Registration Process of Foreign Trademark in Nepal

This article explains detail regarding the registration of foreign trademark in Nepal.

1.                 Governing Law for Trademark Registration in Nepal

              Registration of the Trademark in Nepal is governed by The Patent, Design and Trade Mark Act, 1965 (2022)” (“PDTA”).

              Nepal has also signature member to different international treaties applicable for protection of trademark which are as mentioned:

a.   Paris Convention for Protection of Industrial Property, 1883 (‘Paris Convention”),

b.   Agreement on Trade Related Aspects of Intellectual Property Rights, 1995 (“TRIPS”) and

c.   Convention Establishing World Intellectual Property Organization (“WIPO Convention”).

2.                 Governing Authority

            The Department of Industry (DOI) is the authority where the trademark is registered in Nepal. In addition to trademark registration DOI also work as quasi-judicial body that look after the claim on protection and enforcement of right over the trademark.

3.                 Process of Registration of Foreign Trademark in Nepal

The process for registration of Foreign Trademark in Nepal is as mentioned;

             Note: Kindly note that trademarks are published in IP Bulletin with the objective to receive the opposition if applicable. The total opposition period is 90 days counting from the date of publication of IP Bulletin.

4.                 Protection of Foreign Trademark Based on National Registration

PDTA under its Section 21(B) has mentioned, foreign trademark receives the protection only after it gets registered in Nepal, so registration of foreign trademark is required for the protection.

Nepalese law has not directly recognized, protection of well-known trademark. Section 18 (1) and 18 (3) of PDTA provide the right to refuse trademark registration or cancel the registered trademark in case such trademark damage the reputation of other trademarks. This is indirect recognition of well-known trademark. Nepal is also member of Paris Convention that creates further obligation for the protection of well-known trademark.  Despite of this, in practice there is a challenge in protection of well-known trademark which are not registered in Nepal. There has not been such progressive decision in regard to protection of well-known trademark from the court.

5.                 Timeline for Trademark Registration in Nepal

            The timeline required for the registration of trademark takes usually about 12 to 14 months if no opposition petition is filed against the applied trademark.

6.                 Documents required

             The following documents are required for the registration of foreign trademark in Nepal;

7.                 Registration based on Priority

Section 21C of the PDTA provides that the DOI can register a foreign trademark in Nepal without conducting examination. The home registration certificate is considered a major basis for registration of the foreign trademark in Nepal. Further the PDTA also allows the trademark to be registered based on priority claim as recognized by the Paris Convention. The priority claim period is of 6 months.

8.                 Ground for refusal of Trademark Registration in Nepal

              Section 18(1) of PDTA, has provided following grounds for rejection of trademark registration application:

a.          If such trademark is found to have already registered in the name of another person;

b.          In case such trademark damages goodwill of trademark of any person;

c.          In case of such trademark damages the reputation of any person or institution; or

d.         In case such trademark is in contrary to public conduct or morality or undermines national interest.

9.                 Validity and Renewal of Trademark

A trademark once registered is valid for 7 years from the date of registration. Trademark can be renewed for any number of times for a period of 7 years at a time.

Trademark should be renewed within the period of 35 days from the date of expiry of the validity of the trademark. The PDTA also provides right to the trademark holder to renew the trademark by making payment of penalty of NPR 1,000 within 6 months from the expiry of the validity period.

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10.              Classification of Trademark in Nepal

Trademark registration of Nepal is based on Nice Classification, 1958 which categorized good and service into 45 class i.e., 34 classes of goods and 11 classes of service.

Kindly note that separate application and government fee has to be submitted for per trademark per class.

11.              Government Fee Applicable for Trademark