Tuffan vs. Toofan

 In a notable ruling delivered by the Patan High Court of Nepal provided clarity on the complexities surrounding trademark registration in the case of Raja Flavours and Food LLP vs. The Department of Industries (DOI). This decision underscores an important principle: merely filing a trademark is insufficient to establish ownership rights; it is the duty of the trademark owner to actively pursue and monitor the status of their registration. 

Case Background 

Raja Flavours and Food LLP, a prominent Indian company in the food and beverage sector, filed an application to register the “TOOFAN” trademark under class 30 in Nepal. However, DOI rejected the application, citing similarities with previously filed “TUFFAN” trademark by Pragati Tea Industry, a local Nepalese company. The TUFFAN mark had been filed on October 8, 2006, and based on this prior application, the DOI issued a formal rejection of the TOOFAN trademark. 

Legal Proceedings 

Dissatisfied with this decision, Raja Flavours filed an appeal with the Patan High Court. In the appeal, they argued that the owners of the TUFFAN trademark had failed to meet the necessary administrative obligations, including fee payments and certificate issuance, despite its publication in the Industrial Property Bulletin on April 29, 2008. Furthermore, they contended that TOOFAN was a well-known trademark among consumers in Nepal, and its use alongside TUFFAN for different products would not cause confusion or violate any legal provisions.

Court’s Decision

Upon reviewing the arguments, the Patan High Court found in favor of Raja Flavours and Food LLP, highlighting procedural deficiencies in the DOI’s examination process. The court ruled that the DOI had not provided a fair opportunity for opposition or conducted a thorough examination of the case. As a result, the court annulled the DOI’s decision and allowed the TOOFAN trademark to proceed to publication in the Industrial Property Bulletin.

Significance of the Ruling

This decision is crucial in Nepalese trademark law, reinforcing the principle that trademark filing alone does not automatically confer rights. Trademark owners must remain vigilant and actively engage in the registration process to protect their interests. The case serves as a valuable reference for future trademark disputes in Nepal.

For further information please contact at: info@apexlaw.com.np