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Trademarks in Nepal

TRADEMARKS FILING AND PROSECUTION 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.

Trademarks in Nepal
Relevant OfficeDepartment of Industries
  Law in ForcePatent, Design and Trade Marks Act, 1965
Nice ClassificationYes (Ninth Edition)
Paris ConventionYes
Madrid SystemNO
Multi – Class SystemNO
                    Document(s) required for filing a trade mark applicationSimply 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 ProcessFilingPublication of mark in IP Bulletin Opposition period (three months from the publication date)Registration   Renewal
Trademarks in Nepal
  AppealWithin 35 days of the decision of hearing committee.
Registration Term7 years from the date of registration
  Renewal Term7 years from the date of previous registration
Documents required for renewalOriginal registration certificate
        Cancellation ProceedingsA 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:

  1. 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.

Paris Convention

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:

  1. 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

trademark prosecution flowchart

For   more   information    on   Trademark   Prosecution    in    Nepal   please    click   here: info@ssrana.com

Trademarks Opposition in Nepal

TRADEMARKS IN NEPAL FAQs

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TRADEMARK OPPOSITION IN NEPAL

Understanding Trademark Opposition in Nepal

PROCEDURE FOR TRADEMARK OPPOSITION IN NEPAL

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 counterstatement 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.

For   more   information   on   trademark   opposition in   Nepal, please  write to us at info@ssrana.com

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TRADEMARK REGISTRATION IN NEPAL

Understanding registration of trademark in Nepal

HOW TO REGISTER A TRADEMARK IN NEPAL           

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 is 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.

For   more   information   on   how  to  register  a trademark   in   Nepal,  please  write to us at info@ssrana.com

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TRADEMARK RENEWAL IN NEPAL

Understanding Renewal of Trademark in Nepal

HOW TO RENEW A TRADEMARK IN NEPAL?

Trademark Renewal in Nepal:

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 EXPIRYof 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.

For more information on trademark renewal in Nepal, please  write to us at info@ssrana.com

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TRADEMARK FILING FEES IN NEPAL

Know about Trademark filing Fees below:

Details  regarding  the  Trademark  Filings  fees  can  be  accessed  at  the  following  link:

Nepal Trademark Filing Fees

For   more   information   on   trademark  forms  and  fees  in  Nepal, please  write to us at info@ssrana.com

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WELL KNOWN TRADEMARKS IN NEPAL

Understanding Well Known Trademarks in Nepal

What is the procedure for a mark being recognized as well known in Nepal?

The Trademarks Registry recognizes well known trademarks on the basis of their international, national and cross border reputation.

What marks are well known in Nepal?

It is a mark which has become well known to the substantial segment of the public, which uses it’s goods and services, and use of such mark in relation to other goods and services is likely to be taken as connection between the two.

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TRADEMARKS NOT REGISTRABLE IN NEPAL

Below are the list of marks which are not registrable as a Trademark in Nepal

What is not registrable as a trademark in Nepal?

The trademarks which are not registrable in Nepal are the following:

  • Trademark which is likely to cause deception or confusion;
  • Trademark that is likely to hurt religious sentiments of any community;
  • Trademark that comprises any scandalous or obscene matter;
  • Trademark which is contrary to any law, for the time being in force, or morality;
  • Trademark for the shape of goods necessary to obtain technical result or which gives substantial value to the goods
  • Name of the chemical compound declared  by World Health Organisation as an International non-proprietary name

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TRADEMARK PROTECTION IN NEPAL

Understanding protection of Trademarks in Nepal

How to protect a trademark in Nepal?

Remedies available in Nepal are:

Civil Action in Nepal

The competent Courts can be moved for grant of relief of injunction against infringement and/or passing off.

Criminal Proceedings in Nepal

Criminal complaints can also be filed against persons who have infringed the trademark in Nepal in addition to a civil action.

Administrative Remedies in Nepal

Notice of opposition can be filed against trademark applications published in the Trademarks Journal in Nepal. Proceedings can be initiated for rectification/cancellation of registered trademarks before the Registrar of Trademarks.

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TRADEMARK OPPOSITION FLOWCHART IN NEPAL

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TRADEMARK PROSECUTION FLOWCHART IN NEPAL

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