1.1 On June 08, 2018 Mr. Richard Jones, a Missouri man was exonerated after serving 17 years in prison for a crime he had never committed. That happened due to his resemblance with that of the real culprit. There are a large number of cases where persons have been wrongfully convicted and sentenced for offence they had never committed. Mistaken identity or sentencing of innocent people is one of the recurring problems of criminal justice systems around the world. This happens due to the mistaken identity which also includes resemblance of appearances. The one who is wrongfully convicted might have lamented for the rest of his/her life for having an identity that resembles another.
1.2 Why do we need a name? Why do we need a different name? Why people do not want the same name as another? A serious inquiry may be required before we talk about corporate identity or product identity. A simple answer to this inquiry could be that we want to be different. However, there is always a purpose to being different. The purpose could be multifold that we want our own separate personality or a separate identity. We want all our popularity and notoriety booked in our own name. The one with all, the single but complete and the sole but whole in terms of identity for a human body or a personality.
1.3 Therefore, if someone calls you by your name you will surely react. You may respond or you may act upon what is called for. Your identifier is deeply settled in your subconscious mind which acts before you know that you are reacting. However, again the call may not be for you. It may be for another person. If the person tells you that the call is not for you an embarrassing situation could arise? A more serious situation may arise, as Mr. Richard Jones had gone through, when you are caught or arrested or convicted or sentenced for any offence which you didn’t commit. You may also fall in an awkward situation where you get the credit of the good deeds of others, or you may receive the compliments of the work of others or the best wishes for the post to be assumed by someone else. These may all happen due to the mistaken identity or due to, for example, having identical name or resemblance in appearance. Therefore, identity matters, matters a great deal.
2.1 Trademark (TM) carries an identity of a particular good or service in the corporate world. Traditionally, the purpose of trademark was understood as a source identification. A single trademark may speak a lot about the goods or services. It basically helps the consumer to identify the goods or saves their time while making a final choice. Therefore, the action of preventing the use of a mark associated with one trader by another is in order to avoid misrepresentation in trade. The protection afforded by the courts were communication to prevent misleading.
2.2 The historical concept of trademark was to identify the goods such that it minimizes misleading situations for the consumers. The concept of proprietary right on the trademark was developed in the later stage, particularly in the mid -19th century by the English courts, which was thereafter accordingly incorporated in the law.
2.3 The role of trademark is also important from a semiotic and economic point of view. As Barton Beebe says, “the semiotic and economic accounts of trademark law are concerned with the informational efficiency and integrity of the trademark system, and both assume that the sign must be intact for this efficiency and integrity to obtain.“
2.4 There may be other functions of a trademark, however, the essential one is the one of protecting against misrepresentation in relation to goods and services. Further, the functions of trademark have been characterized in Kerly’s Law of Trademark and Trade names analyzing case laws. The functions include (i) the Origin Function, (b) the Quality Function, and (c) the Communication, Investment and Advertising Function.
2.5 These functions are also indicated in case of L’Oreal v Bellure where the Court of Justice of the European Union (CJEU) gave a non-exhaustive list of the functions of a trademark. The CJEU has observed “These functions include not only the essential function of the trademark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the foods or services in question and those of communication, investment or advertising.” Out of these functions the original function is regarded the core. The functions carry both the concepts – trademark as property, and trademark as origin/identification.
2.6 As an identity of a person is important for individual life, the trademark is important in the corporate world. There may not only be the financial or reputational implication of such identity. The act of misleading of identity threatens the very existence of the corporate entity.
3.1 The Patent Design and Trademark Act, 1965 (2022) (“PDTA”) covers both concepts of trademark as (a) communication/identification/origin and (b) the property. Section 16, 19, 18b and 25 of the PDTA covers the property concept, and Section 2 (c), proviso to Section 18 (1) and Section 18 (3) incorporate communication/identification concepts.
3.2 Section 16 (1) ensures that the trademark registered under PDTA obtains the rights protected under this Act. These rights include (a) right to license, or assign, (b) right to use as registered trademark, (c) right to oppose, and (d) right to compensation. These rights are broadly used as rights against infringement.
