Trademarks in Nepal
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
Trademarks in Nepal may be designated by the following symbols:
™ (for an unregistered trade mark, that is, a mark used to promote or brand goods)
℠ (for an unregistered service mark, that is, a mark used to promote or brand services)
® (for a registered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound. The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required.
The owner of a common law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.
The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark, particularly in the United States.
|Relevant Office||Department of Industries|
|Law in Force||Patent, Design and Trade Marks Act, 1965|
|Nice Classification||Yes (Ninth Edition)|
|Multi – Class System||NO|
|Document(s) required for filing a trade mark application||Simply executed trade mark applicationSimply executed Power of AttorneyCertified Copy of Home Country Registration Certificate or certificate issued in any other country with duly authenticated English translation thereof. (The aforementioned documents can be filed at a later stage also)|
|Prosecution Process||FilingPublication of mark in IP Bulletin Opposition period (three months from the publication date)Registration Renewal|
|Appeal||Within 35 days of the decision of hearing committee.|
|Registration Term||7 years from the date of registration|
|Renewal Term||7 years from the date of previous registration|
|Documents required for renewal||Original registration certificate|
|Cancellation Proceedings||A mark is vulnerable to a cancellation action by the Department of Industries suo moto or by a third party if it is not used within a period of one year from the date of registration.|
|The examination procedure is omitted on submission of certified copy of home country registration certificate or certificate issued in any other country and directly proceeds to publication in the monthly IP Bulletin.|
Trademark Search in Nepal
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 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:
- Word Search
- Device Search
Word Search in Nepal
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 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.
Device Mark Search in Nepal
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.
Trademark Applications in Nepal
In Nepal Trademark applications can be filed in two categories:
- Ordinary Applications
- Convention Application (claiming priority from a convention country)
Ordinary Trademark Applications In Nepal
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.
Priority Trademark Applications in Nepal / Convention Trademark Applications Nepal
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, in other words. 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, will 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.
Trademark Classes for Goods and Services in Nepal
In Nepal a trademark application can be filed in 45 classes. Classes 1 to 34 for goods and classes 35 to 45 is for service marks.
Trademark Filing in Nepal
An application for registration of the trademark is to be filed with the Trademarks Registry in the prescribed form with payment of requisite fees.
Further details regarding filing of trademark applications can be accessed on the Trademark Registry’s Website, Nepal at the following link: Nepal Trademark Registry
Requirements for Filing a Trademark Application in Nepal Who Can File a Trademark Application in Nepal?
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.
After filing the trademark application, the same is then examined by the Trademarks Registry, Kathmandu on the basis of its distinctiveness and similarity with prior marks.
If, following examination, the trademark application is considered allowable, acceptance order is issued, and thereafter the trademark is published in the trademarks Journal. If
there are no oppositions filed within 90 days, from the date of advertisement in the Trademarks Journal, then the trademark registration certificate is issued.
Trademark registration is a long process and it takes around 12-18 months to obtain registration in case no opposition is filed by a third party.
Trademark Duration in Nepal
Once a trademark is registered in Nepal, it is valid for a period of seven years (7 years) from the date of registration. The trademark registration can then be renewed for a further period of seven years (7 years) from the date of expiration of registration or of the last renewal of the registration.
Trademark Filing Procedure in Nepal
The procedure for filing a Trademark in Nepal is as follows:
- Filling a Trademark in Nepal – 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 in Nepal – 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 in Nepal – 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 & Renewal of a Trademark in Nepal – 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.
Trademark Prosecution Flowchart in Nepal
For more information on Trademark Prosecution in Nepal please click here: email@example.com