Trademark Law in Nepal

Trademark law in Nepal is a crucial aspect of intellectual property rights protection, governing the registration and use of distinctive signs, symbols, or marks that identify goods or services of a particular trader. The legal framework for trademark protection in Nepal is primarily based on the Patent, Design and Trademark Act, 2022 (1965 AD), which provides the foundation for trademark registration, protection, and enforcement.

In Nepal, trademarks play a vital role in safeguarding business interests, promoting fair competition, and protecting consumers from confusion or deception in the marketplace. The Department of Industry, under the Ministry of Industry, Commerce and Supplies, is the primary government agency responsible for trademark administration and registration in Nepal.

Legal Framework Governing Trademark Protection in Nepal

The legal framework for trademark protection in Nepal consists of several key pieces of legislation and international agreements:

1. Patent, Design and Trademark Act, 2022 (1965 AD): This is the primary legislation governing trademark protection in Nepal. It provides the legal basis for trademark registration, rights, and enforcement.
2. Patent, Design and Trademark Rules, 2033 (1977 AD): These rules supplement the Act and provide detailed procedures for trademark registration and administration.
3. Industrial Property Act, 2073 (2017 AD): This Act aims to modernize and consolidate various aspects of intellectual property rights, including trademarks.
4. Paris Convention for the Protection of Industrial Property: Nepal became a member of this international treaty in 2001, which provides for reciprocal protection of industrial property rights, including trademarks.
5. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS): As a member of the World Trade Organization (WTO), Nepal is obligated to comply with the TRIPS Agreement, which sets minimum standards for trademark protection.

Types of Trademarks Recognized Under Nepali Law

Nepali law recognizes various types of trademarks, including:

1. Word marks: Consisting of words, letters, or numerals
2. Device marks: Graphical elements, logos, or symbols
3. Combination marks: A combination of words and graphical elements
4. Color marks: Specific colors or color combinations
5. Three-dimensional marks: The shape of goods or their packaging
6. Sound marks: Distinctive sounds or jingles
7. Collective marks: Used by members of an association or group
8. Certification marks: Indicating compliance with certain standards

Requirements for Trademark Registration in Nepal

To register a trademark in Nepal, the following requirements must be met:

1. Distinctiveness: The mark must be capable of distinguishing the goods or services of one undertaking from those of others.
2. Non-descriptiveness: The mark should not merely describe the nature, quality, or characteristics of the goods or services.
3. Legality: The mark must not be prohibited by law or contrary to public order or morality.
4. Availability: The mark should not be identical or confusingly similar to existing registered trademarks or well-known marks.
5. Use or intent to use: The applicant must be using the mark in commerce or have a bona fide intention to use it.
6. Graphical representation: The mark must be capable of being represented graphically.

Process of Trademark Application and Registration

The trademark registration process in Nepal involves the following steps:

1. Conduct a trademark search to ensure the mark is available for registration.
2. Prepare and file a trademark application with the Department of Industry, including:
   • Application form
   • Power of attorney (if filed through an agent)
   • Specimen of the mark
   • List of goods or services
   • Proof of payment of official fees
3. Examination of the application by the Registrar to ensure compliance with legal requirements.
4. Publication of the application in the Industrial Property Bulletin for opposition purposes.
5. If no opposition is filed within 90 days, or if opposition is overcome, the trademark is registered.
6. Issuance of the registration certificate by the Department of Industry.

Duration and Renewal of Trademark Protection

Under Section 18 of the Patent, Design and Trademark Act, 2022 (1965 AD), trademark registration in Nepal is valid for an initial period of 7 years from the date of application. The registration can be renewed for successive periods of 7 years each by paying the prescribed renewal fees.

To maintain the registration, the trademark owner must file a renewal application within one year before the expiration of the current registration period. A grace period of 6 months is available for late renewal with payment of additional fees.

Rights Conferred by Trademark Registration in Nepal

Trademark registration in Nepal confers the following rights to the trademark owner:

1. Exclusive right to use the registered trademark in relation to the goods or services for which it is registered.
2. Right to prevent unauthorized use of identical or similar marks by third parties for similar goods or services.
3. Right to take legal action against infringers and seek remedies such as injunctions, damages, and seizure of infringing goods.
4. Right to license or assign the trademark to third parties.
5. Right to use the ® symbol to indicate that the mark is registered.

Trademark Infringement and Available Legal Remedies

Trademark infringement occurs when an unauthorized party uses a mark that is identical or confusingly similar to a registered trademark for similar goods or services. The Patent, Design and Trademark Act, 2022 (1965 AD) provides various remedies for trademark infringement:

1. Civil remedies:
   • Injunctions to prevent further infringement
   • Damages or account of profits
   • Delivery up or destruction of infringing goods
2. Criminal remedies:
   • Fines up to NPR 100,000
   • Imprisonment for up to 2 years
   • Seizure and forfeiture of infringing goods
3. Administrative remedies:
   • Customs seizure of counterfeit goods
   • Cancellation or rectification of infringing registrations

Well-Known Trademarks and Their Protection in Nepal

Nepal recognizes and provides special protection to well-known trademarks, even if they are not registered in the country. The Industrial Property Act, 2073 (2017 AD) introduces provisions for the protection of well-known marks, in line with Article 6bis of the Paris Convention and Article 16 of the TRIPS Agreement.

