How to register an International Trademark in Nepal?

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Introduction to International Trademark Registration Nepal

International trademark registration in Nepal is a crucial step for businesses seeking to protect their intellectual property rights across borders. Nepal, as a member of the World Intellectual Property Organization (WIPO) and a signatory to the Madrid Protocol, offers a streamlined process for international trademark registration. This system allows trademark owners to file a single application and obtain protection in multiple countries, including Nepal.

The Department of Industry (DOI) under the Ministry of Industry, Commerce and Supplies is the primary authority responsible for trademark registration in Nepal. The Industrial Property Act, 2022 (2079 BS) governs trademark protection in the country, providing a legal framework for both national and international registrations.

Key benefits of international trademark registration in Nepal include:

  1. Simplified application process
  2. Cost-effective protection in multiple countries
  3. Centralized management of trademark portfolio
  4. Enhanced legal protection against infringement
  5. Facilitation of brand expansion in international markets

Legal Framework for International Trademark Protection

Nepal’s legal framework for international trademark protection is primarily based on the following:

  1. Industrial Property Act, 2022 (2079 BS)
  2. Madrid Agreement Concerning the International Registration of Marks
  3. Protocol Relating to the Madrid Agreement (Madrid Protocol)

The Industrial Property Act, 2022 provides comprehensive provisions for trademark registration, protection, and enforcement in Nepal. Section 3 of the Act specifically addresses the registration of trademarks, including international registrations through the Madrid system.

Nepal’s accession to the Madrid Protocol in 2022 has significantly simplified the process of obtaining trademark protection in multiple countries. This international treaty allows trademark owners to file a single application with their national or regional IP office, designating the countries where they seek protection.

Documentation Requirements for International Trademark Registration

To register an international trademark in Nepal, applicants must prepare and submit the following documents:

  1. International application form (MM2)
  2. Power of attorney (if filed through an agent)
  3. Priority document (if claiming priority)
  4. Reproduction of the mark
  5. List of goods and services
  6. Proof of payment of official fees

Additional Requirements:

  • Transliteration and translation of the mark (if applicable)
  • Description of the mark (for non-traditional marks)
  • Color claim (if the mark is in color)

It is essential to ensure that all documents are accurately completed and submitted in the prescribed format to avoid delays or rejections in the registration process.

Step-by-Step Process for International Mark Registration

The process of registering an international trademark in Nepal through the Madrid Protocol involves the following steps:

  1. File a basic application: Submit a trademark application in your home country or region.
  2. Prepare international application: Complete the MM2 form, designating Nepal and other desired countries.
  3. Submit to home office: File the international application with your national or regional IP office.
  4. Examination by WIPO: The World Intellectual Property Organization reviews the application for formalities.
  5. Publication: WIPO publishes the mark in the International Trademark Gazette.
  6. Examination by Nepal’s DOI: The Department of Industry examines the application for compliance with local laws.
  7. Grant or refusal: Nepal’s DOI decides to grant protection or issue a provisional refusal.
  8. Registration: If approved, the mark is registered and protected in Nepal.

Madrid Protocol Application Process in Nepal

The Madrid Protocol application process for Nepal involves:

  1. Designation: Include Nepal in the list of designated countries in your MM2 form.
  2. Notification: WIPO notifies Nepal’s DOI of the international registration.
  3. Examination: The DOI examines the application according to Nepalese trademark laws.
  4. Decision: Within 18 months, the DOI must communicate its decision to WIPO.
  5. Protection: If no refusal is issued, the mark is automatically protected in Nepal.

The Madrid Protocol streamlines the registration process, allowing applicants to manage their trademark portfolio centrally and expand protection to new markets efficiently.

Government Fees for International Trademark Registration

The fees for international trademark registration in Nepal consist of:

  1. Basic fee (paid to WIPO)
  2. Complementary fee (for each designated country)
  3. Supplementary fee (for each class of goods/services beyond three)
  4. Individual fee (specific to Nepal)

As of 2023, Nepal’s individual fee for international registration is:

  • CHF 60 for one class
  • CHF 20 for each additional class

These fees are subject to change, and applicants should consult the latest fee schedule on the WIPO website or contact the Department of Industry for current information.

Timeline Overview for International Trademark Protection

The timeline for obtaining international trademark protection in Nepal typically follows this schedule:

  1. Filing: Day 0 – International application submitted
  2. WIPO Examination: 2-4 weeks
  3. Publication: 1-2 weeks after WIPO examination
  4. Nepal’s Examination: Up to 18 months from notification date
  5. Registration/Refusal: Within 18 months of notification

The entire process can take up to 20-22 months, depending on various factors such as the complexity of the mark and the workload of the examining office.

