The Registration of Foreign Trademarks in Nepal can be a confusing and difficult process at times. Various rules, regulations, and authorities govern foreign trademark registration and can take months for the processes to be complete and for validation to initiate.
In this article, everything you need to know as a foreign Trademark registered in Nepal has been covered with details on the laws governing Foreign Trademarks, the complete procedures for registering the trademark, and the required documents for registering a Trademark in Nepal. In short, this Article shall act as a complete guide on the Registration of Foreign Trademarks in Nepal.
Laws Governing Foreign Trademarks in Nepal
The Patent, Design, and Trademark Act, of 1965 is the governing legislation in Nepal for Trademark. Under section 21(a), this act clearly states that for foreign trade to have protection in Nepal, it must be registered there. So, just having a trademark from another country won’t extend its protection to Nepal.
Even though Nepal is a member of the Paris Convention for the Protection of Industrial Properties 1886, it doesn’t directly address the safety of “well-known trademarks.” Therefore, anyone who wants to protect their foreign trademark must register it with Nepal’s Department of Industry (DOI).
The Registration Authority
The Department of Industry (DOI), under the Ministry of Industry, Commerce and Supplies, handles trademark registration in Nepal. They not only register trademarks but also administer them, ensuring that businesses can protect their brand identity effectively.
Registration of Foreign Trademarks in Nepal – Complete Process
The process of Registration of Foreign Trademarks in Nepal is Systematic and follows a defined path:
- Submission of Application: Begin with submitting your application to the DOI. This is the foundational step where you express your intent to register your trademark in Nepal.
- Preliminary Examination by DOI: The DOI then conducts a thorough examination to ascertain if the proposed trademark is already registered or if it goes against any prevailing laws.
- Publication in the Industrial Property Bulletin: Once cleared by the DOI, the trademark is then published in the Industrial Property Bulletin, which is generally issued every three months
- Final Registration: If no third party raises an opposition within 90 days of publication, the trademark gets registered.
Required Documents for Trademark Registration in Nepal
- Home/Foreign Registration Certificate: This serves as evidence of your trademark’s registration in its home country.
- Label of the Trademark: Four colored prints are needed for the registration process.
- Application of Registration of Foreign Trademarks: This documents your intent to register your trademark in Nepal.
- Power of Attorney: This gives authority to a local person in Nepal to file the trademark application on your behalf.
Remember, if you’ve applied for a trademark registration in a foreign country, this application can be used to claim priority for up to six months as per the Paris Convention’s provisions.
Classification of Trademark in Nepal
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.
Cost of Trademark Registration in Nepal
The application fee for trademark registration is NPR 1,000 (Approx. USD 10), while the registration fee is NPR 5,000 (Approx. USD 50). Once registered, a trademark remains valid for seven years from its registration date. However, it’s essential to remember to renew the trademark every seven years for continued Protection of your trade secrets.
Grounds for Rejection of Trademark Registration
In Nepal, the Department of Industry (DOI) holds the authority to either accept or refuse a trademark application. Their decision is based on various criteria outlined in the country’s laws, specifically under section 18(1) of the Patent, Design, and Trademark Act (PDTA).
- Prior Registration: If a trademark is found to have already been registered under someone else’s name, the DOI can refuse the new application. Essentially, this means no two entities can hold the same trademark.
- Damaging Goodwill: The integrity and trust associated with a trademark are of prime importance. If a proposed trademark is perceived to harm the goodwill of another’s trademark, it can be a ground for refusal.
- Harming Reputation: A trademark that might tarnish the reputation of any individual or institution is also not allowed. This ensures that trademarks can’t be misused to degrade someone else’s standing in the community.
- Affecting Public Conduct or Morality: Trademarks play a vital role in public perception. If a proposed trademark goes against societal values or public morals, or jeopardizes the nation’s interest, the DOI can turn down the application.
Foreign trademark registration in Nepal requires a thorough understanding of the process, necessary documentation, and legal grounds. As Trademark has become the Unique Selling Point of modern businesses, Foreign Trademarks are liable to be vulnerable in new markets such as that of Nepal and require a trusted law firm by your side.