3.3 The identification element is intrinsic under Section 2 (c) of PDTA. The Section 2 (a) defines the term “trademark” as the “word,” “sign,” or “picture,” or “their combination ” used by a firm, company or person to distinguish their/its goods or service from others. The definition of trademark may vary country to country, however, the core element i.e., capability of distinguishing the goods or service of one undertaking from those of another undertaking is included in most of the definitions. The capability to distinguish goods of one undertaking from the goods of another indicates the core identification function of a trademark.
3.4 Proviso to Section 18 (1) of PDTA deals with the criteria for trademark registration. In accordance with the proviso, if the proposed trademark (a) injures the reputation of any person or organization, or (b) has negative impact on moral and decency of general public or national interest, or (c) likely to cause damage to the goodwill of any other trademark, or (d) has already been registered, then it is not eligible for registration. Amongst these, (a) (b) and (c) above expressly cover the identification/communication/origin function. The remedies under the breach of these functions are broadly called “passing of” remedy in common law countries.
4.1 Department of Industry (“DOI”) has a dual role in trademark related matters in Nepal. It has administrative functions such as Trademark Registrar. It is also entrusted to hear trademark disputes as the court of first instance. The courts intervention is provided in later stage i.e., at appeal level.
4.2 Judicial response to trademark disputes in Nepal is not exciting. Difference in opinions is generally prevalent. Further, the pendency of the disputes before DOI is huge and serious.
4.3 There have been some decisions of the Supreme Court and the concerned High Court (previously Court of Appeal) which are in line with international standards. These cases are related to the issues of distinctiveness, well-known trademarks, cross-class protection, use of wrappers etc. In some other cases, the courts have taken a more restrictive approach. Some important cases decided by the courts are summarized in the following paragraphs.
4.4 Cases Decided by the Supreme Court
(a) Distinctiveness can be acquired by use: The Supreme Court in Kishan Dhanawat, Proprietor of Mayur Biscuit and Food Industries v. Kwality Biscuit Industries Pvt. Ltd et. al. (“Tasty Tasty Case”) has observed that the descriptive words can acquire distinctiveness by use and it may be eligible for registration as a trademark. The Supreme Court dismissed the writ petition which was filed for continuing the use of Tasty Tasty TM identical to that of registered trademark contending, amongst other things, that it is descriptive, and no one can have exclusive right on it.
(b) No first come first serve basis: The Supreme Court in Sun Fitting Pvt. Ltd v. Sandeep Industries has held that trademark registration is not always subject to first come first serve basis if there are any grounds for refusal of the registration. The Supreme Court also analyzed the function of the trademark. The Court has stated that the trademark has various functions including identification, source, and quality function.
(c) Protection cannot be claimed on the basis of use: In Tejram Dharampal v. Ganapati Tobacco Pvt. Ltd et. al the Supreme Court has held that the PDTA and Article 6 D of the Paris Convention do not intend to give recognition to any trademark as registered trademark only on the basis of use or advertisement. The Supreme Court also went on to say that foreign trademark needs to be applied for registration along with the home registration certificate. Mere application filed for registration (in home country) is not sufficient to claim the protection. The notion of ‘use’ based protection has been strongly opposed in Madan Prasad Lamsal v. Repsona Publications Pvt. Ltd. In this case the Supreme Court has held that the laws of Nepal protect only the registered trademark. The Court further stated that the creator or the user of the trademark, which has not been registered before the Department of Industry, does not have any exclusive right over such trademark irrespective of the longevity of the period of use of such trademark. The Court also stated that the entity in whose name the trademark is registered should be regarded as the owner in the case of dispute relating to title. The user does not have any rights to make any claim over such trademark if it is not registered in his/her name.
(d) Registration is not conclusive evidence: In another case, Sumi Distillery Pvt. Ltd v. Guinness United Distillers Vintners Amsterdam BV (Diageo Brands SBV) the Supreme Court has reaffirmed that the registration of the trademark is subject to revocation if it injures the reputation of any other trademark of any person  . The implication of this decision is that registration of trademark is not conclusive evidence of proprietary right over the trademark. The Court has also analyzed the role of states in protecting intellectual properties and fulfilling treaty obligations. The Supreme Court has stated that the country should respect the provision of treaty to which the government is party and it cannot derogate from treaty obligations.
