The term “Trademark” refers to a symbol, name, or any other thing which gives identity to one’s invention or product and distinguishes it from other similar products of its kind from a different manufacturer. Trademark is represented by the following symbols ®, ™. Trademark prevents others from using one’s product or service without their authorization. However, a trademark can be bought and sold with the owner’s consent. Trademarks are territorial.
Registration of Trademark is compulsory in Nepal. No trade-mark may be used as a registered trade-mark without registering it at the Department of industry. Patent Design and Trademark Act, 2022 writes, ‘ if anyone use unregistered trademark, they shall be punished with a fine not exceeding is One Hundred Thousand Rupees and articles and goods connected with such offense confiscated on the orders of the Department as per the gravity of offense.
Registration Process
- Submit an application along with required documents including receipt of the sum paid for registration, four copies of the trademark to be registered, Company registration documents and VAT/PAN number of the company willing to register, Details of the applicant (Status, address of the applicant or company applying for trademark, Tax clearance certificate of the applicant, one copy of power of attorney at the Ministry of Industries and a separate application shall be submitted to register trade- marks of goods or services placed in different categories.
- Inspection by Department of Industries (DOI) and decide whether to register the trademark or not. If DOI decide to cancel the registration it shall provide a reasonable opportunity to the holder of the trademark to show cause if any, why his/her trademark should not be cancelled
- Publication of the proposed trademark in “IP bulletin” (published in every 3 months). Law provide time period of 90 days from the date of IP Bulletin to register any complain against the published trademark.
- If anyone file petition against the published trademark, opposition have to present in the DOI along with advocate foremost and defend the complaint.
- Department of Industries (quasi-judicial body), High court Patan and Supreme court of Nepal exercise the jurisdiction to hear complain against the trademark.
Trademark cannot be register in Nepal in following grounds:
- If it is felt such trade-mark may hurt the prestige of any individual or institution or
- adversely affect the public conduct or morality or
- undermine the national interest or the reputation of the trade-mark of any other person, or
- In case such trade-mark is found to have already been registered in the name of another person, it shall not be registered.
However, DOI shall, before cancelling the registration of a trademark provide a reasonable opportunity to the holder of the trademark to show cause if any, why his/her trademark should not be cancelled.
Once the trademark is registered, it will be valid for 7 years from the date of registration and it can be renewed. However, cancellation of Trademark is possible even after the registration, if the trademark is not brought into use within one year from the date of registration.
Key Points
- Use of non-registered Trademark is prohibited and punishable in Nepal;
- In the matter contradictory of public health, national security, public sentiments, trademarks cannot be registered.
- Non-use of registered trademark within one year is the valid ground for cancellation of trademark
Therefore in Nepal registration of Trademark is compulsory and the registration and post-registration process requires proper guidance and documentation. Trademark is the only intellectual property which is increasingly in use for goods and services to be available in Nepali market. Nepal doesnot have regional registration of Trademark. DOI register local trademark or international trademark only. Beside public policy, national security are the important areas of concern for registration of trademark.
Counterfeiting products are still available publicly in market of Nepal which gradually affecting public trust, and leads to unfair competition. In such situation, trademark literacy is emerging as important factor to overcome the counterfeiting products.
If you have inquiries on matters relating to trademark, please write to us at info@wips.com.np