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Definition Of Trademark
Trademark is defined under Section 2 (c) of The Patent, Design and Trade Mark Act, 2022 (1965) as any
- word, or
- symbol, or
- picture, or
which is used by any individual or firm or company in their goods or services in order to distinguish the same from the goods or services of others.
Process Of Registration Of Trademark
The process of registration of a trademark in Nepal in a nutshell begins with the submission of an application for registration of a mark by the Applicant followed by investigation of such mark by the Department and publication of the mark in the Department’s Intellectual Property Bulletin allowing for third-party objections and at last registration of the said mark by issuing a registration certificate to the Applicant after they have paid the necessary registration fees. The steps involved in the registration process of trademarks in Nepal is elucidated as follows:
Application For Registration
Section 17 of The Patent, Design and Trade Mark Act, 2022 (1965) postulates that any person wishing to register their mark ought to be wary of submitting the following documents as specified by the Patent, Design, and Trademark Act, 2022, and the Trademark Guidelines, 2022 mandatorily at the time of filing the application for registration of trademark:
- For a Domestic Company, the following documents must be submitted:
- Application Form
- Copy of the Industry Registration Certificate
- Copy of the Company Registration Certificate
- Tax Clearance Certificate
- Copy of PAN Certificate
- Receipt of Payment of Revenue of Rs 1000
- For a Foreign Company, the following documents must be Foreign Company:
- Application Form
- Original Home Registration
- Certificate/ Priority Document or Notarized Copy of Home Registration Certificate/ Priority Document
- Original Power of Attorney (POA) or Notarized Copy of Power of Attorney
- Receipt of Payment of Revenue of Rs 1000
Separate applications shall be submitted to register trademarks for goods and services placed in different categories. The Applicant must submit the application form to the Department along with four specimens of its mark and an application fee of Rs 1000.
[Image Sources : Shutterstock]
Investigation By The Department
Once the Applicant has filed the Application for Registration of Trademark, the Department shall conduct the necessary investigation. First, the initial test is undertaken and later the substantive test is undertaken.
Afterwards, a public notice is issued and the subject mark is published in the Department’s Intellectual Property Bulletin for the information of the public. If a third-party has any objection to the subject mark that it infringes the rights of such third-party then they can file a complaint to the department regarding the same. Such an objection must be lodged within 35 days from the date of publication as per Section 21A (2).
If an objection is lodged against the subject mark, the investigation will follow.
If the investigation favours the issuance of the subject mark, then, if the Department deems appropriate, the subject mark shall be registered.
If the investigation does not favour the issuance of the subject mark then, the decision obtained by the investigation can be appealed through the Appellate Court. The Applicant would be provided with sufficient opportunity to defend themselves. A six-month trial period will follow registration prior to final issuance.
Registration Of Trademark
If no objections are lodged against the subject mark, a decision to issue a certificate of registration will be made.
The certificate of registration shall be issued to the Applicant once they make the payment of the trademark registration fees of Rs 5000.
The Government of Nepal may categorise goods and services into different classifications by a notification in the Nepal Gazette for the purpose of trademark registration. The trademark registered for goods or services in one category may also be registered for goods or services under another category.
No trademark may be used as a registered trademark without actually registering it with the Department.
Cancellation Of Registration Of Trademark
The Department may cancel the registration of any trademark if it is satisfied that the subject trademark may harm the reputation of any individual or institution, adversely affect public conduct or morality, or undermine the national interest or reputation of any other person’s trademark, or if such trademark is discovered to have already been registered in the name of another person.
In case a trade-mark registered at the Department is not brought into use within one year from the date of registration thereof, the department shall conduct necessary inquiries and cancel such registration.
Provided, however, that before terminating a trademark registration, the Department must provide the trademark holder a reasonable opportunity to explain why their trademark should not be cancelled.
Validity Of Trademark
Upon registration of a trademark in Nepal, it shall remain valid for a period of 7 years from the date of its registration.
Renewal Of Trademark
Once a trademark expires after a period of 7 years of its validity, it can be renewed any number of times for a further period of 7 years at a time.
A trademark can be renewed within a period of 35 days from the date of expiry of the trademark after paying the required renewal fees.
Renewal may be made by paying a fine of Rs 1000 within 6 months after the expiry of the time period.
In case of failure to renew a trademark, it shall automatically be deemed cancelled.
Illegal Use Of Registered Trademark
Illegal use of a registered trademark is prohibited in Nepal. No one can deceitfully use a mark as a registered trademark without actually obtaining registration for the same by the Department.
A registered trademark cannot be copied by a third party or used by such third party in its own name or in the name of others without transforming the ownership or obtaining the written consent by the owner of the registered trademark.
No one can bring into use a trademark that has been cancelled for non-use for a year from the date of its registration.
The punishment for illegally using a trademark is fine not exceeding One Hundred Thousand Rupees and confiscation of articles and goods connected with such offence on the orders of the Department as per the gravity of offense.
- https://nepaltradeportal.gov.np/resources/docs/patent-design-and-trademark-act-2022-1965.pdf (last visited on 8 July, 2023)
- http://www.iponepal.gov.np/trademark.php (last visited on 8 July, 2023)