Trademark Registration in Nepal

Introduction

Trademark registration in Nepal operates under the Patent, Design and Trademark Act, 2022 (2079 BS), which replaced the previous 1965 Act. The Department of Industry (DOI) administers trademark registration through its Intellectual Property Section. A trademark serves as a distinctive sign identifying goods or services of one enterprise from others. Registration provides exclusive rights to use the mark and legal protection against unauthorized use. Nepal follows the Nice Classification system for categorizing goods and services. Both domestic and foreign entities can register trademarks in Nepal. The registration process requires compliance with specific legal requirements and submission of prescribed documents. Protection extends for ten years from the registration date and remains renewable indefinitely.

Legal Framework for Trademark Registration

The Patent, Design and Trademark Act, 2022 governs trademark registration in Nepal. This Act replaced the Patent, Design and Trademark Act, 1965, modernizing intellectual property protection. The Patent, Design and Trademark Rules, 2024 (2081 BS) provide detailed procedural guidelines. Section 23 of the Act defines registrable trademarks. Section 24 lists grounds for refusal of registration. The Act recognizes service marks, collective marks, and certification marks. Nepal is a member of the World Intellectual Property Organization (WIPO) since 1997. The country acceded to the Paris Convention for the Protection of Industrial Property in 2001. These international commitments align Nepal’s trademark system with global standards.

Types of Trademarks Registrable in Nepal

The Act permits registration of various trademark categories. Word marks consist of letters, numbers, or combinations thereof. Device marks include logos, symbols, and graphical representations. Composite marks combine words and devices. Three-dimensional marks protect product shapes or packaging. Sound marks register distinctive audio signals. Color marks protect specific color combinations when distinctive. Service marks identify services rather than goods. Collective marks represent associations or groups. Certification marks guarantee specific quality standards. Well-known marks receive protection even without registration under Section 25. The Act prohibits registration of deceptive marks, government emblems, and marks contrary to public morality under Section 24.

Eligibility for Trademark Registration

Local Applicants

Nepali citizens can apply for trademark registration individually or through business entities. Registered companies under the Companies Act, 2063 qualify as applicants. Partnership firms registered under the Partnership Act, 2020 can apply. Sole proprietorships with business registration can file applications. Cooperatives registered under the Cooperative Act, 2074 are eligible. Non-profit organizations with legal status can register trademarks. The applicant must demonstrate actual use or bona fide intention to use the mark. Proprietorship of the mark must be established through evidence. The applicant’s address in Nepal must be provided for correspondence.

Foreign Applicants

Foreign individuals and entities can register trademarks in Nepal. Companies incorporated outside Nepal must provide incorporation certificates. Foreign applicants must appoint a local agent or representative. The agent must be authorized through a power of attorney. Priority claims require filing within six months under Paris Convention provisions. Foreign applicants must provide their home country registration details if applicable. Reciprocity provisions apply for certain protections. The application must include a valid address for service in Nepal. Translation of foreign documents into Nepali or English is mandatory.

Nice Classification System in Nepal

Nepal adopted the Nice Classification (11th Edition) for categorizing goods and services. The system divides trademarks into 45 classes. Classes 1-34 cover goods. Classes 35-45 cover services. Applicants must specify the class or classes for registration. Multi-class applications are permitted under the current system. Each class requires separate fees. Accurate classification ensures proper protection scope. Class 1 includes chemicals for industrial use. Class 25 covers clothing and footwear. Class 35 includes advertising and business management services. Class 42 covers scientific and technological services. Misclassification can lead to application rejection or limited protection.

Trademark Registration Process

Step 1: Preliminary Search

Conduct a trademark search at the Department of Industry database. The search identifies existing identical or similar marks. This step prevents application rejection due to conflicts. The DOI maintains a searchable online database. Professional search services provide comprehensive results. The search covers registered and pending applications. Similar marks in the same class pose registration obstacles. Phonetic and visual similarities are considered. The search report guides application strategy. This preliminary step saves time and resources.

Step 2: Application Preparation

Prepare the trademark application form as per Schedule 1 of the Rules. Complete Form 1 for trademark registration application. Provide applicant details including name, address, and nationality. Specify the trademark type and representation. List goods or services with appropriate class numbers. Include a clear reproduction of the mark. Prepare the statement of use or intention to use. Gather all supporting documents. Ensure accuracy in all information provided. Errors can delay processing or cause rejection.