(e) Protection of Wrappers or Bottles: The Supreme Court in Dr. Daman Bahadur Amatya v. Department of Industry et. al has specifically said that the wrappers and bottles of the goods on which the trademark is printed/engraved is protected. The court has distinguished the process of transfer of title on physical goods and transfer of rights over intellectual property. The Court stated that the title on the physical goods can be transferred by way of delivery which is, however, not the case for intellectual property. The title over intellectual property can be transferred upon completing the process provided under the law. The Court further stated that the buyer of the goods has the right over the goods and can dispose of the goods as per their discretion. However, they cannot use the intellectual property used in the goods. The buyers cannot use the wrapper or bottle of the goods purchased by them for the competitive goods or in a manner to compromise the right of its proprietor or mislead the general public. The Court also held that if the wrapper or bottle where the trademark registered in the name of one person is printed there will be no doubt that the consumers will be misled if the same wrapper or bottle is used by another person. If there arises any doubt in relation to the infringement of trademark then the benefit goes to the proprietor of the trademark.
(f) Goods or services are essential for securing right over trademark: Interestingly in another case, the full bench of the Supreme Court has held that any trademark owned by an industry is also sold along with the sale of the industry. In Wizard Fragrances v. Bikash Kedia et. al  the full bench of the Supreme Court handed the decision to this effect. Further, the Supreme Court also observed that goods, transaction, business, trade or service is essential for securing the right over the trademark. The fact of the case was that various trademark applications were filed by the complainant as a proprietor of the proprietorship firm before the Department of Industry. Prior to the trademark being published in the IP Bulletin for pre-opposition, the proprietorship firm was sold (assets) to the Defendant. Accordingly, the trademark was registered in the name of the firm sold to the Defendant including the name of the Defendant as proprietor of the firm. Thereafter, the seller filed a complaint claiming the right over trademark contending that only the physical assets of the proprietorship firm were sold and not the intangibles such as trademarks. The DOI rejected the claim which was also upheld by the then Court of Appeal. However, the division bench of the Supreme Court, hearing the case by way of revision petition, reversed the decision and gave the decision in favor of the Complainant. The Defendant again challenged the decision of the Supreme Court by way of review petition and the full bench of the Supreme Court finally upheld the decision of the DOI and then Court of Appeal, and reversed its own decision given by the division bench.
(g) Distinctiveness requirement: The Supreme Court in a landmark case, Noor Pratap Rana v. Department of Industry et.al (“Goldstar Case”) has held that trademark should be distinctive to be eligible for registration. The Supreme Court has also stated that if an industry uses the trademark similar to that of the registered trademark it can mislead the general public. The full bench of Supreme Court has dealt with the distinctive requirement for the trademark in this case. The Court has, citing its previous decision and various foreign cases, also said that the impugned trademark “Good Star“, “Gold Super” “Eleven Star” applied for registration by the Defendant infringe the trademark “Gold Star” “Super Star“, “Seven Star” registered in the name of the Writ Petitioner. The Supreme Court also stated that the decision of then Court of Appeal can be challenged invoking extra ordinary jurisdiction if the affected party is not made Defendant to the case.
4.5 Cases decided by the High Court
(a) Recognition of Well-Known Mark: Then Court of Appeal Patan (now High Court) has given recognition to the concept of well-known trademark in Nepal in a number of cases and provided the protection of such marks. The Court has invoked the provision of Article 6bis of the Paris Convention while giving the decision to this effect. In Prem Mehendi Center v. Habib Kala Kokila Hennas (also known as NISHA TM Case) the then Court of Appeal stated that trademarks should not be registered on a first come first serve basis and no one can free ride on the reputation of the trademark owned by others. The Court has also held that the proprietor of the mark using the mark perpetually is ipso facto eligible for protection of his/her right over such trademark. The Court for the first time in Nepal has extensively analyzed the issue related to well-known marks and held that such marks should be protected. The High Court has also held in subsequent cases that well known marks should be protected such as in Amrit Distillery v. Facebook Inc. (FACEBOOK TM case), Google LLC v. Google Enterprises Industries (Google TM Case), Perfect Blends (Nepal) Pvt. Ltd v. VISA INTERNATIONL SERVICES ASSOCIATION (VISA TM Case). In the referred cases, the Court has further stated that well-known trademarks should be protected even without being registered in Nepal.
