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Rights and protection

Ownership                           

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Under Section 16 of the Patent, Design and Trademark Act (2022/1965), a party acquires trademark ownership on registering the mark with the Department of Industry. 

Unregistered trademarks

What legal protections are available to unregistered trademarks?

No specific provision providing legal protection to unregistered marks exists. 

How are rights in unregistered marks established?

No specific provision establishing rights in unregistered marks exists. Under Section 16 of the Patent, Design and Trademark Act, a party acquires title to a mark only after its registration with the Department of Industry. 

Are any special rights and protections afforded to owners of well-known and famous marks?

No, the Patent, Design and Trademark Act provides no special protection to the owners of well-known and famous marks. 

To what extent are foreign trademark registrations recognised in your jurisdiction?

Nepal is a party to the Paris Convention for the Protection of Industrial Property and must grant the nationals of other contracting states the same rights that it grants Nepalese citizens. Therefore, an applicant that has submitted a trademark application in a contracting state may claim priority on the basis of that application when filing an application for the same mark in Nepal within six months from the date of the priority application.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

Under Section 16(2) of the Patent, Design and Trademark Act, no party can copy, use or bring about the use of a trademark registered in the name of any other party, unless ownership has been transferred or the party has obtained the owner’s written permission. The owner of a registered trademark can initiate an infringement suit against an infringer of the mark before the courts, seeking an injunction and confiscation of the infringing material. The owner may also seek administrative action before the Department of Industry. 

Who may register trademarks?

Any person or body corporate claiming to be the owner of a trademark may file an application for its registration with the Industrial Property Office (administered by the Department of Industry). 

What marks are registrable (including any non-traditional marks)?

Any word, symbol, picture or combination thereof is registrable as a trademark.

Can a mark acquire distinctiveness through use?

The Patent, Design and Trademark Act contains no specific provision which states that a mark can acquire distinctiveness through use.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

Unlike that of other jurisdictions, Nepalese law does not categorically define the grounds for refusal (ie, absolute and relative grounds). Rather, the grounds for refusal are mentioned in the proviso to Section 16 of the Patent, Design and Trademark Act, which states that a trademark may be refused registration if:

  • it is likely to:
    • damage the reputation of any individual or institution;
    • adversely affect public conduct or morality; or
    • undermine the national interest or the reputation of another trademark; or
  • it has already been registered in another party’s name.

However, in the above cases, the applicant will be given the opportunity to be heard.

Section 21 of the act provides relief to foreign applicants, stating that the Department of Industry may register a patent, design or trademark registered in a foreign country without conducting any enquiries if its registration application is filed along with the certificate of its registration in the foreign country. The department must provide this option to rights holders in accordance with the Paris Convention for the Protection of Industrial Property.

Are collective and certification marks registrable? If so, under what conditions?

The Patent, Design and Trademark Act is silent as to the registration of collective and certification marks. 

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