Trademark Law in Nepal

What is a Trademark Law in Nepal?

A trademark is defined the trademark law in nepal, as a word, symbol, picture or combination thereof used by a firm, company or individual to distinguish their products or services from those of others. According to Section 2(c) of the Patent, Design and Trade Mark Act, 2022 (1965) of Nepal, a “trade-mark” means any word, symbol, or picture or a combination thereof used by any firm, company or individual for their products or services to differentiate them from the products or services of others.

Trademarks serve as a unique identifier for businesses and help consumers recognize and differentiate between different brands. They can include logos, brand names, slogans, packaging designs, or other distinctive elements associated with a particular product or service. By registering a trademark, businesses can protect their brand identity and prevent others from using similar marks that may cause confusion in the marketplace.

Is trademark automatically enforced in Nepal?

No, trademarks are not automatically enforced in Nepal. Trademark rights in Nepal are generally based on registration, not on use alone. The only exception is if a newly registered trademark conflicts with a globally well-known trademark of an established company in the same business sector. In such cases, the well-known mark may be given some protection even without registration in Nepal.

However, for most businesses, trademark rights must be obtained through formal registration with the Department of Industry in Nepal. Simply using a trademark does not provide legal protection or enforcement rights. Businesses must go through the trademark registration process to acquire exclusive rights to use the mark and enforce those rights against infringers.

How to Acquire Trademark in Nepal?

To acquire trademark rights in Nepal, businesses must register their trademark with the Department of Industry.

Step-by-Step Guide to Acquire Trademark

1. Conduct a trademark search to check availability
2. File a trademark application with required documents
3. Examination of the application by the Department of Industry
4. Publication of the trademark in the Industrial Property Bulletin
5. Opposition period (if any oppositions are filed)
6. Registration and issuance of trademark certificate

The entire process typically takes 12-36 months to complete if there are no objections or oppositions filed. Registering a trademark grants the owner exclusive rights to use the mark for the registered goods/services for 7 years, renewable indefinitely.

How to check Trademark Availability in Nepal?

Before filing a trademark application, it’s advisable to conduct a trademark search to check if the proposed mark is available for registration. There are a few ways to check trademark availability in Nepal:

1. Search the online trademark database maintained by the Department of Industry. This database contains records of registered and pending trademarks in Nepal.
2. Conduct a manual search at the Department of Industry office. The office maintains physical records that can be searched.
3. Hire a trademark attorney or agent to conduct a comprehensive search. They have expertise in searching both registered and unregistered marks.
4. Check the Industrial Property Bulletin, which publishes newly filed trademark applications.
5. Search online for any existing uses of the mark by other businesses, even if unregistered.

A thorough search helps identify potential conflicts and assess the registrability of a proposed trademark before filing an application.

Application for Trademark Registration in Nepal

To apply for trademark registration in Nepal, the following steps should be followed:

1. Prepare the trademark application form in the prescribed format (Schedule 1C of the Patent, Design and Trade Mark Act).
2. Gather required documents:

• Company/industry registration certificate
• PAN certificate
• Citizenship certificate of applicant
• 4 copies of the trademark
• Power of attorney (if filed through an agent)

1. Pay the application fee of NPR 1,000 per trademark class.
2. Submit the completed application form, documents, and fee to the Department of Industry.
3. Obtain an acknowledgement receipt from the Department.

The application should clearly specify the goods/services and trademark classes under which registration is sought. Multiple classes can be covered in a single application.

Registration of Trademark in Nepal

Step 1 : Filing of Application for Trademark Registration

Step 2: Exaination of the Application

Step 3: Publication of Trademark in IP Bulletin

Step 4: Registration of Trademark (No Opposition)

The trademark registration process in Nepal involves the following key steps:

Step 1: Filing of Application

The first step is to file the trademark application with the Department of Industry along with the prescribed fee and required documents. The application should include details of the applicant, description of the mark, and goods/services covered.

Step 2: Examination

The Department conducts a formal and substantive examination of the application to ensure it meets all legal requirements. They check for distinctiveness, conflicts with existing marks, and other grounds for refusal.

Step 3: Publication

If the application passes examination, the trademark is published in the Industrial Property Bulletin for opposition purposes. This allows third parties to file oppositions within 90 days if they believe the mark infringes their rights.

Step 4: Registration

If no oppositions are filed or oppositions are overcome, the trademark proceeds to registration. The Department issues a registration certificate upon payment of the registration fee of NPR 5,000.

The entire process typically takes 12-36 months if there are no objections or oppositions. Once registered, the trademark is valid for 7 years from the date of filing.

Classification of Goods and Services for Trademark Registration

Nepal follows the Nice Classification system for classifying goods and services in trademark applications. There are 45 classes – classes 1-34 for goods and 35-45 for services.

Examples of Classification of Trademark

• Class 25: Clothing, footwear, headgear
• Class 30: Coffee, tea, cocoa, etc.
• Class 35: Advertising, business management
• Class 41: Education, entertainment, sports
• Class 42: Scientific and technological services

Applicants must specify the exact classes and list of goods/services under which protection is sought. Multiple classes can be covered in a single application by paying additional class fees.

Time Taken for Trademark Registration in Nepal

The trademark registration process in Nepal typically takes between 12 to 36 months from the date of filing the application to issuance of the registration certificate. However, this timeline can vary depending on various factors:

• Workload of the Department of Industry
• Complexity of the application
• Whether any objections are raised during examination
• If oppositions are filed by third parties
• Applicant’s response time to office actions

If no oppositions are filed and there are no objections during examination, registration can be completed in about 12-18 months. More complex cases or those facing oppositions can take up to 3 years or longer to resolve.

