Foreign Trademark Registration in Nepal

10 March 2019

(Intellectual Property Lawyers in Nepal)

Trademark registration in Nepal is governed by Patent, Design and Trademark Act, 1965 (2022) (“PDTA”).  This articles covers the process of foreign trademark registration in Nepal.

1. What is the legal ground for the foreign trademark in Nepal?

A foreign trademark to get protection must be compulsorily registered in Nepal. Section 21A of the PDTA provides that unless a foreign trademark is registered in Nepal, such trademark cannot receive protection in Nepal.

Despite Nepal being the member state of the Paris Convention for the Protection of the Industrial Properties 1886 (the “Paris Convention”), the PDTA has not specifically provided for the protection of “well-known trademarks”. In view of this, registration with the DOI is necessary for the protection of foreign trademarks including foreign well-known trademarks.

2. What is the competent authority to register the foreign trademark ?

Department of Industry (“DOI”) under the Ministry of Industry, Commerce and Supplies of Government of Nepal (web-link: http://www.doind.gov.np/) registers and administers trademarks in Nepal.

3. What is the procedure of foreign trademark registration in Nepal?

The below mentioned table explain the procedure of foreign trademark registration in Nepal: 

Steps           Process Remarks
Step 1    Submission of Application for Registration
before DOI 
 
Step 2    Preliminary Examination by DOI DOI will check whether the proposed trademark is (a) similar to already                   registered trademark or (b) contradicts with the prevailing law.
Step 3    Publication of Trademark in Industrial
Property Bulletin (IP Bulletin”).
Generally, IP Bulletin is published by DOI in every 3 months.
Step 4    Registration of trademark if opposition is      not received by any third party.  Petition for opposition against applied trademark can be filed within 90 days of        publication in the IP Bulletin. 

4. What is the main document required for foreign trademark registration? 

Foreign trademarks cannot be independently registered. Home/Foreign trademark registration certificate must be submitted to DOI for registration.

If a trademark has been applied for registration in any foreign country, then based on such application, trademark registration application can be submitted to DOI. Such application can make priority claim up to 6 months as facility assured by the Paris Convention.

5. What are the documents that need to be submitted for registration?

Following documents need to be submitted before DOI for registration:

   S.N.       Documents No. of Copies  Notary Requirement
   1 Application of Registration of Foreign Trademark  1 set original  No
   2 Home/ Foreign Registration Certificate (HRC) 1 copy  Yes 
   3 Label of Trademark 4 copies (With color prints) No
   4 Power of Attorney  1 original No

6. Is there any ground of refusal of trademark registration ?

Under section 18(1) of PDTA, DOI can reject the trademark registration application on following grounds:

  1. In case such trade-mark is found to have already been registered in the name of another person; 
  2. In case such trademark damages goodwill of trademark of any person; 
  3. If such trademark damages the reputation of any person or institution; or
  4. If such trademark adversely affects public conduct or morality or undermines national interest

7. What is the time required for trademark registration?

Generally, it takes about 6 to 9 months to complete the process of trademark registration where no petition for opposition is filed.

8. Validity of registered trademark ?

A registered trademark remains valid for 7 years from the date of registration. However, trademark can be renewed for any number of times for a period of 7 years at a time.

9. On which basis trademark are classified in Nepal ?

Registration of Trademark is submitted on the basis of classification made by Nice Agreement 1957 which has categorized 35 classes of goods and 11 classes of services.

As a matter of practice, the applicant has to prepare a separate application and pay separate government fees for registration of trademark in different class.

10. How much government Fee is required for trademark registration?

   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)

Disclaimer: This article is for informational purposes only and shall not be construed as legal advice, advertisement, personal communication, solicitation or inducement of any sort from the firm or any of its members. The firm shall not be liable for consequences arising out of any action undertaken by any person relying on the information provided herein.

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