Trademark registration in Nepal is governed by the Patent, Design and Trademark Act, 2022 (1965) and its subsequent amendments. This legal framework provides protection for brands, logos, and distinctive marks used in commerce. For businesses operating in Nepal, securing trademark protection is essential to safeguard intellectual property rights and maintain market distinctiveness.
Understanding Trademark Protection in Nepal
A trademark in Nepal encompasses any word, symbol, name, design, or combination thereof that distinguishes goods or services of one entity from others in the marketplace. According to Section 2(c) of the Patent, Design and Trademark Act, a trademark is defined as “a word, symbol, or picture, or a combination thereof, to be used by any firm, company or individual in their products or services to distinguish them from the products or services of others.”
Trademark registration grants the owner exclusive rights to use the mark in connection with the goods or services specified in the registration. The Department of Industry (DOI) serves as the primary regulatory body responsible for trademark administration in Nepal. Registration provides legal protection for an initial period of 7 years, with the option for renewal every 7 years thereafter, as stipulated in Section 18(b) of the Act.
Benefits of Trademark Registration
Registering a trademark in Nepal offers several significant advantages:
Legal Protection Against Infringement
Registration provides the legal basis to initiate action against unauthorized use of similar or identical marks. Section 16 of the Patent, Design and Trademark Act explicitly prohibits the unauthorized use of registered trademarks, with penalties including fines up to NPR 100,000 and imprisonment up to 4 years for violations.
Exclusive Rights to Use
Trademark owners gain the exclusive right to use their mark in connection with the registered goods or services throughout Nepal. This exclusivity is enforceable through legal remedies available under Sections 16-17 of the Act.
Business Asset Value
A registered trademark becomes a valuable business asset that can be licensed, franchised, or sold. The economic value of the trademark can appreciate significantly over time as brand recognition grows.
Consumer Trust and Brand Recognition
Registration helps establish consumer trust and brand loyalty by ensuring consistent quality and authenticity of products or services. This protection extends to the goodwill associated with the brand.
Trademark Registration Process in Nepal
The trademark registration process in Nepal involves several sequential steps that must be carefully followed to ensure successful registration:
Preparing Logo and Trademark Materials
The first step involves preparing the trademark materials for registration. This includes:
- Creating a distinctive logo or wordmark that is not generic or merely descriptive
- Ensuring the mark is not confusingly similar to existing trademarks
- Preparing high-quality digital files of the mark (preferably in vector format)
- Determining the appropriate classes of goods or services under the Nice Classification system
- Gathering evidence of use if the mark is already in commercial use
The trademark should be distinctive and capable of distinguishing your goods or services from others in the marketplace, as required by Section 16 of the Act.
Checking Availability of the Trademark
Before filing an application, it is crucial to conduct a comprehensive trademark search to verify availability:
- Conduct a preliminary search in the DOI trademark database
- Review existing registrations and pending applications
- Assess potential conflicts with similar marks in related classes
- Evaluate the distinctiveness and registrability of the proposed mark
- Consider consulting with a trademark attorney for a professional search report
This search helps identify potential conflicts that could lead to rejection of the application. According to Section 18(a) of the Act, the Registrar may refuse registration if the mark is identical or confusingly similar to an existing registered trademark.
Filing Application at Department of Industry
The formal application must be submitted to the Department of Industry with the following documents:
- Completed trademark application form (Form No. 1)
- Power of attorney if filed through an agent (notarized and legalized)
- Clear representation of the trademark (8 copies)
- List of goods or services classified according to the Nice Classification
- Company registration certificate or identity documents
- Application fee receipt (NPR 1,000 per class)
- Authorization letter if filed by a representative
The application must comply with all requirements specified in Section 17 of the Patent, Design and Trademark Act and the related regulations.
Obtaining Temporary Activation
Upon submission of a complete application, the DOI issues a temporary acknowledgment:
- Initial examination for compliance with formal requirements
- Issuance of a filing receipt with application number
- Temporary protection pending substantive examination
- Confirmation of priority date for the application
- Authorization to use the ™ symbol (not the ® symbol yet)
This temporary activation provides limited protection while the application undergoes substantive examination. During this period, the applicant may use the trademark in commerce, though full legal protection is only granted upon final registration.
Publication in IP Bulletin
If the application passes initial examination, the trademark is published in the Industrial Property Bulletin:
- Publication includes the mark, applicant details, and goods/services
- Publication initiates a 90-day opposition period
- Third parties may file opposition during this period
- Applicant has the right to respond to any opposition filed
- If no opposition is filed, the application proceeds to registration
This publication requirement, mandated by Section 18(c) of the Act, ensures transparency and allows interested parties to challenge potentially conflicting marks before registration is granted.