Prohibition to Use Registered Trademarks

The Patent, Design and Trade Mark Act prohibits the unauthorized use of registered trademarks in Nepal. Specifically:

• No one can use a trademark identical or similar to a registered mark for the same/similar goods or services without permission from the trademark owner.
• Using a registered trademark without authorization is considered infringement and can lead to legal action.
• Even marks that are deceptively similar to registered trademarks cannot be used if they are likely to cause confusion among consumers.
• The exclusive rights granted by registration allow the owner to prevent others from using the mark commercially.

Violating these prohibitions can result in civil and criminal penalties under Nepalese law.

Time of Validity of Trademark in Nepal

A registered trademark in Nepal is valid for an initial period of 7 years from the date of filing the application. The registration can be renewed indefinitely for successive periods of 7 years each.

To maintain the registration, the trademark must be renewed within 35 days of the expiry date. A grace period of 6 months is available for late renewal with payment of additional fees.

If not renewed, the trademark registration lapses and the mark becomes available for others to register and use. Continuous use and timely renewal are important to maintain trademark rights in Nepal.

Punishment for Illegal Use of Trademarks in Nepal

The unauthorized use of registered trademarks is subject to penalties under Nepalese law. According to Section 19 of the Patent, Design and Trade Mark Act:

• A fine of up to NPR 100,000 may be imposed for trademark infringement.
• Goods and articles connected with the offense may be confiscated.
• The Department of Industry can order confiscation based on the gravity of the offense.

Additionally, the trademark owner can file a civil suit seeking damages and injunctive relief against infringers. Criminal prosecution is also possible in some cases of willful trademark infringement.

Renewal of Trademark in Nepal

Trademark registrations in Nepal must be renewed every 7 years to maintain protection. The renewal process involves:

1. Filing a renewal application in the prescribed format (Schedule 2F)
2. Paying the renewal fee of NPR 5,000 per class
3. Submitting the application within 35 days before expiry of registration
4. Late renewal possible within 6 months after expiry with a fine of NPR 1,000
5. If not renewed, the registration is automatically cancelled

Trademark owners should docket renewal dates and file renewals on time to avoid loss of rights. There is no limit on the number of times a trademark can be renewed in Nepal.

Registration of Foreign Trademark in Nepal

Foreign companies can register their trademarks in Nepal through two main methods:

1. National filing: File a new application directly with the Department of Industry through an authorized local agent. This requires submitting all documents and following the standard registration process.
2. Using Paris Convention priority: If the mark is already registered in another Paris Convention country, the owner can claim priority within 6 months and file in Nepal. This allows backdating the Nepal filing to the first filing date.

Foreign applicants must provide a power of attorney and copies of home registration certificates. Use of the mark in Nepal is not required for registration but may be needed to maintain the registration against non-use cancellation.

Classes of Trademark Registration in Nepal

Nepal follows the Nice Classification system with 45 classes of goods and services for trademark registration:

• Classes 1-34: Goods
• Classes 35-45: Services

Examples of Trademark Classes

• Class 9: Electronic devices, software
• Class 25: Clothing, footwear
• Class 30: Food items
• Class 35: Advertising, business services
• Class 41: Education, entertainment
• Class 42: Technology services

Applicants must specify the exact classes and list of goods/services under which protection is sought. Multiple classes can be covered in a single application by paying additional class fees.

Opposition of Trademark in Nepal

After a trademark application is published, there is a 90-day period for filing oppositions. Key aspects of the opposition process include:

• Any party can file an opposition if they believe the mark should not be registered
• Grounds for opposition include likelihood of confusion, descriptiveness, bad faith, etc.
• oppositions must be filed in writing with the Department of Industry
• The applicant has an opportunity to defend against the opposition
• The Department decides whether to accept or reject the opposed application
• Appeals of opposition decisions can be filed with the court

Trademark Prosecution in Nepal

Trademark prosecution refers to the process of pursuing registration, which involves:

• Responding to office actions/objections raised during examination
• Submitting evidence of use or acquired distinctiveness if required
• Amending the application as needed to overcome rejections
• Defending against oppositions filed by third parties
• Filing appeals against adverse decisions by the Department

Effective prosecution requires understanding Nepal’s trademark laws and procedures. Many applicants hire experienced trademark attorneys to handle prosecution and maximize chances of registration.

Read More:

• Trademark Registration in Nepal
• Intellectual Property Law in Nepal
• Patent Law in Nepal
• Industrial Design 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 governing Trademark in Nepal

The key laws and authorities governing trademarks in Nepal are:

• Patent, Design and Trade Mark Act, 2022 (1965)
• Patent, Design and Trade Mark Rules, 2023 (1966)
• Department of Industry (Trademark Office)
• Nepal courts for trademark litigation

The Department of Industry is the primary authority for trademark registration and administration. The courts handle trademark infringement cases and appeals of trademark office decisions.

International Conventions of Trademark

Nepal is a member of key international trademark conventions:

• Paris Convention for Protection of Industrial Property
• Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

These provide certain protections for foreign trademark owners in Nepal. However, Nepal is not yet a member of the Madrid Protocol for international trademark registration.

Conclusion

Trademark registration provides important legal protection for businesses in Nepal. Registration as per the Trademark Law in Nepal grants exclusive rights to use the mark and enforce it against infringers. Foreign companies can register marks directly or claim convention priority.

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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.