Tejram Dharampal – Petitioner
Gadapati Tobacco- Respondent
(Decided on2073/6/6, Decision No:10303
(Nepal Law Reporter, 2076)
Case: Trademark Registration
The Respondent had applied for the registration of the mark ‘RAJ NIWAS’ under class 31 and 34 before the Department of Industry on 2072/05/09. The Petitioner had also applied for the registration of the same mark ‘RAJ NIWAS’ before the DOI on 2072/07/23. The Petitioner’s mark had been published in the IP Bulletin for Opposition, which was then opposed by the Respondent on the grounds of ‘first to file’ rule. The DOI refused the opposition and decided in favor of the Petitioner.
The Respondent then, appealed before the High Court of Patan against the decision of DOI. The High Court quashed the decision given by DOI and issued order to the DOI instructing to register the trademark in the name of the Respondent.
Thereafter, the Petitioner filed a petition with the Supreme Court requesting to quash the decision made by the High Court, Patan. In the petition, the Petitioner contended that it was the lawful proprietor and the prior user of the “RAJ NIWAS” mark and the mark is well known in the Indian and Nepali market and it had obtained protection through the registration of the mark in Lebanon and UAE. The Respondent in its written response contented that it was the first to apply for registration in Nepal, it had invested huge amount for its promotion and development and had paid more than 2 crores as tax to the Inland Revenue Department. The Respondent also stated that the Petitioner had failed to provide proof of their Home Registration at the time of registration in Nepal.
- What is a trademark and who should have the rights to use the mark?
- What are the legal provisions provided to ensure the protection of a trademark? In what conditions can a trademark registered in a foreign country acquire protection in Nepal?
- Should the Petitioner have any right on the disputed mark “RAJ NIWAS”?
The petition was heard by the division bench where the court decided in favor of the Respondents and upheld the decision of the High Court whereby the court addressed the following issues:
- Considering the issue of the meaning of trademark and the rights granted through protection, the court held that trademark is one part of intellectual property and the owner of the trademark has the exclusive rights to use the mark for their business purposes. The court also referred to the definition of trademarks given under Article 2 Section 15 of the TRIPS agreement and Section 2 (c) of the PDTA. The court also emphasized on the fact that trademark is the creation of the owner and the innovator of the mark should obtain the rights and protection granted to the mark.
- Regarding well-known marks and the protection granted under Article 6bis of the Paris Convention, the court emphasized on the provision of the Convention whereby it provides that the conditions for the filing and registration of the trademarks shall be determined in each country of the Union by its domestic legislation which means that the applicant must fulfil all the legal formalities for the registration of a mark in Nepal.
- The Petitioner had applied for the registration of the mark on the basis of its home registration; however the mark had not been registered in the home country itself at the time of filing the application. Trademark application and trademark registration are two different things. The PDTA clearly states that the trademark must be registered in the foreign country of origin in case of a foreign mark application in Nepal.
- The court also cited the Madan Prasad Lamsal v. Repsona Publication case whereby the court laid down the precedent stating the priority granted to the prior application i.e the ‘first-to-file’ rule.