Step 3: Application Submission

Submit the application to the Department of Industry, Intellectual Property Section. Applications can be filed in person at the DOI office in Tripureshwor, Kathmandu. Online submission through the DOI portal is available. Pay the prescribed application fees. Obtain an acknowledgment receipt with application number. The filing date establishes priority rights. Submit one application per trademark per class. Multiple class applications require consolidated filing. Ensure all documents are properly signed and stamped. Incomplete applications will be returned.

Step 4: Examination

The DOI examines the application for compliance with legal requirements. Examination covers formalities and substantive grounds. The examiner checks for distinctiveness under Section 23. Conflicts with existing marks are identified. Descriptive or generic terms face rejection. Deceptive or prohibited marks are refused under Section 24. The examination period typically takes 3-6 months. Objections are communicated through an examination report. Applicants receive an opportunity to respond. Amendments or clarifications may be requested.

Step 5: Publication

Accepted applications are published in the Industrial Property Bulletin. Publication occurs after successful examination. The mark remains published for 90 days. This period allows third parties to file oppositions. Publication details include mark representation, applicant name, and class. The bulletin is available online and in print. Publication serves as public notice of the application. No opposition during this period leads to registration. Opposition proceedings follow separate procedures under Section 28.

Step 6: Registration and Certificate

After the opposition period expires without challenge, the mark proceeds to registration. The DOI issues a Certificate of Registration. The certificate contains registration number, date, and validity period. Registration provides exclusive rights from the filing date. The certificate serves as prima facie evidence of ownership. Rights are enforceable against infringers. The registration details are recorded in the official register. The certificate must be preserved as proof of rights. Certified copies can be obtained for legal proceedings.

Documents Required for Trademark Registration

For Individual Applicants

Completed application form (Form 1) with applicant’s signature.
Clear representation of the trademark in JPEG format (5cm x 5cm minimum).
Citizenship certificate copy for Nepali nationals.
Passport copy for foreign nationals.
Power of attorney if filing through an agent.
Priority document if claiming convention priority.
Proof of use or declaration of intention to use.
Business registration certificate if applicable.

For Company Applicants

Completed application form with authorized signatory’s signature.
Clear trademark representation in prescribed format.
Company registration certificate from the Office of Company Registrar.
Board resolution authorizing trademark application.
Memorandum and Articles of Association.
Tax clearance certificate (PAN/VAT registration).
Power of attorney for the authorized representative.
Priority document if claiming Paris Convention priority.
Proof of use or bona fide intention to use.

For Foreign Applicants

Completed application form with authorized signature.
Trademark representation meeting technical specifications.
Certificate of incorporation from home country.
Notarized and legalized power of attorney for local agent.
Home country trademark registration certificate if applicable.
Priority claim documents with certified translation.
Proof of business activities or intention to use in Nepal.
Valid address for service in Nepal.

Trademark Registration Fees

Fee Type	Amount (NPR)	Description
Application Fee	2,000	Per class for initial application
Examination Fee	1,000	Per class for examination process
Publication Fee	1,000	Per class for bulletin publication
Registration Fee	2,000	Per class upon approval
Certificate Fee	500	For issuance of registration certificate
Multi-class Surcharge	500	Additional fee per extra class
Priority Claim Fee	1,000	For Paris Convention priority
Agent Authorization	500	For power of attorney processing
Renewal Fee	5,000	Per class for ten-year renewal
Late Renewal Penalty	2,500	Additional fee for delayed renewal

Timeline for Trademark Registration

The complete trademark registration process typically takes 8-12 months. Initial examination occurs within 3-6 months of filing. The DOI issues examination reports for objections within this period. Response time for objections is 30 days, extendable by 30 days. Publication in the Industrial Property Bulletin follows acceptance. The 90-day opposition period begins from publication date. Registration occurs immediately after the opposition period without challenges. Certificate issuance takes 2-4 weeks post-registration. Expedited processing is not officially available. Delays occur due to objections, oppositions, or incomplete documentation. Complex cases involving hearings extend the timeline. Foreign applications with priority claims may take longer.

Trademark Rights and Protection

Registration grants exclusive rights to use the trademark throughout Nepal. The proprietor can prevent unauthorized use by third parties under Section 29. Rights include manufacturing, selling, and advertising using the mark. Licensed use requires written agreements registered with the DOI. Trademark rights are transferable through assignment procedures. Unregistered well-known marks receive protection under Section 25. Infringement occurs when unauthorized parties use identical or similar marks. Criminal penalties include imprisonment up to one year under Section 68. Civil remedies include injunctions and damages under Section 66. Customs authorities can seize counterfeit goods at borders. Rights enforcement requires active monitoring and legal action.

