In Nepal, the trademark opposition procedure is governed by the Patent, Design and Trademark Act, 2022. Under this Act, any individual or entity can file an opposition against a trademark once it is published in the Industrial Property Bulletin.
Overview of the Trademark Opposition Procedure:
- Filing the notice of opposition: Any person may file a notice of opposition after the trademark is published in the Industrial Property Bulletin. This is done in accordance with Section 18(1) of the Patent, Design and Trademark Act, 2022, and requires the payment of relevant fees.
The notice must be filed within 90 days from the date the Industrial Property Bulletin is made publicly available. It is important to note that there is no provision for extending this time limit. The notice of opposition should detail all allegations and include supporting evidence. The Department of Industries (DOI) is responsible for serving the notice to the trademark applicant.
- Request for Publication of Summons (if required): In case the notice of opposition is returned back due to incorrect address of the applicant or the applicant does not acknowledge the opposition notice, a request can be filed with the DoI for issuing an order for publication of summons.
- Publication of Summons in Daily Newspaper: Once the order for publication is issued, a summons is published in the National level Daily Newspaper. The date of publication of summons in the National level Daily Newspaper is deemed to be the date on which the summons was served to the applicant.
- Filing the Counterstatement: Once the notice of opposition is served upon the applicant and acknowledged by them, they have 14 days to submit a counterstatement. The said counterstatement must also include evidence supporting the applicant’s position. The counter statement can be filed within 21 days along with condonation of delay.
- Hearing and Decision: After both parties have submitted their evidence, a hearing will be conducted at the DOI. During this hearing, both parties will have the opportunity to present their cases. In case the applicant does not file their counter statement within the deadline, an ex-parte hearing is scheduled to decide the case. The Director General of the DOI holds the authority to decide based on the hearing. If either party disagrees with the Director General’s decision, they have the right to appeal to the High Court.