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Examination Process for International Trademark Applications

Nepal’s Department of Industry conducts a thorough examination of international trademark applications, which includes:

  1. Formal examination: Checking for compliance with filing requirements
  2. Substantive examination: Assessing distinctiveness and potential conflicts
  3. Absolute grounds: Evaluating if the mark is descriptive, generic, or contrary to public order
  4. Relative grounds: Searching for similar or identical marks that may cause confusion

The examination process is conducted in accordance with Sections 4 and 5 of the Industrial Property Act, 2022, which outline the grounds for refusal of trademark registration.

Opposition Procedures for International Trademark Registration

After publication, third parties can oppose the registration of an international trademark in Nepal. The opposition procedure includes:

  1. Opposition period: 35 days from publication date
  2. Filing opposition: Submitting a written statement to the DOI
  3. Notification: WIPO and the applicant are informed of the opposition
  4. Response: Applicant has the opportunity to defend the application
  5. Decision: The DOI issues a decision on the opposition

The opposition process is governed by Section 8 of the Industrial Property Act, 2022, which provides detailed procedures for trademark opposition in Nepal.

Protection Scope for International Trademarks Nepal

International trademarks registered in Nepal enjoy protection under the Industrial Property Act, 2022. The scope of protection includes:

  1. Exclusive right to use the mark in Nepal
  2. Right to prevent unauthorized use by third parties
  3. Protection against counterfeit goods
  4. Ability to license or assign the trademark
  5. Enforcement through civil and criminal actions

The protection extends to all goods and services listed in the registration and lasts for an initial period of 10 years from the date of international registration.

Renewal Requirements for International Trademark Registration

To maintain protection in Nepal, international trademark registrations must be renewed:

  1. Renewal period: Every 10 years from the date of international registration
  2. Renewal request: Submit MM11 form to WIPO
  3. Fees: Pay renewal fees for Nepal and other designated countries
  4. Grace period: 6-month grace period available with additional fee
  5. Partial renewal: Option to renew for only some goods/services or countries

Failure to renew may result in the loss of trademark protection in Nepal and other designated countries.

Professional Services for International Trademark Filing

While not mandatory, engaging professional services for international trademark filing in Nepal can be beneficial:

  1. Trademark attorneys: Provide legal expertise and guidance
  2. IP agents: Assist with application preparation and filing
  3. Translation services: Ensure accurate translation of documents
  4. Search firms: Conduct comprehensive trademark searches
  5. Local representatives: Handle communications with the DOI

Professional assistance can help navigate the complexities of international trademark registration and improve the chances of successful registration.

Post-Registration Compliance for International Trademarks

After registration, trademark owners must comply with certain requirements to maintain protection in Nepal:

  1. Use requirement: Use the mark in Nepal within 3 years of registration
  2. Recordal of changes: Report changes in ownership, name, or address
  3. License agreements: Record trademark licenses with the DOI
  4. Renewal: Timely renewal of the registration every 10 years
  5. Monitoring: Actively monitor for potential infringements

Compliance with these requirements is essential to maintain the validity and enforceability of the trademark in Nepal.

Enforcement Rights for International Trademarks Nepal

International trademark owners can enforce their rights in Nepal through various means:

  1. Civil action: File lawsuits against infringers in Nepalese courts
  2. Criminal prosecution: Pursue criminal charges for counterfeiting
  3. Customs measures: Request seizure of counterfeit goods at borders
  4. Administrative actions: File complaints with relevant government agencies
  5. Alternative dispute resolution: Utilize mediation or arbitration

The Industrial Property Act, 2022 provides robust enforcement mechanisms, including provisions for damages, injunctions, and destruction of infringing goods.

International Classification Requirements for Trademark Registration

Nepal follows the Nice Classification system for trademark registration:

  1. 45 classes: Goods (1-34) and Services (35-45)
  2. Specification: Clear description of goods/services in each class
  3. Multi-class applications: Allowed under a single application
  4. Class headings: Generally not accepted; specific items required
  5. Limitations: Possibility to limit goods/services for Nepal

Accurate classification is crucial for effective trademark protection and avoiding potential conflicts or objections during the registration process.

FAQs

What is the Madrid Protocol system?

The Madrid Protocol is an international treaty that allows trademark owners to file a single application for protection in multiple countries simultaneously.

How long does international registration take?

The international registration process in Nepal can take up to 18-22 months from the date of notification by WIPO, depending on various factors and potential oppositions.

What are the registration costs involved?

Registration costs include WIPO fees, individual fees for Nepal (CHF 60 for one class, CHF 20 for each additional class), and potential professional service fees.

Can I file directly in Nepal?

Yes, you can file a national trademark application directly with Nepal’s Department of Industry, but this doesn’t provide international protection through the Madrid system.

How long is protection valid?

International trademark protection in Nepal is valid for 10 years from the date of international registration and can be renewed indefinitely for successive 10-year periods.

What documents are needed for registration?

Required documents include the MM2 form, power of attorney (if applicable), priority document (if claiming priority), reproduction of the mark, and list of goods/services.

How do I maintain international registration?

Maintain international registration by using the mark, recording changes, renewing every 10 years, and monitoring for potential infringements in Nepal and other designated countries.