A trademark search in Nepal can be for both word and device marks. It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark. Although, search is not mandatory for filing the application, it is advisable to conduct a preliminary search for the proposed trade mark before filing the application in order to avoid any objection and opposition with respect to the mark later on.
Trademark searches in Nepal can be conducted for word mark, numerals, labels and device mark. Device mark searches can be conducted through Vienna code.
Trademark searches can be classified into following categories:
a) Word Search
Trademark word search edition of Nepal follows the nice classification and trade mark can be filed for goods in class 1-34 and services in class 35-45. Trademark searches in Nepal can be conducted for the desired class and associated classes.
It is advisable to conduct comprehensive trademark clearance search in Nepal to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to the mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Nepal.
b) Device Mark Search
It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Nepal can be conducted amongst the marks filed and registered as per the Vienna code classification.
In Nepal Trademark applications can be filed in two categories:
a) Ordinary Trademark Applications
Ordinary trademark applications filed in Nepal are applications without claiming any priority. Ordinarily a trademark in Nepal can be filed (single class application) only. It is pertinent to mention that multi class trade mark applications cannot be filed in Nepal. However, the Patent, Design and Trademarks Act, 1965 also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
b) Priority Trademark Applications in Nepal / Convention Trademark Applications
A priority trademark application should be filed in Nepal within six months after the date on which the trademark application was made in the convention country. For claiming priority in Nepal from a convention application, a certified copy of the priority documents needs to be filed with the Nepalese IP Office.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Nepal within six months of after the date on which the application was made in the Convention Countries. The trademark shall, if registered under the Ordinance, be registered as of the date as which the application was made in the Convention Country and that date shall be deemed for the purpose of the Ordinance to be the date of registration.
In Nepal a trademark application can be filed in 45 classes. Classes 1 to 34 are for goods and classes 35 to 45 are for service marks.
An application for registration of the trademark is to be filed with the Trademarks Registry in the prescribed form with payment of requisite fees, and any person who claims to be the proprietor of the trademark can file an application for the registration of its mark in respect to goods/services. It should be filed at the Trademarks Registry, Kathmandu.
The procedure for filing a Trademark in Nepal is as follows:
- Filling of Trademark
A trademark application in Nepal can be filed for a single class only. Multi class trade mark applications cannot be filed in Nepal. Application for a Trademark or a Priority Trademark Application claiming priority from a convention country can also be filed in Nepal within six months from the priority date.
- Notice of Refusal/ Acceptance
After an application is filed the same is then examined by the Registrar with regard to the distinctiveness, possibility of deceptiveness and conflicting trademarks. The Registrar may accept or refuse the application subject to the provisions of the act. A trademark application in Nepal can be refused / objected by the Registrar.
- Publication / Advertisement of a Trademark
After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trademarks Journal. An application is advertised in the Trademarks Journal so as to invite the public for filing opposition against the registration of a mark.
- Opposition of Published Trademark
On publication of the trademark in the Trademarks Journal, any person can oppose as to the registration of the said trademark by filing a notice of opposition within the prescribed period of 3 months from the date the Trademarks Journal is made available to the public.
- Registration and Renewal of a Trademark
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is then registered for a period of 7 years from the date of filing of the application and the registration certificate is issued. The trademark can be renewed from time to time for an unlimited period by payment of renewal fees, failing which the mark becomes liable to be removed from the registry on account of non-renewal. Each renewal term is for a period of 7 years.
Once a trademark is published in the TradeMarks Journal, any person can file an opposition against registration of the said trademark in Nepal by filing a notice of opposition within the prescribed period of 3 months from the date the Trademarks Journal is made available to the public.
A trademark application can be opposed in Nepal under Section 18 of the Act. Once an opposition is filed against a trademark in Nepal, a copy of notice of opposition so filed is served to the applicant by the Trademark Registry and the applicant is then required to file a counter statement within 21 days of receipt of the notice forwarded by the Registry, failing which the application shall be treated as abandoned.Thereafter the Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then hearing is fixed in the matter.
To register a trademark in Nepal, after filing the application in the prescribed form and payment of relevant fee, the mark will then be examined, published and eventually shall proceed to registration where there is no opposition against the said trademark or where the opposition against the said trademark was filed but was decided in favor of the applicant. The trademark will then be registered for a period of 7 years from the date of filing of the application in Nepal and the registration certificate will be issued. Once a trademark is registered in Nepal , then the insignia ® can be used with the mark.
The Patents, Designs and Trademarks Act, 1965 also provides that if a registered trademark is not used for a continuous period of 01 year from the date of registration, then the same becomes vulnerable to cancellation action on grounds of non-use.
The procedure for filing a renewal for a trademark in Nepal is as follows:
- Request to renew a trademark in Nepal can be filed within six months BEFORE THE EXPIRY of the registration / renewal term if accompanied by the requisite renewal fees on the prescribed form.
- A trademark can be renewed in Nepal from time to time for an unlimited period upon payment of the renewal fees, failing which the mark becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 7 years.
Details regarding the Trademark Filings fees can be accessed at the following link:
Nepal Trademark Filing Fees