Well-known trademarks are protected against unauthorized use or registration of identical or similar marks, even for dissimilar goods or services, if such use would indicate a connection with the owner of the well-known mark and is likely to damage their interests.

International Trademark Registration Through Madrid Protocol

Nepal is not currently a member of the Madrid Protocol, which allows for international trademark registration through a single application. However, foreign applicants can file national applications directly with the Department of Industry or through a local agent.

Trademark Licensing and Assignment Procedures in Nepal

Trademark licensing and assignment are governed by the Patent, Design and Trademark Act, 2022 (1965 AD) and the Patent, Design and Trademark Rules, 2033 (1977 AD).

Licensing:

1. Trademark licenses must be in writing and signed by both parties.
2. The license agreement should be recorded with the Department of Industry.
3. The licensor must maintain control over the quality of goods or services provided under the licensed mark.

Assignment:

1. Trademarks can be assigned with or without the goodwill of the business.
2. The assignment must be in writing and signed by both parties.
3. The assignment deed should be recorded with the Department of Industry.

Read More

1. Startup Lawyer in Nepal
2. Registration of Airlines in Nepal
3. Foreign Investment Law in Nepal

Opposition and Cancellation Proceedings for Trademarks

Opposition:

1. Any person can file an opposition within 90 days of publication of the trademark application.
2. Grounds for opposition include lack of distinctiveness, similarity to existing marks, and bad faith.
3. The Registrar hears both parties and decides on the opposition.

Cancellation:

1. Registered trademarks can be cancelled on grounds such as non-use, becoming generic, or obtained by fraud.
2. Cancellation proceedings can be initiated by interested parties or ex officio by the Registrar.
3. The trademark owner has the right to defend against cancellation claims.

Role of Department of Industry in Trademark Administration

The Department of Industry plays a central role in trademark administration in Nepal:

1. Receiving and examining trademark applications
2. Maintaining the trademark register
3. Publishing trademark applications and registrations
4. Conducting opposition and cancellation proceedings
5. Issuing registration certificates and renewals
6. Recordal of assignments and licenses
7. Providing information and guidance on trademark matters

Challenges in Enforcing Trademark Rights in Nepal

Trademark enforcement in Nepal faces several challenges:

1. Limited awareness of intellectual property rights among businesses and consumers
2. Lack of specialized intellectual property courts or judges
3. Delays in legal proceedings and enforcement actions
4. Prevalence of counterfeit goods in the market
5. Limited resources for customs authorities to detect and seize infringing goods
6. Need for stronger border measures to prevent the import of counterfeit products
7. Difficulties in enforcing rights against online infringements

Recent Developments and Future Trends in Trademark Law

Recent developments and future trends in Nepali trademark law include:

1. Proposed amendments to the Patent, Design and Trademark Act to modernize the legal framework
2. Efforts to streamline the trademark registration process and reduce processing times
3. Increased focus on protecting well-known marks and geographical indications
4. Potential accession to international trademark treaties, such as the Madrid Protocol
5. Enhanced cooperation with international organizations like WIPO for capacity building
6. Digitalization of trademark records and implementation of online filing systems
7. Strengthening of enforcement mechanisms, including specialized IP courts

FAQs:

1. What can be registered as a trademark in Nepal? Words, logos, symbols, colors, sounds, and three-dimensional shapes can be registered as trademarks in Nepal, provided they meet the requirements of distinctiveness and are not prohibited by law.
2. How long does trademark registration process take? The trademark registration process in Nepal typically takes 12-18 months, depending on various factors such as the complexity of the application and any oppositions filed.
3. What is the duration of trademark protection in Nepal? Trademark protection in Nepal lasts for 7 years from the date of application and can be renewed indefinitely for successive periods of 7 years each.
4. Can foreign companies register trademarks in Nepal? Yes, foreign companies can register trademarks in Nepal either directly or through a local agent. There are no restrictions on foreign ownership of trademarks.
5. How are trademark infringements dealt with in Nepal? Trademark infringements in Nepal can be addressed through civil litigation, criminal prosecution, and administrative actions, including customs seizures and cancellation proceedings.
6. What is the cost of trademark registration in Nepal? The official fees for trademark registration in Nepal vary depending on the number of classes and type of applicant. Additional costs may include attorney fees and renewal charges.
7. Is Nepal a member of international trademark treaties? Nepal is a member of the Paris Convention and the TRIPS Agreement. However, it is not currently a member of the Madrid Protocol for international trademark registration.