What is a design in Nepal?

Under Nepali law, specifically the Patent, Design and Trade Mark Act 2022 (1965), a “design” is defined as the form or shape of any material manufactured in any manner. This encompasses the visual features of a product, including its shape, configuration, pattern or ornamentation. The design must be applied to an article through an industrial process and give the article a unique appearance. Examples of designs that can be registered include the shape of a bottle, the pattern on fabric, or the ornamental aspects of a piece of furniture.

Is it compulsory to register designs to be enforced?

Yes, design registration is compulsory in Nepal to enforce exclusive rights over a design. The Patent, Design and Trade Mark Act establishes a registration system for designs, and only registered designs receive legal protection. Without registration, a design cannot be legally enforced against unauthorized use or copying by others. Registration provides the design owner with exclusive rights to use, sell, import and otherwise commercially exploit the registered design for the specified term of protection.

Acquisition of Title to Design in Nepal

To acquire title to a design in Nepal, the creator or owner must register the design with the Department of Industry. The first person to file an application for a particular design is considered the rightful owner under Nepal’s first-to-file system. The applicant can be either the original creator of the design or a person/entity that has acquired rights to the design from the creator. Upon successful registration, the applicant is granted a certificate of registration and becomes the registered owner of the design with exclusive rights.

Application for Registration of Design in Nepal

The application for design registration must be submitted to the Department of Industry in the prescribed format along with the required documents and fees. The application should include:

• Name, address and details of the applicant
• Description of the design
• Representations or specimens of the design
• Statement of novelty
• Classification of goods to which the design is applied
• Name of creator (if different from applicant)
• Priority claim details (if applicable)

The application and all supporting documents must be in Nepali or English. Four copies of the design representations or specimens are required to be submitted.

Requirements for Design Registration in Nepal

For a design to be eligible for registration in Nepal, it must meet the following key requirements:

1. Novelty – The design must be new and not previously disclosed to the public in Nepal or elsewhere before the filing date.
2. Originality – The design must be original and not copied from existing designs.
3. Industrial applicability – The design must be capable of being applied to an article through an industrial process.
4. Visual appeal – The design should have aesthetic appeal and not be dictated solely by technical or functional considerations.
5. Not contrary to public order/morality – The design should not be offensive or against public morals.
6. Not a method or principle of construction
7. Not solely a trademark or artistic work protectable under copyright

Procedure of Design Registration in Nepal

• Step 1: Filing of Application for Industrial Design
• Step 2: Formality Examination of Documents
• Step 3: Substantive Examination of Design
• Step 4: Registration and Publication of Design

The design registration process in Nepal involves the following steps:

Step 1: Filing of Application

The applicant submits the complete design application to the Department of Industry along with prescribed fees. The application should include all required documents and design representations.

Step 2: Formality Examination

The Department examines the application to ensure all formal requirements are met in terms of documents, fees, etc. If any deficiencies are found, the applicant is notified to remedy them within the specified time.

Step 3: Substantive Examination

The design is examined for compliance with registration requirements like novelty, originality, etc. Searches of prior designs may be conducted. If any objections arise, the applicant is given an opportunity to respond.

Step 4: Registration and Publication

If the design meets all requirements, it is registered and a registration certificate is issued to the applicant. The registered design is then published in the Industrial Property Bulletin.

Documents Required for Design Registration in Nepal

The following documents are typically required for design registration:

• Completed application form
• Power of attorney (if filed through an agent)
• Four copies of design representations/specimens
• Statement of novelty
• Priority documents (for convention applications)
• Proof of right to file (if applicant is not the creator)
• Fees payment receipt

All documents must be in Nepali or English. Notarization/legalization is generally not required for design applications.

Timeframe for Design Registration in Nepal

The time taken for design registration in Nepal can vary depending on various factors. Generally, the process takes around 6-12 months from the application filing date to registration if there are no objections or complications. However, if objections are raised or additional documents are required, the process may take longer. Expedited examination is not available for designs in Nepal.

Validity of Designs in Nepal

A registered design in Nepal is initially valid for a period of 5 years from the date of registration. This initial term can be renewed for two further periods of 5 years each. Therefore, the maximum term of protection for a registered design in Nepal is 15 years.

Design Registration Renewal in Nepal

To maintain design registration in Nepal, it must be renewed before expiry of each 5-year term. The renewal application should be filed within 35 days from the date of expiry of the current term. A grace period of 6 months is available for late renewal on payment of additional fees. If not renewed, the design registration lapses and the design falls into the public domain.

Terms of Design in Nepal

The key terms related to design protection in Nepal are:

• Initial registration term: 5 years from registration date
• Renewal terms: Two further terms of 5 years each
• Maximum protection period: 15 years from registration date
• Renewal deadline: Within 35 days of expiry of current term
• Grace period for renewal: 6 months from expiry date

Punishment for Violation of Designs in Nepal

Infringement of a registered design is punishable under the Patent, Design and Trade Mark Act. The penalties for design infringement include:

• Fine up to NPR 50,000
• Confiscation of infringing articles
• Compensation to the registered owner

The exact penalty is determined by the Department of Industry based on the gravity of the offense. Repeat offenses attract higher penalties.

Publication of Registered Designs

After registration, designs are published in the Industrial Property Bulletin issued by the Department of Industry. This publication serves to notify the public about newly registered designs. Anyone can inspect the published designs and file an opposition within 35 days of publication if they have valid grounds.

Registration of Foreign Designs in Nepal

Foreign applicants can register designs in Nepal either directly or by claiming convention priority. For convention applications, the Nepal application must be filed within 6 months of the first filing in a Paris Convention country. A certified copy of the priority application is required. Foreign applicants need to appoint a local agent for filing design applications in Nepal.

Transfer of Ownership of Designs in Nepal

Registered designs can be assigned or transferred to another party through a written agreement. The transfer must be recorded with the Department of Industry by filing the prescribed form along with the transfer deed. Recording the transfer is important to enforce rights against third parties. The transfer is published in the Industrial Property Bulletin after recordal.

Read More:

• Trademark Registration in Nepal
• Intellectual Property Law in Nepal
• Trademark Law in Nepal
• Patent Law in Nepal
• IP Licensing, Enforcement & Investigation in Nepal
• Highlights of Copyright Act, 2002
• Highlights of Patent, Design & Trademark Act, 1965
• Copyright Law in Nepal

Also Read: Copyright Act, 2002 Patent, Design and Trademark Act, 1965

Laws, Authorities & Conventions governing Designs

The key laws and authorities governing industrial designs in Nepal are:

Laws:

• Patent, Design and Trade Mark Act 2022 (1965)
• Patent, Design and Trade Mark Rules 2026 (1970)

Authority:

• Department of Industry, Ministry of Industry, Commerce and Supplies

International Conventions:

• Paris Convention for Protection of Industrial Property
• TRIPS Agreement

Conclusion

Nepal’s industrial design protection system provides a means for designers and companies to safeguard the visual aspects of their products. While the registration process is relatively straightforward, careful attention must be paid to meeting the substantive requirements for protection.

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Disclaimer: This material is presented solely for informational purposes, without constituting legal advice, counsel, or solicitation, and no liability shall arise from any actions, omissions, or reliance on its contents, directly or indirectly, in any manner whatsoever, irrespective of the jurisdiction or specific circumstances.