(b) Cross Class Protection: The High Court has provided cross class protection in a number of cases. In VISA TM Case the foreign trademark was registered in Nepal for the goods and services which fall under class 16 and class 36. The local company filed an application to register the identical trademark to be used for different goods of a different class i.e., cigarette falling in class 34. The owner of the foreign trademark opposed the trademark application filed by the local company. The Department of Industry decided to reject the trademark registration in the name of the local company and dismissed the trademark application. The High Court Patan also upheld the decision of the Department of Industry referring to Article 6bis of the Paris Convention, Article 16 (2) of TRIPS and considering the reputation of the mark recognizing it as one of the well-known marks as per the criteria set out in the WIPO Joint Recommendation. Similarly, in Google TM Case, a local industry had applied to register a trademark (“888”) with the statement in the package “marketed by Google Enterprise Kathmandu Nepal” to be used in rice under class 30. The owner of the foreign trademark opposed the word “google” used in the package. The local company contested that the foreign trademark owner has no right to oppose the trademark application as the foreign owner has not registered the trademark in class 30. Further, the local industry also contended that it has not applied to register “google” as a trademark as its proposed trademark was “888”. The Department of Industry rejected the opposition. However, the High Court Patan overturned the decision of the Department of Industry. The High Court granted the protection to the foreign proprietor of the trademark even for the class to which the trademark was not registered considering the nature of the mark, its reputation, amongst other things. The High Court prevented the local industry from using the word “google.” Likewise in the FACEBOOK Tm Case the High Court has also held that the trademark is protected even for the class to which it has not been registered. The trademark application filed before the Department of Industry under class 33 for liquors by the local industry was rejected even when the foreign proprietor had not registered the trademark in class 33.
(c) Injunctive Relief: Then Court of Appeal Patan (now High Court) has provided injunctive relief in a few cases wherein the main dispute is pending before the Department of Industry. The parties often resorted to the Court of Appeal to prevent the defendants from using the impugned trademark until the matter is finally decided by Department of Industry. For example, in RSPL Ltd v. Sahara Soap and Detergent Industries Pvt. Ltd the Court of Appeal Patan has issued injunctive relief against the local company preventing it to use the impugned trademark (“Asarfi Shuva Ghadi”) until the matter is decided by Department of Industry.
(d) Distinctiveness: The High Court has made decisions on distinctiveness being consistent with that of the Tasty Tasty Case and Gold Star Case. In Janta Cable Industries Pvt. Ltd v. Bishal Plasto Cap Pvt. Ltd. (“Janta TM Case”) the then Court of Appeal Patan has stated that even generic word can acquire distinctiveness based on the use and reputation. The Court also analyzed the method of assessing the deceptive similarity of the trademark citing the view of Parker J, who suggests that it is important to consider all the surrounding circumstances i.e., looks, sound, nature of goods, level of customers etc., to arrive at the conclusion as to whether or not the impugned trademark is deceptively similar. The High Court reversed the decision of the Department of Industry and said that the trademark “NAVAJANTA” cannot be registered wherein the trademark namely “JANTA” has been already registered in other’s name.
(e) Parallel Import: The then Court of Appeal, Patan prevented parallel import by issuing an injunctive order against an importer based in Nepal. The decision was made around 20 years ago. In Hindustan Lever Limited et.al v. Central Department of Store et.al  the Court of Appeal, Patan prevented the import and sale of “Lux Soap” in Nepal by a local importer which was manufactured for sale in Indonesia. The Court also ordered the Defendant to deliver the goods in stock to the Petitioner on the price specified therein. The decision was appealed before the Supreme Court by one of the Defendants. The Supreme Court upheld the decision of the Court of Appeal, Patan and dismissed the appeal before it during the preliminary hearing.
