Overview of trademark system in Nepal

Types of trademarks that can be registered

Types of trademarks that can be registered in Nepal: Examples include characters (marks), figures/logos, symbols, three-dimensional shapes, color combinations, and combinations thereof. Both product trademarks and service marks are subject to protection, and correspond to Classes 1 to 34 (Goods) and Classes 35 to 45 (Services) of the International Classification (Nice Classification). Nepal has adopted the Nice Classification, and when filing an application, the designated goods and services are listed for each category based on these classifications. Only one classification of one trademark is allowed in one application; multi-class applications are not allowed.

Trademarks that cannot be registered: General reasons for refusal of registration include the name of another person, general names/descriptive marks, national flags/emblems of countries/emblems of international organizations, marks without distinctiveness, marks that violate public order and morals, marks that may cause misunderstanding, and geographical indications. Additionally, under current law, non-traditional trademarks such as sound trademarks and scent trademarks are not eligible for protection and cannot be registered. Note that 3D trademarks (trademarks consisting of three-dimensional shapes) can be registered, and a system for standard character trademarks that does not specify fonts, etc. has also been introduced for characters.

(Systematic limitations under current law) The current Patent, Design, and Trademark Law does not have provisions regarding collective trademarks and certification trademarks, and these systems do not exist. In addition, it has been pointed out that there are no clear protection provisions under current law for well-known and famous foreign trademarks if they are unregistered, and there are cases in which protection cannot be extended if the trademark has already been registered by someone else (the new bill plans to establish new protection provisions for well-known trademarks).

Required time: The time required from application to issuance of a registration certificate varies depending on the examination status and whether or not there is an opposition, but in a successful case, it is approximately 12 to 18 months. In practice, it usually takes a few days for the application to be notified of acceptance, several months for the examination to be completed, and a public notice/opposition period (about 3 to 4 months), and if there are no problems, the application can be registered in about a year. However, if an objection or issue arises during review, it will take more time.

Required documents, fees, and agent system for application

Required Documents: According to the notification issued by the Department of Industries in May 2023, the following documents should be submitted while filing a Nepal trademark:

• Application form (Follow the prescribed format to include applicant information, trademark, goods and services, etc.)

• Trademark Specimen (samples of the trademark you submit)4 – Four clear specimens of the trademark must be attached to the application.

• Certificate of Home Registration or Priority Document (original or notarized copy) – If the applicant is a foreign corporation or individual, the applicant must provide proof that the trademark is registered in the home country or in another country (original or notarized copy of the registration certificate). When making a priority claim under the Paris Convention, submit the original or notarized copy of the priority certificate.

• Power of Attorney – Power of attorney to delegate application procedures to an agent. Submit the original or a notarized copy. In addition to the applicant's signature and seal, the power of attorney requires the signatures of two witnesses and must be authenticated by a notary public.

In addition, for applicants in Nepal, a copy of the business registration certificate may be requested, but basically the above documents are required. In addition, it is generally recommended that foreign language documents be accompanied by a Nepali translation (the official language is Nepali).

Fees: Appropriate government fees apply for trademark applications. The main official costs are as follows (1 Nepali rupee ≒ 0.9 yen):

• Application fee: 2,000 Nepali Rupees (payable at the time of application submission)

• Registration fee: 5,000 Nepali Rupees (paid after registration assessment and before certificate issuance)

• Opposition fee: 1,000 Nepali Rupees (required when opposing another person's published trademark)

• Registration certificate copy issuance fee: 1,000 Nepali Rupees

• Renewal fee: 500 Nepali Rupees (to be paid within the period mentioned below at the time of renewal)

*The above fees are government expenses, and additional agent fees will be incurred during the actual procedure.

Agent system: In Nepal, when a foreign company or a foreign resident files a trademark application, it is common for the procedure to be carried out through an agent who has an address in Nepal. However, legally speaking, even if the applicant does not have a domicile (location) in Nepal, it is not necessary to provide a local address, and there is no prohibition on a foreigner acting as a representative. However, in practice, it is customary to entrust the matter to a local intellectual property lawyer or agent from a linguistic and procedural perspective. It is recommended to appoint a local representative to facilitate communication with the Department of Industry, preparation of documents to be submitted, translation into Nepali, and receipt of official notifications addressed to the local address. The presence of a local representative is also essential in cases where Paris priority is claimed or litigation occurs locally.

Relief systems such as opposition system, cancellation/invalidity trial system

Opposition: Once a trademark application is published in the Official Gazette, any third party with an interest in the registration of the trademark may file an opposition within 35 days from the date of publication. The period for filing an opposition is relatively short, approximately one month after publication (*scheduled to be extended to 90 days after the new law comes into effect). If an opposition is filed, the applicant must defend its trademark by filing a counter statement within a certain period of time. The Industrial Bureau will make a decision taking into account the arguments of both the petitioner and the applicant, and if the objection is accepted, the trademark application will be refused registration. If the opposition is rejected, the application will proceed to the registration procedure. A party dissatisfied with the objection decision may appeal to the court within 35 days of notification of the decision.

