A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
Trademarks in Nepal may be 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)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks that do not fall into these standard categories, such as those based on color, smell, or sound. The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required.
The owner of a common-law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.
The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark.
Relevant Office
Department of Industries
Law in Force
Patent, Design and Trade Marks Act, 1965
Nice Classification
Yes (Ninth Edition)
Paris Convention
Yes
Madrid System
No
Multi-Class System
No
Documents required for filing a trademark application
Simply executed trademark application
Simply executed Power of Attorney
Certified Copy of Home Country Registration Certificate or certificate issued in any other country with duly authenticated English translation thereof
(The aforementioned documents can be filed at a later stage also)
Prosecution Process
Filing → Publication of mark in IP Bulletin → Opposition period (three months from the publication date) → Registration → Renewal
Registration Term
7 years from the date of registration
Renewal Term
7 years from the date of the previous registration
Appeal
Within 35 days of the decision of the hearing committee
Documents required for renewal
Original registration certificate
Cancellation Proceedings
A mark is vulnerable to a cancellation action by the Department of Industries suo moto or by a third party if it is not used within a period of one year from the date of registration.
Types of Trademark Searches
A trademark search in Nepal can be for both word and device marks. It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, the existence of prior identical/similar marks on the register, etc., so as to avoid any objection and opposition with respect to the mark. Although search is not mandatory for filing the application, it is advisable to conduct a preliminary search for the proposed trademark before filing the application in order to avoid any objection and opposition with respect to the mark later on.
Trademark searches in Nepal can be conducted for word marks, numerals, labels, and device marks. Device mark searches can be conducted through the Vienna code.
Trademark searches can be classified into the following categories:
Word Search
Trademark word search edition of Nepal follows the nice classification and trademark can be filed for goods in class 1-34 and services in class 35-45. Trademark searches in Nepal can be conducted for the desired class and associated classes.
It is advisable to conduct a comprehensive trademark clearance search in Nepal to ascertain the availability of the proposed mark and also to overcome any objection and opposition with respect to the mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Nepal.
Device Mark Search
It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures, etc., or a combination of marks containing device marks. A device mark search in Nepal can be conducted amongst the marks filed and registered as per the Vienna code classification.
Types of Trademark Applications
In Nepal Trademark applications can be filed in two categories:
Ordinary Trademark Applications
Ordinary trademark applications filed in Nepal are applications without claiming any priority. Ordinarily, a trademark in Nepal can be filed (single class application) only. It is pertinent to mention that multi-class trademark applications cannot be filed in Nepal. However, the Patent, Design, and Trademarks Act, 1965 also lays down provisions regarding the filing of priority applications, wherein the priority of the mark can be claimed in the said mark filed in a convention country.
Priority Trademark Applications in Nepal or Convention Trademark Applications
A priority trademark application should be filed in Nepal within six months after the date on which the trademark application was made in the 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.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of the grant, and protection of industrial property. Priority application can be filed in Nepal within six months after the date on which the application was made in the Convention Countries. The trademark shall, if registered under the Ordinance, be registered as of the date as which the application was made in the Convention Country, and that date shall be deemed for the purpose of the Ordinance to be the date of registration.
Classes of Trademarks
In Nepal, a trademark application can be filed in 45 classes. Classes 1 to 34 are for goods and classes 35 to 45 are for service marks.
Who can apply for a Trademark Application?
An application for registration of the trademark is to be filed with the Trademarks Registry in the prescribed form with payment of requisite fees, and any person who claims to be the proprietor of the trademark can file an application for the registration of its mark in respect to goods/services. It should be filed at the Trademarks Registry, Kathmandu.
Procedure for Filing a Trademark
The procedure for filing a Trademark in Nepal is as follows:
Filling of Trademark
A trademark application in Nepal can be filed for a single class only. Multi-class trademark applications cannot be filed in Nepal. Application for a Trademark or a Priority Trademark Application claiming priority from a convention country can also be filed in Nepal within six months from the priority date.
Notice of Refusal/ Acceptance
After an application is filed 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. A trademark application in Nepal can be refused/objected to by the Registrar.
Publication/Advertisement of a Trademark
After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trademarks Journal. An application is advertised in the Trademarks Journal so as to invite the public for filing an opposition against the registration of a mark.
The opposition of Published Trademark
On publication of the trademark in the Trademarks Journal, any person can oppose the registration of the said trademark by filing a notice of opposition within the prescribed period of 3 months from the date the Trademarks Journal is made available to the public.
Registration and Renewal of a Trademark
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is then registered for a period of 7 years from the date of filing of the application and the registration certificate is issued. The trademark can be renewed from time to time for an unlimited period by payment of renewal fees, failing which the mark becomes liable to be removed from the registry on account of non-renewal. Each renewal term is for a period of 7 years.
Trademark Opposition
Once a trademark is published in the 'TradeMarks Journal', any person can file an opposition against the registration of the said trademark in Nepal by filing a notice of opposition within the prescribed period of 3 months from the date the Trademarks Journal is made available to the public.
A trademark application can be opposed in Nepal under Section 18 of the Act. Once an opposition is filed against a trademark in Nepal, a copy of the notice of opposition so filed is served to the applicant by the Trademark Registry and the applicant is then required to file a counter statement within 21 days of receipt of the notice forwarded by the Registry, failing which the application shall be treated as abandoned. Thereafter the Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then a hearing is fixed in the matter.
Trademark Registration
To register a trademark in Nepal, after filing the application in the prescribed form and payment of relevant fee, the mark will then be examined, published, and eventually shall proceed to registration where there is no opposition against the said trademark or where the opposition against the said trademark was filed but was decided in favor of the applicant. The trademark will then be registered for a period of 7 years from the date of filing of the application in Nepal and the registration certificate will be issued. Once a trademark is registered in Nepal, then the insignia ® can be used with the mark.
The Patents, Designs, and Trademarks Act, 1965 also provides that if a registered trademark is not used for a continuous period of 01 years from the date of registration, then the same becomes vulnerable to cancellation action on grounds of non-use.
Renewal of Trademark
The procedure for filing a renewal for a trademark in Nepal is as follows:
Request to renew a trademark in Nepal can be filed within six months BEFORE THE EXPIRY of the registration/renewal term if accompanied by the requisite renewal fees on the prescribed form.
A trademark can be renewed in Nepal from time to time for an unlimited period upon payment of the renewal fees, failing which the mark becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 7 years.
Trademark Filing Fees
Details regarding the Trademark Filings fees can be accessed at the following link: Nepal Trademark Filing Fees
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A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks that do not fall into these standard categories, such as those based on color, smell, or sound. The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required.