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Which courts are empowered to hear trademark disputes?
The Department of Industry’s Trademark, Patent and Design Department is empowered to hear trademark disputes.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Civil, criminal and administrative actions can be taken to prevent trademark infringement. Under the Civil Rights Act 1955, an injunction can be filed with the High Court. Administrative action can also be initiated by filing a complaint of infringement with the Department of Industry.
Who can file a trademark infringement action?
The owner of a registered trademark can file a trademark infringement action.
What is the statute of limitations for filing infringement actions?
An infringement action can be filed only if the mark is registered and there is no limitation period.
What is the usual timeframe for infringement actions?
As infringement is a continuing act, there is no specified timeframe in which to initiate an infringement action.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
An injunction can be filed under the Civil Rights Act 1955 and other relevant High Court regulations. A raid of the premises where the trademark infringement is alleged to have taken place is the most effective action against infringement.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
If the owner of a mark satisfies the authorities that its mark has been infringed, it is entitled to an injunction. Punitive damages are allowed, but this is subject to the submission of evidence regarding actual damages suffered by the trademark owner.
What customs enforcement measures are available to halt the import or export of infringing goods?
In Nepal, all trading activities are regulated by the Ministry of Finance under the Customs Act 2007. Section 68(1) of the act states that if a party exports or imports goods in violation of IP rights acquired by any party pursuant to the prevailing laws – such as a patent, design, trademark or copyright – the concerned party may submit an application, accompanied by evidence, to the relevant customs officer for the withholding of such export or import.
If an application is made pursuant to Section 68(1), the concerned customs officer will withhold such goods in the customs office and make a request to the relevant body or authority for necessary action in that respect (Section 68(2)).
Such body or authority will, on being requested pursuant to Section 68(2):
- take action in that respect;
- settle the matter in accordance with the prevailing laws; and
give information thereof to the customs office (Section 68(3)).
If, on taking action in accordance with the prevailing laws, the body or authority referred to in Section 68(3) holds that such goods are liable to be forfeited, the customs officer will hand over the goods to such body or authority.
What defences are available to infringers?
In case of trademark infringement, the defendant may plead the following defences (where applicable):
- the doctrine of laches;
- the doctrine of estoppel;
- dissimilarity between the marks (in cases where the plaintiff alleges their similarity);
- that the nature of its goods are entirely different from that of the plaintiff;
- that its customer base is entirely different from that of the plaintiff; or
- that its mark is capable of distinguishing its goods and services from those of the plaintiff.
What is the appeal procedure for infringement decisions?
Under Section 27 of the Patent, Design and Trademark Act (2022/1965), an appeal can be filed within 35 days from the issuance of the infringement decision.
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