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Procedure of Registration of Local Trademark in Nepal

1. Relevant Laws and Authority

 
1.1 In Nepal protection and enforcement of trademark is governed by Patent, Design and Trademark Act, 1965 (2022) (“PDTA”).  Department of Industries (“DOI”) within Ministry of Industries, Government of Nepal is the competent authority which registers and administers foreign trademarks in Nepal.

1.2 Nepal is signatory to various international treaties for protection of trademark which are as follows :

S.N  International Conventions  Date of Signature/Ratification
1 Paris Convention for Protection of Industrial Property, 1883 (the “Paris Convention”) June 22, 2001
2 Agreement on Trade Related Aspects of Intellectual Property Rights, 1995 (“TRIPS”) April 23, 2004
3 Convention Establishing World Intellectual Property Organization  1979 (“WIPO Convention” February 4, 1997

1.3 The DOI has dual functions: administrative as well as judicial functions with respect to protection of the trademark and enforcement of rights over the trademark in case of infringement as follows:

2. Protection of Trademark in Nepal
 
2.1 Protection based on registration
 
As a matter of general rule, protection of local trademark is primarily based on the registration. Section 16 of PDTA, provides that a person may acquire, title to the trademark, upon registration of trademark with the DOI.
 
2.2 Protection of Well-Known Marks
 
(a) There is no specific provision under the PDTA relating to protection of well-known trademark on the basis of use. However, pursuant to Section 18(1) and (3) of the PDTA, the DOI is required to refuse the application for registration of trademark or cancellation of the already registered trademark if such trademark is likely to-(a) damage the reputation of an individual or institution, or (ii) damage the reputation of other's trademark. This provision is wide enough to cover protection of well-known trademark and passing off action. In relation to the past cases, the DOI has narrowly interpreted the relevant sections and barring few court judgments, the courts of Nepal have generally approved the decision of the DOI.
 

b) Article 6bis of the Paris Convention on the Protection of Well-Known Trademark has also not been incorporated in the PDTA by way of amendment. While the Treaty Act 1990 provides that treaty entered by Nepal will override the provisions of the domestic laws in case of consistency, well-known marks have rarely been successful in receiving protection in Nepal. The Supreme Court has not yet issued specific judgment on this issue. 


3. Registration Procedure of the Local Trademark

3.1 Registration Authority

Department of Industries (web-link: http://www.doind.gov.np/)

3.2 Document required for registration

Following Document are required to be submitted for registration of Foreign Trademark:
 
S.N  Documents No. of Copies Notary Requirement Format Prescribed Attached Document
1 Application of Registration of  Trademark 1 Set Original No Yes Sample “PDF”
2 Certificate of Registration of the Proprietor of the Trademark  1 Copy No N/A N/A
3 Tax Registration Certificate of the Proprietor 1 Copy Yes N/A N/A
4 Label of Trademark 4 Copies No Yes (8x8 c.m in size) N/A
5 Power of Attorney 1 Original Yes No Sample "PDF"

 

3.3       Procedure of Registration of Local Trademark

Note: 

i) Generally, it takes about 6 to 9 months to complete the process of trademark registration and issuance of trademark registration certificate where no petition for pre-opposition is filed.

ii) Petition for the pre-opposition against trademark applied for registration is required to be given within 90 days of  publication of trademark in the IP Bulletin 

iii) If pre-opposition is filed against the application for registration in the DOI, then it may take about 2-4 years to have a final verdict from the higher courts (Appellate Court/Supreme Court). Generally DOI takes up to  one year to decide on the pre-opposition petition.

iv) 
If any party  is not satisfied with the verdict of the DOI then such party to the dispute can appeal against the verdict of the DOI before the competent court (Appellate Court) and finally to the Supreme Court (on certain limited grounds only), if not satisfied with decision of Appellate Court of Nepal.

3.4 Grounds of refusal of application of trademark registration:

Under section 18(1) of PDTA, the DOI has power to reject the application of trademark registration on the following grounds:

a.     If such trademark damages the  reputation  of any person or institution, or

b.     If such trademark contradicts with public conduct/morale or national interest, or

c.     In case such trademark damages goodwill of trademark of any person, or

d.     In case such trade-mark is found to have already been registered in the name of another person.

3.5 Classification of Goods and Service for trademark registration          

(a) As per section 18A of PDTA, for the purpose of registration of trademark, the Government of Nepal may classify goods or service, by publishing notification in Nepal Gazette. However, a separate classification has not been published  by the Government of Nepal.

(b) In practice application for registration of trademark is submitted on the basis of classification made by Nice Agreement 1957, which has categorized 35 classes of goods and 11 classes of services.

(c) Pursuant to Section 18A (2) of the PDTA, separate application will need to be submitted and separate government fees will need to be paid for registration of trademark in each class.

 

3.6 Validity of the Trademark Registration

(a) As per section 18D. of PDTA, trademark registration shall remain initially valid for the period of 7 (seven) years from the date of registration but can be renewed for any number of times for the period of 7 years at a time.

(b) Section 23(B) of PDTA provides trademark should be renewed within the period of 35 days from the date of expiry of the validity of the trademark. The PDTA also provides right to the trademark holder to renew the trademark by making payment of penalty of NPR 1,000 within 6 months from the expiry of the said 35 days period. In practice, application for renewal of trademark are typically submitted 6 months prior to the expiry of validity period. 

4. Government Fees

S.N  Details of Fee Amount of Fee (in Nepalese Rupees)
1 Application for registration fee NPR. 1,000
2 Registration Fee NPR. 5,000

 

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