Trademark Infringement and Remedies

Definition of Infringement

Trademark infringement occurs under Section 29 when unauthorized persons use registered marks. Using identical marks for identical goods constitutes direct infringement. Similar marks causing confusion also qualify as infringement. Unauthorized use in advertising or business documents violates rights. Importing goods bearing infringing marks is prohibited. Infringement includes use in domain names or online platforms. Dilution of well-known marks is actionable. Passing off claims protect unregistered marks with reputation. Intent to deceive consumers is not required for infringement. Actual confusion or likelihood of confusion suffices.

Legal Remedies

Civil remedies are available under Section 66 of the Act. Proprietors can file suits in district courts for injunctions. Permanent injunctions prevent future infringement. Damages compensate for actual losses suffered. Account of profits requires infringers to surrender gains. Delivery up orders mandate destruction of infringing goods. Anton Piller orders allow search and seizure of evidence. Criminal prosecution is possible under Section 68. Penalties include fines up to NPR 100,000. Imprisonment up to one year applies for serious violations. Customs recordation prevents importation of counterfeit goods.

Trademark Renewal Process

Trademark registration remains valid for ten years from the registration date. Renewal applications must be filed before expiry under Section 32. The renewal period extends for another ten years. Applications can be filed six months before expiry. A grace period of six months exists after expiry. Late renewal incurs additional penalty fees. Form 7 is used for renewal applications. The renewal fee is NPR 5,000 per class. Late renewal penalty adds NPR 2,500 per class. Failure to renew results in mark removal from the register. Removed marks can be restored within one year. Renewal maintains continuous protection without re-examination. Multiple renewals are permitted indefinitely.

Opposition and Cancellation Proceedings

Opposition Procedure

Third parties can oppose trademark applications under Section 28. Opposition must be filed within 90 days of publication. Form 3 is used for filing opposition. Grounds include prior rights, bad faith, or descriptive nature. The opponent must provide evidence supporting claims. The applicant receives notice and opportunity to respond. Counter-statements must be filed within 30 days. The DOI conducts hearings if necessary. Evidence and arguments are presented by both parties. The DOI issues a decision accepting or rejecting opposition. Appeals against decisions go to the Intellectual Property Tribunal.

Cancellation Procedure

Registered trademarks can be cancelled under Section 33. Non-use for five consecutive years is a cancellation ground. Generic marks that lose distinctiveness face cancellation. Deceptive marks can be removed post-registration. Cancellation applications are filed with the DOI. The registered proprietor receives notice and hearing opportunity. Evidence of use or special circumstances must be presented. The DOI examines the case and issues orders. Cancelled marks are removed from the register. Appeals against cancellation go to the tribunal. Cancellation does not affect past transactions or licenses.

Assignment and Licensing of Trademarks

Assignment Procedures

Trademarks are transferable as movable property under Section 35. Assignment can be with or without goodwill. Written assignment agreements are mandatory. The agreement must specify terms and consideration. Form 5 is used for recording assignments. Both assignor and assignee must sign the application. Assignment takes effect only after DOI registration. Unregistered assignments do not bind third parties. The DOI updates the register upon approval. Assignment fees apply as per the fee schedule. Partial assignments for specific goods are permitted.

Licensing Arrangements

Trademark proprietors can license use to third parties. Exclusive licenses grant sole rights to licensees. Non-exclusive licenses permit multiple licensees. License agreements must be in writing. Quality control provisions are recommended. Form 6 is used for recording licenses. Unregistered licenses are valid between parties but not against third parties. The DOI maintains a register of licenses. License terms including duration and territory must be specified. Termination provisions should be clearly stated. Registered licenses provide better legal protection.

Well-Known Trademarks in Nepal

Section 25 provides protection to well-known trademarks. Registration is not required for well-known mark protection. The mark must be well-known to relevant consumers in Nepal. Factors include advertising, sales volume, and reputation. International recognition supports well-known status. Protection extends beyond registered classes. Dilution and unfair advantage claims are available. The DOI maintains a list of recognized well-known marks. Applications for well-known status require substantial evidence. Protection prevents registration of similar marks by others. Enforcement is available through civil and criminal proceedings.

