Court case

Similar trademark registered for different products in same class does not constitute a violation of law


The disputed question in the field of Trademark law was answered by the Patan High Court, when it ruled, in the case of Aman Group Sarl vs. The Department of Industries (DOI), that no legal violations occur if two companies offering distinct goods and services, registered under the same class.
Aman Group Sarl, a Swiss-based multinational company, exclusively specialized in luxury hotels filed an application for the registration of “AMAN” and “” trademark under class 16 and 25 in Nepal. The dispute in the present case arises when the DOI rejected the trademark application, during examination emphasizing that the trademark had already been registered by another company within the same class. 
Dissatisfied with this decision of DOI, Aman Group Sarl appealed before the Patan High Court. The decision of the Patan High Court serves answer to the disputed question- Whether similar Trademarks can be used by two different companies for unidentical and different products?
The appellants argued that the purpose of trademarks can differ even if goods or services fall under the same class. Aman Group applied for the registration of items such as T-shirts, socks etc. under class 25, and paper, boards etc. under class 16, which differs from products of prior registered mark of another company. The appellants claimed that using similar trademarks for different products does not violate any law. The appellants contended that solely considering the name and class of trademark without examining its ‘purpose’ goes against the principles of Natural Justice. 
After hearing arguments from both parties, the Patan High Court issued a decision in favor of Aman Group Sarl on 31 October, 2023. Consequently, it is confirmed that despite the similarity in marks, the two entities operate in distinct trade channels of production and have different purposes. Aman Group is not detrimental as the products are clearly distinct from those of the cited mark of another company. The decision of the DOI was overturned, and AMAN trademark was approved for publication in the Industrial Property Bulletin and further registration process.
Thus, it was established that no law is breached if the two companies with two different products use a similar trademark for their products in the same class. 

 

Aman Group Sarl was represented by Apex Law Chamber at the Patan High Court.


Aman Group Sarl vs. Department of Industries, decision issued by Patan High Court on 31 October, 2023.

 

 

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