Introduction To Foreign Trademark Registration in Nepal

Foreign Trademark registration in Nepal is regulated by the Patent, Design, and Trademark Act, 1965 (2022) (“PDTA”). This guide outlines the steps and requirements for foreign trademark registration in Nepal.

Nepal, a member state of the Paris Convention for the Protection of Industrial Property, adopted a provision in 1883 stating that if a trademark has already been registered in a foreign country and has a certificate of registration, no authentication is required and the trademark can be registered without further investigation.

Legal Basis for Foreign Trademark Registration in Nepal

To receive protection in Nepal, a foreign trademark must be registered within the country. According to Section 21A of the PDTA, protection for a foreign trademark is not granted unless it is officially registered in Nepal. Despite Nepal’s adherence to the Paris Convention for the Protection of Industrial Property (1886), which addresses well-known trademarks, the PDTA does not explicitly cover their protection. Therefore, registration with the Department of Industry (DOI) is essential for safeguarding both foreign and well-known trademarks.

Authority for Foreign Trademark Registration

The Department of Industry (DOI), operating under Nepal’s Ministry of Industry, Commerce, and Supplies, is responsible for trademark registration and management in Nepal. For more information, visit their website: DOI.

Process for Foreign Trademark Registration in Nepal

The following table outlines the steps involved in registering a foreign trademark:

Step 1: Submission of Application at the Department of Industry

Step 2: Preliminary Examination at the Department of Industry

Step 3: Publication of Trademark in Industrial Property Bulletin (“IP Bulletin”).

Step 4: Registration of trademark if opposition is not received by any third party.

Required Documents for Foreign Trademark Registration in Nepal

To register a foreign trademark, the following documents must be submitted to the DOI:

·       Home/Foreign Trademark Registration Certificate: This certificate from the country of origin is required for registration.

·       Application for Registration: An original application form.

·       Trademark Label: Four color-printed copies of the trademark label.

·       Power of Attorney: One original document authorizing representation.

·       Board Resolution: If the applicant is a company/entity.

If a trademark is already applied for in another country, the application in Nepal can be based on that with a priority claim of up to 6 months, as permitted by the Paris Convention.

Grounds of Refusal for Trademark Registration

The DOI may reject a trademark registration on the following grounds:

·       The trademark is already registered by another entity.

·       The trademark harms the goodwill or reputation of an existing trademark or individual.

·       The trademark adversely affects public morals or national interests.

Duration of Trademark Registration in Nepal

(a). According to Section 18D of the PDTA, trademark registration is originally valid for 7 (seven) years from the date of registration but can be renewed an unlimited number of times for a duration of 7 years each.

(b).  Section 23(B) of the PDTA requires that trademarks be renewed within 35 days of the expiration of their validity. The PDTA also gives the trademark owners the right to renew the trademark by paying a penalty of NPR 1,000 within six months of the expiration of the 35-day term. In practice, trademark renewal applications are routinely submitted six months before the validity period expires.

Government Fees for Trademark Registration

The fees for trademark registration are as follows:

S.N.	Particulars	Fees (in Nepalese Rupees)
1	Application Fee	NPR 1,000 (Approx. USD 10)
2	Registration Fee	NPR 5,000 (Approx. USD 50)

Benefits of Registration of Foreign Trademarks in Nepal

Protection Against Counterfeiting

With a registered trademark, you have the legal right to prevent others from copying or counterfeiting your products, ensuring that your business interests are protected in Nepal.

Exclusive Use of Your Trademark

By registering your trademark, you gain exclusive rights to use it in Nepal. This means no one else can use your brand name, logo, or slogan in a way that could confuse the market.

International Protection

If your trademark is registered under international systems like the Madrid Protocol, it can simplify the process of registering the same trademark in other countries, making global brand protection easier.

Classification of Products and Services for Trademark Registration

1.     The Government of Nepal may classify products or services for trademark registration under section 18A of the PDTA by publishing a notification in the Nepal Gazette. However, the Nepalese government has not published a distinct classification.

2.     In practice, trademark registration applications are submitted using the Nice Agreement 1957 classification system, which categorizes 35 types of commodities and 11 classes of services.

3.     Section 18A (2) of the PDTA requires a separate application and payment of separate government fees for trademark registration in each class.

The Nice Agreement of 1957 divides trademarks into different groups in Nepal – 35 groups for various goods and 11 groups for different services. If you’re registering a trademark in Nepal, you need to know which of these groups (or “classes”) your product or service belongs to.

Trademark Opposition Process in Nepal

The trademark opposition process in Nepal is governed by the Patent, Design, and Trademark Act, 2022 (B.S.). Any individual or entity can file an opposition to a trademark application by submitting a formal request to the Department of Industries (DOI). This legal mechanism allows concerned parties to challenge a trademark before it is officially registered.

Legal Grounds for Opposition

Under Section 18 of the Act, a trademark may be opposed on the following grounds:

·       It is descriptive or lacks distinctiveness.

·       It is misleading or deceptive in nature.

·       It is identical or confusingly similar to an already registered mark.

·       It is detrimental to the reputation of a person or organization.

·       It violates public morality or ethical norms.

·       It is harmful to national interest.

·       It is contrary to public order.

Step-by-Step Trademark Opposition Procedure

Publication of Trademark

·       After examining a trademark application, the DOI publishes it in the Industrial Property Bulletin for public scrutiny.

Filing a Notice of Opposition

·       Any concerned party can file a notice of opposition after publication.

·       Must be filed in accordance with Section 18(1) of the Act.

·       The notice must:

·       Be in the prescribed format.

·       Be submitted to the DOI.

·       Include the prescribed government fee.

·       Clearly state the grounds of opposition, supported by evidence.

Timeframe for Opposition

·       The opposition notice must be filed within 90 days from the date the trademark is published in the Industrial Property Bulletin.

·       No extension is permitted beyond this deadline.

Counter Statement by Applicant

·       Upon receipt of the opposition notice, the DOI forwards it to the applicant.

·       The applicant must file a counter statement within 21 days of receiving the notice.

·       The response should include:

·       Rebuttals to the claims made in the opposition.

·       Supporting documentation or evidence, if any.

Hearing

·       A formal hearing is conducted by the DOI.

·       Both parties—the opposer and the applicant—are allowed to present their arguments and submit evidence.

·       The Director General of the DOI reviews the submissions and delivers a final decision. 

Conclusion

Foreign trademark registration in Nepal is a crucial step for any business looking to protect its intellectual property and expand in the Nepali market. By following the correct procedures and ensuring all documents are in place, you can secure legal protection for your brand and prevent unauthorized use. 

FAQ’s:

How long does it take to register a foreign trademark in Nepal?

Trademark registration in Nepal typically takes between 3 to 4 months. This includes the time for examination, opposition, and approval. Delays can occur if there are objections during the opposition period.

Can I register a trademark in Nepal if I’m not a Nepali citizen?

Yes, foreigners can register a trademark in Nepal. You just need to have a legal presence in the country or appoint a local representative to handle the process on your behalf.

What is the validity period of a registered trademark in Nepal?

The validity of a registered trademark in Nepal is 7 years from the date of registration. You can renew the trademark for additional 7-year periods indefinitely as long as you continue using it.

What are the requirements for filing a foreign trademark application in Nepal?

To file a foreign trademark in Nepal, you need to submit the application with required documents, including a representation of the trademark and business registration documents. If applicable, provide a priority document to claim an earlier filing date.

How can I prevent my trademark from being infringed in Nepal?

Registering your trademark in Nepal and monitoring its usage are the most effective ways to prevent infringement. If your trademark is misused, you can take legal action through the Department of Industry.