International Trademark Considerations

Nepal is a member of the World Intellectual Property Organization since 1997. The country acceded to the Paris Convention in 2001. Priority claims are available for applications filed within six months. Nepal has not joined the Madrid Protocol for international registration. Separate national applications are required in Nepal. Foreign registrations do not automatically extend to Nepal. Reciprocal protection applies for Paris Convention members. International exhaustion doctrine is not explicitly recognized. Parallel imports face legal uncertainty. Foreign judgments require recognition through Nepali courts. Cross-border enforcement requires coordination with foreign authorities.

Common Reasons for Trademark Rejection

Descriptive marks lacking distinctiveness face rejection under Section 23. Generic terms that describe goods or services are refused. Marks identical to existing registrations are rejected. Confusingly similar marks in the same class are refused. Deceptive marks misleading consumers are prohibited under Section 24. Government emblems and official symbols cannot be registered. Marks contrary to public morality are rejected. Geographical indications without authorization are refused. Surnames without distinctiveness face objections. Marks containing prohibited words or symbols are rejected. Improper classification leads to rejection. Incomplete applications are returned without examination.

Trademark Search and Clearance

Comprehensive trademark searches minimize registration risks. The DOI maintains an online searchable database. Searches cover registered and pending applications. Identical mark searches are straightforward. Similar mark searches require professional judgment. Phonetic, visual, and conceptual similarities are assessed. Class-specific searches focus on relevant categories. Cross-class searches identify potential conflicts. Common law rights searches identify unregistered marks. Domain name searches reveal online conflicts. Professional search firms provide detailed reports. Clearance opinions assess registration likelihood. Searches should be conducted before brand adoption.

Trademark Portfolio Management

Businesses should develop comprehensive trademark strategies. Register core brands across relevant classes. File defensive registrations in related classes. Monitor competitor filings and market activities. Maintain accurate records of trademark use. Document first use dates and evidence. Implement quality control for licensed marks. Conduct periodic portfolio audits. Renew registrations timely to avoid lapses. Update registrations for business changes. Enforce rights against infringers promptly. Budget for registration and maintenance costs. Train staff on proper trademark use. Develop brand guidelines for consistent use.

Trademark Enforcement Strategies

Active monitoring detects potential infringements early. Online monitoring covers e-commerce platforms and social media. Market surveillance identifies counterfeit products. Cease and desist letters provide cost-effective initial enforcement. Negotiated settlements avoid lengthy litigation. Civil suits provide injunctions and damages. Criminal complaints involve police and prosecution. Customs recordation prevents counterfeit imports. Border enforcement requires coordination with customs authorities. Evidence collection is essential for successful enforcement. Documentation of damages supports compensation claims. Swift action prevents market confusion. Consistent enforcement maintains trademark strength.

Role of Intellectual Property Tribunal

The Intellectual Property Tribunal hears appeals under Section 71. Appeals against DOI decisions are filed within 35 days. The tribunal reviews opposition and cancellation decisions. Registration refusals can be appealed. The tribunal conducts hearings and examines evidence. Legal representation is permitted before the tribunal. Decisions are binding on parties. Further appeals go to appellate courts. The tribunal provides specialized IP expertise. Procedures are governed by the Tribunal Rules. Filing fees apply for appeals. The tribunal aims to resolve disputes efficiently.

Trademark Recordation with Customs

Customs recordation prevents importation of counterfeit goods. The Department of Customs maintains an IP register. Trademark proprietors can record registrations with customs. Recordation enables border enforcement measures. Customs officials can detain suspected counterfeit goods. Proprietors receive notice of detained goods. Inspection and verification procedures follow detention. Confirmed counterfeits are destroyed or disposed. Criminal proceedings can be initiated against importers. Recordation requires submission of trademark details. Regular updates maintain effective protection. Coordination between DOI and customs is essential.

Trademark Valuation and Commercialization

Trademarks represent significant business assets. Valuation methods include cost, market, and income approaches. Brand strength affects valuation. Registration enhances trademark value. Licensing generates revenue from trademark rights. Franchising leverages trademark reputation. Merchandising extends brand reach. Trademark assignments involve valuation considerations. Financial reporting may require trademark valuation. Collateral use for financing requires valuation. Professional valuers assess trademark worth. Documentation of brand investments supports valuation. Market position and consumer recognition influence value.

Frequently Asked Questions

What is the validity period of trademark registration in Nepal?

Trademark registration in Nepal remains valid for ten years from the registration date. The registration can be renewed indefinitely for successive ten-year periods by filing renewal applications before expiry. A six-month grace period exists for late renewals with additional penalty fees.

Can foreign companies register trademarks in Nepal without a local presence?

