iranian Legislature should increase grace period to 12 months, accept absolute immunity regarding patents and relative shield for designs and use the date of priority for the calculation of grace period in relevant cases.

In most contemporary legal systems abandonment has been identified as one of the causes for the loss of property rights, and also in comparison with other rights are possible. But in Islamic and Iranian law, were cited as very minor and never has been discussed as independent. Therefore, in this paper we will try to respect the comments and works of early and contemporary scholars, as well as considering the opinion of Iranian lawyers, first the effects of abandonment in corporeal property was evaluated. And then according to these effects, the result of abandonment of intellectual property, especially patent right to be studied. Finally, it was determined, as well as the other right such as easement or profit right, abandon of patent is possible. And then unlike corporeal property, abandoned patents, including the appropriation of public property, and taking possession of it, would be impossible even by the inventor or previous owner.

To protect intellectual property rights, the international efforts showed its maximum strength and capacity through ratifying the universal TRIPS Agreement. But even by this convergence at international level, struggles between developed and developing countries about intellectual property protection at international level did not decline. Developing countries believed that it would be the last pace of international intellectual property system. Developed countries, on the other hand, envisioned TRIPS only contains minimum-standards provisions. So, developed nations dissatisfied with the level of protection introduced by TRIPS and by the way, thought the multilateral regime has presented its utmost capacity by this agreement, shifted the current multilateral level to bilateral and regional agreements to transplant themselves intellectual property standards.
Since then, lots of efforts have been made to harmonize intellectual property provisions in international stage. This multilateral approach to protect intellectual property rights began by Paris and Bern conventions and reached to its best by TRIPS agreement. Now, there is a complicated situation in international intellectual property norm-setting. What is going to happen after TRIPS agreement? Divergence or convergence? In this article, we try to answer this question by examining the origin of these changes and specify some significant results at the end.

Loyalty and Trust of customers are precious from economical point of view for the trademark. Hence by infringement of trademark the abuser will earn profit of the owner. The main goal of the study is comparative evaluation of trademark refinement criterion between Iran and United States. For this purpose constitution, international convention and agreements, books, reports and literature were investigated and process of judgment and court decisions on trademark infringement was compared in Iran and United States of America. Results showed criterion to confirm similarity between two trademarks has emphasis on appearance, sound, spelling and dilution. Researchers believe that by increase in similarity between trademarks the process of infringement criterion will be less complicated. Results showed there is no clear and complete criterion description in Iranian Law. Also there is no clear evidence for differentiation of imitation and impersonation in Iranian Law. Result showed legal procedure has great potential to create trademark refinement criterion base on trademark characteristic and liability. Also results confirms that legal process in the United States with mentioned trademark infringement criterion has decreased argument into minimum for quality infringement criterion. Finally justifications to improve trademark roles and regulations was recommended.

Signing is an important part of the personality and legal, commercial, and even artistic credentials of individuals, and it is necessary to validate international documents. Signing a document is the most important reason for the document's approval and acceptance of the content of the document by the Contracting Party. In this sense, security is so important in such a process, and the entry of this process in digital and electronic space make the importance of this issue twice. Therefore, without the necessary infrastructure in the digital environment, there is no possibility of providing electronic services. The need to legislate alongside these technologies to provide this security is one of the most effective ways of realizing this issue So, in this research, we first briefly and comprehensively examine and explain the electronic signatures in different legal systems, and then we examine the different approaches of these systems to the issue of security of electronic signatures. In a way that through studying some of the laws of different countries, including the United States, France and Iran it should be possible to determine an approach which is appropriate to the issue of security in the field of electronic signatures.

One of the defenses to patent infringement is the experimental use of the invention. This exception is accepted in The Registration of Patents, Industrial Designs and Trademarks Act of 2008. The Act, however, has no clue on the criterion for application of this exception and no case in this regard has yet been brought before the Iranian courts. On the other hand, some of the patent systems, namely the German and the U.S. one, have recognized a distinction between the commercial intent of the use and a non-commercial one as a criterion of the permissible act. Accordingly, the experiments done with a non-commercial purpose should be allowed while the ones with a commercial intent would be considered as an infringement. The case law of the two above-mentioned systems, however, shows otherwise. The current essay intends to investigate the different cases of experimental use and tries to show that the considered distinction cannot function effectively as a criterion to apply the exception especially where the purpose of the use is non-commercial but the patent is used extensively or vice versa where the use is done with a commercial intent but there is a public interest in permitting the act.

In this paper authors have tried to evaluate the necessity of enactment of Art. 44 of Patents Registration and Industrial Designs and Trademarks and tradenames 2007 i.e. quality control in trademark licenses.According to the article failure to perform quality control results in invalidation of trademark license.Philosophy behind this regulation would be trademark distinctiveness for consumers and importance of preventing confusion and misleading of consumers. According to our comparative study of different countries ”s legislations, despite majority ”s disagreement whit this kind of regulation, minorities ”s positions (like Iran and USA) is more reasonable and accurate as have been accepted by WIPO.This article ”s results show that the Art. 44 is an appropriate policy for Iran as a developing country. However this regulation should be amended especially in relation to merchandising trademark licenses, because in this kind of licenses, consumers usually do not expect quality control form trademark holder.Lastly authors, having in mind draft law of protecting industrial property, suggested appropriate article for protection of consumers and effective commitment of licensors to quality control .