4.6 Department of Industry:
It is not appropriate to determine the exact approach that the DOI has been applying in trademark related disputes. The inconsistency is seen in every aspect of trademark law – from passing off to the assessment of similarity, from the application of the international treaty to the decision of the courts. In the absence of some level of consistency, it may not be appropriate to refer to particular decisions of the Department of Industry.
5.1 As discussed above, the trademark regime in Nepal is not mature enough. The judicial response is conflicting and diverse in general. Different approaches have been adopted even on common issues. There are many cases decided based on registration irrespective of other factors such as reputation, nature of mark, nature of adoption etc. There are also a number of cases where the distinctiveness is assessed differently. There are some cases where the interpretation of the treaty obligations has been construed contrarily. In some cases, cross class protection has been refuted though it is recognized in other similar cases.
5.2 Aside from this, the quality of judgements or consistency issues, there has been serious issues with the Department of Industry in relation to it discharging its judicial function. Such issues include, delay in deciding the cases, lapses in procedural aspect, absence of applying judicial mind, failure to comply with basic judicial principles and processes. For example, some of the cases are as old as ten (10) years and still pending before the DOI. Some cases are heard multiple times and decisions are yet to be made. Many cases are sent back to the DOI by the courts due to procedural lapses, etc.
There are a number of factors affecting the quality of judgements and giving rise to other issues. Some of these factors may be as follows:
(a) Department of Industry is primarily an administrative/regulatory agency discharging an administrative/regulatory function. It is empowered to hear Industrial Property related disputes under PDTA which are rarely treated with priority.
(b) The officers of Department of Industry neither have any training in relation to the judicial function nor have exposures to judicial processes. Similarly, they are not provided sufficient training on IP matters. As a result of the lack of trainings, the officers do not have sufficient knowledge in relation to judicial process as well as on the matters related to Industrial Property.
(c) Frequent transfers of officers of Department of Industry is one of the reasons as to why its decisions are not consistent.
(d) Department of Industry does not have any safeguards that the courts have for fair trial and independence. The judicial function is assigned to the wrong agency.
(e) It is ironical that the courts generally see the Department of Industry as an expert agency on IP matters which is not correct.
(f) There has been a stereotypical notion generally prevalent in our judiciary that registration is the prerequisite for protection of trademark in Nepal (with few exceptions as discussed above). This notion outweighs other important concepts and principles related to trademark and IP matters.
(g) Every subject of law has some principles distinct from the other field. Mere common sense does not help in delivering justice without sound knowledge of the relevant filed. Lack of knowledge of the relevant basic principles always contributes in arriving at surprising results.
5.3 It seems that the judicial response to trademark related dispute is neither exciting nor completely disappointing. There seems some silver lining in the dark cloud or light in the other side of the tunnel. There are some land mark judgements which are as per international standards. However, again, whatever achieved is not sufficient. Therefore, overall reform is essential. Generally, the following key aspects needs to be taken into account to make sound, reliable and effective IP regimes in general and trademark laws in particular in Nepal:
(a) The prevailing PDTA is outdated. It needs to be amended to cater to the need of the present world. The provisions of the current IP Bill also need to be revisited.
(b) There should be clear separation between adjudication function and registration function in relation to IP matters. The adjudication function should be assigned to the courts. The dispute settlement power may be given to the Commercial Bench of the High Court.
(c) A dedicated agency for registration and administration of Industrial Property is required. A separate Patent and Trademark Office may be set up for this purpose.
(d) Training for authorities dealing with or adjudicating IP disputes as well as other stakeholders should be provided.
(e) Awareness programs may also be required for entrepreneurs and service providers.
 This article has been published in Supreme Court Bar Journal Year 17, Vol. 17, 2022
 Trademark Law and Theory, A Handbook of Contemporary Research, edited by Graeme B. Dinwoodie and Mark D. Janis Edward Elgar, Northampton, MA, USA
 Lionel Bently, From Communication to thing: historical aspects of the conceptualization of trademark as property, Trademark Law and Theory pp.5, Ibid.
 Clement v. Maddick (1859), Cartier v Carlile (1862), Edelsten v. Edelsten (1863) , Hall v. Barrows (1863) etc, Ibid .