Foreign companies can register trademarks in Nepal without establishing a local presence. However, they must appoint a local agent or representative authorized through a power of attorney. A valid address for service in Nepal must be provided for correspondence purposes.

How long does the trademark registration process take in Nepal?

The complete trademark registration process typically takes 8-12 months from application filing to certificate issuance. The timeline includes examination (3-6 months), publication (90 days opposition period), and registration. Delays occur due to objections, oppositions, or incomplete documentation requiring additional time.

What are the consequences of not renewing a trademark?

Failure to renew a trademark results in its removal from the register after the grace period expires. The proprietor loses exclusive rights and legal protection. Removed marks can be restored within one year of removal by filing restoration applications with justification and payment of prescribed fees.

Can a trademark be registered in multiple classes simultaneously?

Multi-class trademark applications are permitted in Nepal under the current system. Applicants can file a single application covering multiple classes of goods or services. Separate fees apply for each class. This consolidated approach simplifies filing and reduces administrative burden for applicants.

What is the difference between TM and ® symbols?

The TM symbol indicates a trademark claim without registration, while ® denotes a registered trademark. Using ® for unregistered marks is prohibited and may constitute an offense. The ® symbol can only be used after receiving the registration certificate from the Department of Industry.

How is trademark infringement proven in Nepal?

Trademark infringement is proven by demonstrating unauthorized use of an identical or similar mark for identical or similar goods/services. Evidence includes actual products, advertisements, invoices, and witness statements. Likelihood of confusion among consumers suffices; actual confusion or intent to deceive is not required under Section 29.

Can a trademark application be expedited in Nepal?

Nepal does not officially provide expedited or fast-track trademark examination procedures. All applications follow the standard examination timeline. However, complete and accurate applications with proper documentation process more smoothly. Responding promptly to examination reports prevents unnecessary delays in the registration process.

What happens if someone opposes my trademark application?

If opposition is filed, you receive notice and must file a counter-statement within 30 days. The Department of Industry conducts hearings where both parties present evidence and arguments. The DOI issues a decision either accepting or rejecting the opposition. Appeals against unfavorable decisions can be filed with the Intellectual Property Tribunal.

Are trademark searches mandatory before filing applications?

Trademark searches are not legally mandatory but are highly recommended. Searches identify existing identical or similar marks that could lead to application rejection. Conducting comprehensive searches before filing saves time, costs, and prevents potential conflicts. Professional search services provide detailed reports assessing registration likelihood and potential obstacles.

Why Choose Axion Partners for Trademark Registration

Axion Partners stands as the premier service provider for trademark registration in Nepal. Our team comprises experienced intellectual property attorneys with comprehensive knowledge of the Patent, Design and Trademark Act, 2022. We provide end-to-end trademark services including comprehensive searches, application preparation, prosecution, and enforcement. Our success rate exceeds industry standards due to meticulous attention to legal requirements. We maintain direct relationships with the Department of Industry, ensuring efficient processing. Our multilingual team handles both Nepali and international clients seamlessly. We offer strategic advice on trademark portfolio management and brand protection. Our services include opposition and cancellation proceedings representation. We provide customs recordation assistance for border enforcement. Our competitive fee structure offers transparent pricing without hidden costs. We deliver personalized service with dedicated account managers. Our track record includes successful registration of hundreds of trademarks across all classes. We stay updated on legal developments and procedural changes. Our comprehensive approach covers trademark searches, clearance opinions, application filing, examination response, publication monitoring, and post-registration maintenance. We assist with licensing agreements, assignments, and enforcement actions. Our network includes international IP firms for global protection strategies. We provide regular updates throughout the registration process. Our commitment to client satisfaction and legal excellence makes us the preferred choice for trademark registration services in Nepal.

Conclusion

Trademark registration in Nepal provides essential legal protection for brands and business identities. The Patent, Design and Trademark Act, 2022 establishes a comprehensive framework aligned with international standards. Both local and foreign entities can secure trademark rights through proper registration procedures. The process involves application filing, examination, publication, and registration spanning 8-12 months. Registration grants exclusive rights for ten years, renewable indefinitely. Proper classification under the Nice system ensures appropriate protection scope. Comprehensive searches minimize rejection risks and conflicts. Complete documentation and accurate information expedite processing. Enforcement mechanisms include civil remedies and criminal penalties for infringement. Professional assistance significantly enhances registration success and ongoing trademark management. Businesses should prioritize trademark registration as a fundamental component of intellectual property strategy and brand protection in the Nepali market.