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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.
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