 A Bill to Amend the law relating to the counterfeit or fraudulent use or appropriation of trademarks, and to secure to the proprietors of trade marks in certain cases the benefit of international protection, Bill No 17 (February 18, 1862) =(the so-called “Sheffield Bill”, so named because it was drafted on behalf of the Sheffield Chamber of Commerce) proposed trademark as property in the law for the first time. Section 9 of the Sheffield Bill proposed that a registered trademark ” shall be the personal property of the proprietor, and shall be transmissible according to the ordinary rules of law affecting personal property”. The Sheffield Bill was not succeeded as the Select Committee opposed the concept. The trademark as property was conceptualized at first in the law under the Trademark Registration Act, 1875, Lionel Bently Ibid.
 Barton Beebe, The semiotic account of trademark doctrine and trademark culture, Trademark Law and Theory, pp- 48 Ibid
 Kerly’s Law of Trade Marks and Trade Names, Sixteenth Edition, Sweet and Maxwell
 Ibid paragraph 2-015-2-016, Page 14
 Ibid paragraph 2-017, page 14
 Ibid paragraph 2-018-2-023, page 15
 Ibid paragraph 2-010, page 11 (C-487/07) EU:C:2009:378
 Section 16 (2) of PDTA
 Section 21.d of PDTA
 Section 18b of PDTA
 Section 19 of PDTA
 Section 25 of PDTA
 For instance, Article 2 of DIRECTIVE 2008/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL, 2008 defines trademark as ” A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such sings are capable of distinguishing the goods or services of one undertaking from those of other undertaking.”
 Writ No 3240 in the year of 2055, Certiorari including Mandamus, Decision Date 2056 -07-29 (not published)
 NKP 2076, Vol.07, DN 10304
 NKP 2076, Vol., 07, DN 10303
 NKP 2068., Vol.,09, DN 8686
 NKP 2068, Vol. 03 DN. 8577
 This principle has been expanded by the Supreme Court in Damodar Timsina, Authorized Representative of Kansai Nerolac Paints Limited v. Rukmini Chemical Industries Pvt. Ltd et. al (NKP 2077, Vol., 08, DN 10651). As per the decision a trademark applied with bad intent should be rejected at the first instance and if the same gets registered and if the bad faith is later established, the registered mark can be cancelled and there should be no question of time limitation. Please see paragraph 4.4 (h) below.
 NKP 2076, Vol. 04, DN 8363
 NKP 2076. Vol, 03, DN 10209
 NKP 2062, Vol. 05, DN 7536
 NKP 2077, Vol., 08, DN 10651
 Ibid paragraph 41-page 1652 and paragraph 57-page 1657
 The decisions of the Hight Court (then Court of Appeal) referred in this article may have been challenged before the Supreme Court and sub-judice.
 Paris Convention for the Protection of Industrial Property, 1883
 Prem Mehendi Center v. Habib Kala Kokila Hennas, Case No. 070-DP-1425, Decision date: 2072-05-31
 Amrit Distillery v. FACEBOOK Inc. USA, Case No.074-DP-1229, Decision date: 2075-06-16
 Google LLC (previously Google Inc.) v. Google Enterprise Industries, Case No.076 DP-0379, Decision date: 2077-10-19
 Perfect Blends (Nepal) Pvt. Ltd v. VISA INTERNATIONL SERVICES ASSOCIATION, Case No. 075-DP- 0048, Decision Date 2076-02-14.
 The Agreement on Trade-Related Aspect of Intellectual Property Rights
 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO September 20-29, 1999
 SSPL Limited v. Sahara Soap and Detergent Industries Pvt. Ltd, Case No. 070-WO-0179, Decision Date 2070-09-17
 Hindustan Lever Limited et.al v. Central Supermarket and Departmental Store et.al, Case No. Petition No. 038 of the Year of 2057, Decision Date: 2057-06-30.
 Central Departmental Store v. Hindustan Lever Limited et. al. Civil Appeal No.7856 of the year of 2058, Decision Date, 2061-09-15
 The inefficiency and lack of knowledge of officials of DOI on IP matters is evident from the fact that many trademarks have been registered by local industries which are identical or confusingly similar to the global brands. There have been many trademark disputes pending before various courts related to many global brands. These disputes could have easily been avoided should our trademark practice have a bit efficient.