Registration of Trademark
Upon successful completion of all previous steps, the trademark is registered:
- Issuance of trademark registration certificate
- Assignment of registration number
- Entry in the Register of Trademarks
- Grant of exclusive rights for 7 years from filing date
- Authorization to use the ® symbol with the registered mark
- Option to renew every 7 years by paying prescribed fees
The registration certificate serves as prima facie evidence of ownership and validity of the trademark, as established in Section 21(c) of the Act.
Maintaining and Enforcing Trademark Rights
Once registered, trademark owners must actively maintain and enforce their rights:
Renewal and Maintenance
Trademark registrations in Nepal require periodic renewal:
- Initial registration valid for 7 years
- Renewable for successive 7-year periods
- Renewal application must be filed within 6 months before expiration
- Late renewal possible within 6 months after expiration with additional fee
- Failure to renew results in cancellation of registration
Section 23(b) of the Act stipulates that failure to renew within the prescribed period results in removal of the trademark from the register.
What is the renewal fee for trademarks in Nepal?
The renewal fee for trademarks in Nepal is NPR 700 per class. If renewal is filed within the grace period (6 months after expiration), an additional late fee of NPR 100 per month applies. These fees are subject to periodic revision by the Department of Industry.
How long does trademark registration remain valid in Nepal?
Trademark registration in Nepal remains valid for 7 years from the date of filing the application. The registration can be renewed indefinitely for successive periods of 7 years each by filing a renewal application and paying the prescribed fees before the expiration date.
What documents are required for trademark renewal?
For trademark renewal in Nepal, you need to submit: a completed renewal application form, a copy of the original registration certificate, proof of use of the trademark in commerce, power of attorney if filed through an agent, and the renewal fee payment receipt.
Can a foreign company register a trademark in Nepal?
Yes, foreign companies can register trademarks in Nepal. They must appoint a local agent or attorney to file the application on their behalf and provide a notarized and legalized power of attorney. The application process is the same, but additional documentation may be required to establish the foreign entity’s legal status.
Trademark Infringement and Remedies
The Nepalese legal system provides several remedies for trademark infringement:
Civil Remedies
Trademark owners can pursue civil actions against infringers:
- Injunctive relief to stop unauthorized use
- Damages for actual losses and lost profits
- Account of profits made by the infringer
- Delivery up or destruction of infringing goods
- Recovery of legal costs in successful actions
Section 25 of the Act empowers the court to grant these remedies upon finding infringement.
Criminal Penalties
Serious trademark infringement can result in criminal penalties:
- Fines up to NPR 100,000 for infringement
- Imprisonment up to 4 years for willful infringement
- Seizure and destruction of counterfeit goods
- Enhanced penalties for repeat offenders
- Criminal prosecution by government authorities
These penalties are outlined in Section 19 of the Patent, Design and Trademark Act.
What constitutes trademark infringement in Nepal?
Trademark infringement in Nepal occurs when an unauthorized party uses a mark that is identical or confusingly similar to a registered trademark in relation to similar goods or services. This includes unauthorized reproduction, imitation, or use of the mark in a way that is likely to cause confusion among consumers about the source of goods or services.
How can I enforce my trademark rights in Nepal?
You can enforce trademark rights in Nepal by: sending cease and desist letters to infringers, filing a complaint with the Department of Industry, initiating civil litigation in the Commercial Bench of the District Court, requesting customs authorities to seize counterfeit goods, and in serious cases, pursuing criminal prosecution through police authorities.
What is the statute of limitations for trademark infringement claims?
The statute of limitations for filing trademark infringement claims in Nepal is generally 35 days from the date of knowledge of the infringement, as per the general limitation period under Nepalese law. However, for continuing infringements, the limitation period may restart with each new act of infringement.
International Trademark Protection
Nepal is not a member of the Madrid Protocol, which affects international trademark strategies:
International Registration Considerations
For businesses seeking protection beyond Nepal:
- Separate national applications required in each country
- No centralized international registration system available
- Priority claims possible under Paris Convention (6 months)
- Use of local agents in each jurisdiction recommended
- Strategic filing in key markets based on business needs
Nepal’s adherence to the Paris Convention for the Protection of Industrial Property allows applicants to claim priority based on earlier filings in other member countries.