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What is the primary legislation governing trademarks in your jurisdiction?
The primary legislation governing trademarks in Nepal is the Patent, Design and Trademark Act (2022/1965).
Which international trademark agreements has your jurisdiction signed?
Nepal is a signatory to the Paris Convention for the Protection of Industrial Property and the Convention establishing the World Intellectual Property Organisation.
Which government bodies regulate trademark law?
The Department of Industry regulates all activities relating to industrial property, including trademarks. The Industrial Property Office is administered by the Department of Industry.
Rights and protection
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.
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.
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.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Yes, agents filing for the registration of a mark on behalf of the owner require power of attorney. Notarisation or legalisation is not required. A power of attorney on plain A4-sized paper is sufficient.
What information and documentation must be submitted in a trademark registration application?
The following information must be included in a trademark registration application:
- the name or a representation of the mark, logo or device;
- the name and address of the applicant;
- the class and specification of the goods or services;
- the usage date of the mark (ie, whether the mark is in use or proposed to be used in Nepal);
- a general or specific power of attorney;
- where a priority claim is being made, a certified copy of the priority document together with a certified English translation if the priority document is not in English. The priority document must be filed within three months from filing the application; and
- details of any corresponding country registration details, along with certified copies of the registrations.
What rules govern the representation of the mark in the application?
Unlike other jurisdictions, Nepal has no specific trademark rules. However, various schedules have been included in the Patent, Design and Trademark Act (2022/1965).
Are multi-class applications allowed?
No, multi-class trademark applications are prohibited in Nepal.
Is electronic filing available?
No, at present, electronic filing is unavailable in Nepal.
What are the application fees?
The official fee for filing a trademark application is NRs1,000.
How are priority rights claimed?
Priority rights are claimed by:
- specifying in the Nepalese trademark application the date and application number allotted to the registration obtained in a country that is party to the Paris Convention for the Protection of Industrial Property;
- furnishing a certified copy of the priority application; and
- paying the applicable fees.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Yes, trademark searches are available in Nepal. While there is no legal mandate to conduct a trademark search, it is advisable to do so before filing a trademark application, as it is helpful to evaluate the chances of successfully registering a mark in Nepal and develop a course of action to address any potential conflicts.
What factors does the authority consider in its examination of the application?
In its examination of a trademark application, the Industrial Property Office (administered by the Department of Industry) considers:
- the applied-for mark’s distinctiveness; and
- its similarity with existing trademarks.
Does the authority check for relative grounds for refusal (eg, through searches)?
The Industrial Property Office usually considers whether the applied-for mark:
- 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
- has already been registered in another party’s name.
Registration applications submitted by foreign applicants are exempt from examination if the foreign applicant submits copies of its foreign trademark registrations when filing its application in Nepal.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Yes, if the Industrial Property Office raises objections to the trademark application, the applicant will be given the opportunity to be heard. However, if the foreign applicant submits copies of its foreign registration certificate, its application is exempt from examination.
Can rejected applications be appealed? If so, what procedures apply?
Yes, an appeal can be filed with the appellate court within 35 days of the decision’s issuance.
When does a trademark registration formally come into effect?
A trademark registration formally comes into effect on the day on which the registration certificate is issued. Unlike in most other jurisdictions, marks are not registered retrospectively from the day on which the application is filed.
What is the term of protection and how can a registration be renewed?
The term of protection is seven years, which can be renewed every seven years.
What registration fees apply?
The fees payable for the registration of a trademark (after it has been accepted by the registrar and is unopposed or has overcome any third-party opposition) and the issuance of a registration certificate is NRs5,000.
What is the usual timeframe from filing to registration?
Registration of a mark in Nepal generally takes 10 to 12 months in straightforward cases (ie, where there is no objection or third-party opposition). This timeframe is indicative and subject to change, depending on the Industrial Property Office’s workload.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes, a third party can formally oppose an application based on the applied-for mark’s:
- similarity with an earlier mark; or
- lack of distinctiveness, which renders it likely to cause confusion and deception among the general public and in trade circles.
What is the usual timeframe for opposition proceedings?
The Industrial Property Office publishes all trademarks in the Trademarks Journal and the public is given 90 days to file a notice of opposition against conflicting marks. Once an opposition has been filed against a trademark, the Industrial Property Office serves a copy of the notice of opposition to the applicant, which must file a counterstatement within 21 days of receipt of the notice. If the applicant fails to file a counterstatement, the application will be treated as having been abandoned.
Are opposition decisions subject to appeal? If so, what procedures apply?
Yes, under Section 27 of the Patent, Design and Trademark Act (2022/1965), an appeal can be filed against an order of the Industrial Property Office registrar before the High Court in opposition or revocation proceedings within 35 days from obtaining a certified copy of the decision.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
Yes, a mark can be cancelled for non-use if it is not used consecutively for one year from the date of registration.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
A trademark registration can be revoked on the grounds that:
- the owner registered the impugned mark with no bona fide intention to use it; or
- the owner made no bona fide use of the mark in relation to the goods or services for which it was registered for a continuous period of one year or more, up to one month before the date of the revocation application.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any party can file a request for revocation before the registrar at the Industrial Property Office (administered by the Department of Industry). Nepalese law provides no time limit for filing such an application. Notably, if the proprietor of an earlier right acquiesces in the use of a later trademark for five successive years, it is no longer entitled to file an application for invalidity on relative grounds (ie, limitation in consequence of acquiescence).
What are the evidentiary and procedural requirements for revocation proceedings?
To initiate revocation proceedings, any party may approach the Industrial Property Office registrar seeking cancellation of a registered trademark on the following grounds:
- the petitioner’s mark is well-known and enjoys commercial reputation and goodwill across various Nepalese jurisdictions;
- the registered proprietor has failed to use the mark for one consecutive year following its registration;
- the registered proprietor was aware of the impugned mark’s goodwill and reputation and filed its application to register the mark with a bona fide intent to profit from this reputation and goodwill; or
- the mark is devoid of distinctive character, as it is similar or identical to the petitioner’s mark.
In addition, various documents (eg, copies of worldwide registrations) can be adduced as evidence to substantiate other claims.
What is the appeal procedure for cancellations or revocations?
An appeal against a registrar decision can be filed before the appellate court within 35 days of its issuance.
What is the procedure for surrendering a trademark registration?
A trademark registration can be surrendered by filing a request with the Industrial Property Office.
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.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
The Patent, Design and Trademark Act (2022/1965) deals with the rules and procedures governing the assignment of trademarks in Nepal. An assignment must be recorded to have legal effect.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
The Patent, Design and Trademark Act provides for the licensing of trademarks. The license agreement must be recorded in writing to have legal effect.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
The Patent, Design and Trademark Act (2022/1965) makes no express mention of the provisions that should be included in a licensing agreement.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
No specific provision regarding the registration of a security interest over a trademark exists.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Yes, trademark logos can be protected under the Copyright Law (2059/2002).
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
No specific provision governing the protection of trademarks online exists.