A trademark refers to a name, word, phrase, logo, symbol, design, image, or a combination of these elements showing the difference from goods or services of others to the goods and services by any firm, company or individual.
There is also a range of non-conventional trademarks comprising marks that do not fall into these standard categories, such as those based on colour, smell, or sound.
In Nepal, protection and enforcement of trademark are governed by the Patent, Design and Trademark Act, 1965 (PDTA). The Department of Industry (DOI) within the Ministry of Industry is the competent authority that registers and administers trademarks in Nepal.
Types of trademark
Trademarks in Nepal are designated by the following symbols:
- ™: For an unregistered trademark, 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
Procedures for trademark registration
The process for registering a trademark in Nepal is explained below:
Step 1: Submission of an application for registration of a trademark to the DoI
An application in a prescribed format shall be submitted to the DoI for registration, along with all required documents.
Step 2: Preliminary examination of the application by the DoI
After an application is submitted, 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.
Step 3: Publication of trademark in the Industrial Property Bulletin (IP Bulletin)
After conducting a preliminary examination, if the DoI finds the trademark consistent with the law, such a trademark will be published in an IP Bulletin.
Trademarks are published in the IP Bulletin so as to invite the public for filing an opposition for registration of the trademark. An opposition against the published trademark shall be filed within 90 days of publication in the IP Bulletin.
Step 4: Registration of the trademark
If there is no opposition filed, the DoI will register the trademark and issue the trademark registration certificate.
Generally, it takes about nine months to a year to complete the process of trademark registration and issuance of trademark registration certificate where no petition for an opposition is filed.
Following documents are required to file an application for the trademark registration in Nepal:
- An application in the prescribed format
- Certificate of registration of the proprietor of the trademark
- Tax registration certificate of the proprietor
- Label of trademark
- Power of attorney (POA)
Ground of refusal of an application for the trademark
Section 18(1) of the PDTA has mentioned the following grounds upon which an application for a trademark can be rejected:
- In case such trademark damages the reputation of any person or institution
- In case such trademark contradicts public conduct/morale or national interest
- In case such trademark damages goodwill of the trademark of any person
- In case such trademark is found to have already been registered in the name of another person
Validity of the registered trademark
As per section 18D of the PDTA, the trademark shall remain valid for seven years from the date of registration.
Further, Section 23B (1) of PDTA mentioned that the trademark shall be renewed within the period of 35 days from the date of expiry. In addition to that, Section 23 B (2) provides the right to renew the trademark by making a payment of a penalty of Rs 1,000 within six months from the expiry of the said 35 days’ period.
If the renew is not made within the given time, the registration will automatically get cancelled.