Legal Provisions:
In Nepal, a foreign trademark must be registered to receive protection. According to Section 21(a) of the Patent, Design and Trademark Act, 1965 a foreign trademark will not be granted protection in Nepal unless it is officially registered there.
Despite being a signatory to the Paris Convention for the Protection of Industrial Property (1886), Nepal’s PDTA does not explicitly cover the protection of “well-known trademarks.” Consequently, to safeguard foreign trademarks, including well-known ones, registration with the DOI is necessary.
Authorized entity for registration of foreign trademark:
In Nepal, trademark registration is managed by the Department of Industry (DOI), which operates under the Ministry of Industry, Commerce, and Supplies. The DOI is responsible for both registering and overseeing trademarks, helping businesses safeguard their brand identities effectively.
Registration Procedure:
Step 1-Submission of Application:
Start by submitting your application to the DOI. This initial step indicates your intention to register your trademark in Nepal.
Step 2-Preliminary Examination by DOI:
The DOI then performs a comprehensive review to determine whether the proposed trademark is already registered or conflicts with existing regulations.
Step 3-Publication in the Industrial Property Bulletin:
After receiving approval from the DOI, the trademark is published in the Industrial Property Bulletin, typically released every three months.
Step 4– Final Registration:
If no objections are raised by third parties within 90 days of publication, the trademark will be officially registered.
Required Documents for registration of foreign trademark:
- Application for trademark registration
- Certificate of the registration of the proprietor of the trademark
- Tax registration certificate of the Proprietor
- Label of Trademark
- Power of attorney (if any)
- Industrial registration certificate
Foreign trademarks cannot be registered on their own. You must provide a home or foreign trademark registration certificate to the DOI for registration.
Additionally, if you have applied for a trademark in a foreign country, you can use that application to claim priority for up to six months under the provisions of the Paris Convention.
Grounds for Refusal of Foreign Trademark Registration:
- If such trademark damage the prestige of any person or institution.
- If such trademark adversely affects public conduct or morality.
- If such a trademark undermines the national interest.
- If such trademark undermines the reputation of the trademark of any other person.
- If such trademark is already registered in the name of another person.
Renewal of Foreign Trademark:
Within 35 days after the expiration date, the trademark can be renewed. Alternatively, it can be renewed within 6 months by paying a fine of 1,000/-. If the trademark is not renewed, it will be automatically cancelled.
Required Time:
Typically, the trademark registration process takes approximately 6 to 9 months to complete, provided that no opposition petition is filed.
Validity:
The validity of a foreign trademark registration is maintained for seven years.
On which basis trademark are classified in Nepal:
Trademark registration is carried out according to the classification system set by the Nice Agreement of 1957, which divides goods into 35 categories and services into 11 categories. In practice, applicants must file separate applications and pay distinct government fees for each class of goods or services they wish to register. Please be aware that a separate application and government fee must be submitted for each trademark and each class.