In Nepal, the Patent, Design, and Trademark Act, 1965, forms the legal basis of trademark registration and protection. After finalizing the mark to apply with, the first important and mandatory step to attain the rights of a registered trademark is to file the trademark application/mark with the Nepal trademark office.
Trademark applications can be filed by any of the following:
- Ordinary Applications: Applications filed without claiming any priority.
- Convention Applications: Applications filed with claiming priority within six months of filing a trademark application in any 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.
PRIORITY: Nepal is a signatory to Paris convention international treaty. Accordingly, if an applicant has filed an application earlier in any Paris convention signatory country, then the applicant can benefit/claim the filing date of the earlier filed application to the application filed in Nepal. This can be done within six months of filing of the home country application.
Classification Of Goods and Services
There are 45 classes, 1-34 contains goods and the remaining 35-45 are listed under services.
- Government of Nepal, for the purpose of registration of trademark relating to any goods and any types of services may classify such goods and services.
- International Classification of Goods and Services for the purpose of the registration of Marks (Nice Classification) is applied to this effect.
- Word mark
- Device mark
- Well-known marks.
- Collective marks
- Service marks
- Generic terms
- flags or symbols of states, nations, regions or international organizations
- non-distinctive trademarks, absent a showing of acquired distinctiveness
- Geographical indications (GIs)
- marks contrary to moral standards or public order
Marks and Requirements
- Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other colour combinations.
- Retail services are registrable provided that the nature of the retail services is clearly identified.
- No guidelines or regulations related to registration of a combination of colours as a trademark. However, this can be applied for a device mark as a departmental practice of NIPO.
Protection of trademark rights
In Nepal, trademark can be protected on the basis of its registration. An applicant/owner/individual cannot claim trademark right on the basis of use within its territory. Full trademark protection is properly secured only by registration. The creation of trademark rights under Nepal Law is ‘first to file within the jurisdiction’. Also, it is possible to file an intent-to-use trademark application in Nepal.
Documents Required for Trademark Filing in Nepal
The list of documents to be provided will be as follows:
- A Power of Attorney signed by the applicant sealed and attested by two witnesses with notarization.
- Copy of registration or license of the business for product or service in which trademark is used or intend to use.
- Four copies of model of trademark.
- Authorizations letter if somebody has been authorized to act on behalf of the owner to register the trademark.
- If the applicant is a foreigner, certified copy of any foreign registration certificate and address for service in Nepal must be submitted with application.
- priority claim, where priority of an earlier application is claimed.
- Registration of foreign trademarks in Nepal is to the extent of the foreign registration of such marks. For registration of marks belonging to foreign entities, the applicant must submit a certified or notarized copy of a valid trademark registration certificate for the same mark in the same class in the name of the applicant, either from the client’s own jurisdiction or from any foreign jurisdiction.
- It is not necessary for an applicant to provide a local address if not domiciled in Nepal.
- Only national registration is available as Nepal is not a member to Madrid Agreement or Madrid protocol and European Union trademark registration.
- Either actual use or intent to use is required for application.
It usually takes 2-3 working days to complete the trademark filing process post receiving the required documents from an applicant.
Who can file the application?
A natural person, a body incorporate, a trust, a society, or joint applicants (even if not a citizen of Nepal).
A trademark representative/agent, even if not a citizen of or domiciled in the jurisdiction (A foreign citizen may act as a representative or agent but NOT as an attorney in Nepal.)
Process to File a Trademark application
Filing: An applicant can file a trademark application at the Trademarks Registry, Kathmandu in the prescribed form with payment of requisite fee.
Examination: After an application is filed then the application is examined by the Registrar in respect of –
- formalities: i.e., for compliance with the filing requirements.
- classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application.
- distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations.
- conflict with prior registration, prior-filed application or earlier unregistered rights resulting from an official search.
- If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another.
The Registrar may accept or refuse the application subject with the above grounds. If refused, then the applicant must file a response against the issued refusal else the application stands abandoned.
Publication: After acceptance of the response or the application by the Registrar, the application is published/advertised in trademark journals. Any person can file a notice of opposition against the registration of the mark due to conflict of similarity among their mark and the published mark within 35 days of such publication.
In case, a notice of opposition is filed against the registration of the mark then the applicant must file a counterstatement against the notice of application, else the application is discarded.
Registration: The application proceeds for registration where no opposition is filed against the mark or the decision was in favor of the applicant at the publication stage. The Department register the trademark in the name of applicant and issue a certificate.
As a result, the trademark application gets registered in the books of Nepal trademark office. Usually, the process of obtaining registration in Nepal takes 12 to 15 months in a straightforward case.