We provide comprehensive services to a diverse range of clients, from Fortune 500 companies to a small and medium-sized enterprises and innovative start-ups across various sectors. With a distinguished legacy in shaping trademark jurisprudence in Nepal, we have garnered numerous awards and reorganization of our expertise and continuous contribution. 

The purpose of this material is to give our clients a flat idea about recent trademark protection system in Nepal so as to facilitate their trademark protection work in Nepal.

Principles Of Protection

Basic principles for trademark protection in Nepal can be summarized as “Registration Principle” and “First to File” principle. That’s to say, only registered trademark enjoys prima facie protection in Nepal. And, for applications for identical or similar trademarks in respect of identical or similar goods filed by different applicants, registration is granted to the applicant who’s the first to file an application for trademark registration. 

Filing an application

Application for registration of an ordinary trademark (including a service mark) must be filed in prescribed form. One representation must be affixed to the form itself. All applications must be accompanied by the prescribed official fee and a Power of Attorney. It must be signed by the applicant, two witnesses and duly stamped/sealed.

Registrable Marks 

All marks are not registerable. For a Mark to be registerable, it must confirm to certain statutory prescriptions. One such fundamental prescription is that a mark to be registerable must be "distinctive". The quality of distinctiveness, distinctive character, or capable of distinguishing is a basic principle as stated in the national law. 

Unregistrable Marks

Trademark which may hurt the prestige of any individual or institution or adversely affect the public conduct or morality or undermine the national interest or the reputation of the trade-mark of any other person, or in case such trade-mark found to have already been registered in the name of another person, it shall not be registered. 

Priority Claim 

Nepal ratified the Paris Convention in 2001. An application for registration of a trademark claiming convention priority can be filed within 6 months from the date of filing of the corresponding application in the respective jurisdiction. To claim priority, a certified copy of the convention application is required. 

Trademark Search 

It is recommended to conduct a trademark search to ascertain the existence of prior registrations of identical marks. The digital database of registered, filed and published trademarks is available. This has made trademark search easy and expeditious. 

A trademark search can be conducted by making a formal request each in particular class. The search result with detailed report can be obtained within 7 days from the date of request. 

 Prosecution of the Application 

The trademark office will conduct substantive examination of the application; conduct a search to identify if any prior registration exists. If the trademark application is accepted, it will be published in the industrial property bulletin. If there are any objections to the registration, an examination report is sent to the applicant/agent. 

Once an examination report is issued, the applicant can file an appeal before the High Court. If the trademark application is accepted, it will be published in the industrial property bulletin.

Opposition 

The Mark remains open to opposition for 90 days from its publication in the bulletin by a person interested to enter opposition. If a Notice of Opposition is filed within this period, the application enters the opposition proceedings. The Director General allowing or rejecting the opposition. After such decision, any party may appeal to the High Court within 35 days of the decision. In the absence of an opposition, the relevant certificate of registration is issued. 

Issuance of Registration Certificate 

If there is no opposition against the proposed registration or the opposition proceedings have been decided in favor of the applicant, the mark will be registered in the national trademark register and a certificate of registration will be issued. 

A trademark registration is valid for 7 years as of the date of registration and renewable for further periods of 7 years perpetually. 

Renewal / Restoration 

An application for renewal of the mark should be made within 35 days after the date of expiration. The mark can also be renewed by paying surcharge within six months after the expiry date. If not renewed within the said six months, the mark would be removed from the register of trademark. After then a fresh application for registration of the mark is to be filed. There is no provision of restoration.

Cancellation of a Trademark Registration 

After registration of the trademark, plea for cancellation of the trademark can be filed   before the Department of Industry (DOI). 

Infringement 

Unauthorized use of a trademark registered under the law or an imitation of such trademark applied on same goods and services, or sale, storing for the purpose of sale, or exhibiting for sale of goods and services bearing a counterfeited mark, or using a mark duly registered under the law by another person to serve the purpose of unauthorized promotion of same goods or services are offenses punishable under the law. 

A registered trademark is infringed, if a person uses unauthorizely the identical or confusingly similar Trademark in relation to the goods or service for which it is registered. Infringement action is possible only for the Registered trademark and in such cases plaintiff has to show the identical or deceptively similar trademark is being used without any authority by the defendant. 

 Remedies available against Infringement of Trademark:

Civil remedies: 
1.    Temporary and permanent injunction to restrain other from using the mark in whatever way. 
2.    To claim damages or an account for profit 
3.    Seizure of the infringing goods/labels/advertising materials for destruction. 

Criminal action:
1.    By conducting raids 
2.    To seize the infringing goods/ labels/ advertising and printing materials etc. 
3.    Penalty for these offences and Penalty amount up to NRS 100,000.00 

Well-known Trademarks 

Well-known trademarks in the international market also need to get the registration in Nepal. The marks that is not registered in Nepal, and known to the substantial segment of the public, in such the department may recognized if satisfied. 

Disclaimer 
We hereby inform all readers that the content of this article is for informational purposes only and should not be considered as legal advice. 

For further information or legal consultation, please contact:  info@apexlaw.com.np