Cancellation/invalidity of trademark registration: Nepal has the following cancellation system for registered trademarks.

• Cancellation of non-use: If a trademark is not used in Nepal within one year of registration, the Department of Industries may cancel the trademark registration ex officio after conducting necessary investigations. This is based on the provisions of Article 18C of the Patent, Design, and Trademark Act, and is characterized by the fact that it requires prompt use after registration (it is subject to cancellation after one year of continuous non-use). Before cancellation, the trademark owner will be given an opportunity to explain the reasons for avoiding cancellation.

• Invalidation of registration (cancellation ex officio): Even after registration, if the trademark is found to fall under the grounds for non-registration stipulated in Article 18(1) of the Act, the Industrial Bureau may **cancel (invalidate) the trademark registration ex officio**. This is based on the provisions of Article 18(3), and may be invoked if, for example, it becomes clear after registration that the trademark conflicts with another person's well-known trademark, or if it violates public order and morals. However, in this case as well, the trademark is not immediately revoked, but it is stipulated that the trademark owner must be given an opportunity to express their opinion prior to revocation.

In addition to the above, if a registered trademark has been fraudulently applied for or registered by another person, an interested party can also file a lawsuit in court to invalidate the registration. It is also permitted for the trademark owner to abandon (cancel) the registration themselves. In either case, if you are dissatisfied with the judgment of the first instance, you have the option of appealing to a higher court and ultimately to the Supreme Court.

Protection period and renewal procedure after registration

As mentioned above, the term of trademark rights in Nepal is 7 years from the date of registration. After the expiration of the term, trademark rights can be maintained by renewing them every 7 years. There is no limit to the number of times that the validity of a trademark right can be extended by renewal, and there is no upper limit to the number of times a trademark can be renewed.

Renewal Procedure: Trademark owners are required to apply for renewal and pay the prescribed renewal fee (Rs. 500) within 35 days from the date of expiration of the term of registration. This is a procedure stipulated in Article 23B of the Patent, Design, and Trademark Act, and the normal renewal period is within 35 days after the expiration date (*Current practice does not allow renewal procedures before the expiration date). Even if you are unable to renew within this period, there is a late renewal period within 6 months, and you can renew by paying an extension fee of 1,000 rupees (the rights will be canceled after 6 months). At the time of renewal, a prescribed renewal application form (Form 2(d), etc.) is submitted to the Industrial Bureau, and procedures for adding annotations to the registration certificate are carried out. Although a new registration certificate will not be issued for a renewed trademark, it will continue to remain a valid trademark on the registry.

Status of membership in international systems and responses

Affiliation to international treaties: Nepal acceded to the Paris Convention (Paris Convention for the Protection of Industrial Property) in March 2001 and is one of the allies of the Paris Convention. Therefore, apriority claim system is available under the Paris Convention, and by filing an application in Nepal within six months of the filing date in another country, you can claim priority based on the earlier foreign filing date. In April 2004, we joined the World Trade Organization (WTO) and are fulfilling our obligations under the TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property). Additionally, Nepal joined the Berne Convention (Copyright) in 2006 and is a member of the World Intellectual Property Organization (WIPO).

Response to the Madrid Protocol: At present, Nepal is not a member of theMadrid Protocol (International Trademark Application System). Therefore, it is not possible to file an international application using the Madrid system with Nepal as a designated country, and to obtain trademark rights in Nepal, it is necessary to directly file a domestic application in Nepal. Similarly, the European Union trademark system of EUIPO (European Union Intellectual Property Office) and other regional harmonized trademark systems do not apply to Nepal.

The Nepali government is considering joining the Madrid Protocol in the future in order to achieve international harmonization of intellectual property protection, but as of 2025 this has not yet materialized. Although there is no direct reference to the Madrid System in the new industrial property bill, it is expected that the barriers to membership will be lowered as the domestic system is developed. Nepal has also practically adopted international trademark classifications such as Nice Classification and Vienna Classification (graphical classification) and applies them to application documents. Although we do not participate in international trademark examination cooperation (TM5, ASEAN Trademark System, etc.), we actively participate in various WIPO training and cooperation programs.

Countermeasures and enforcement system for trademark infringement

Civil Remedies and Enforcement: Remedies for trademark infringement in Nepal are primarily sought through civil (administrative) proceedings. Under the Patents, Designs, and Trademarks Act, the first place for trademark infringement disputes lies with theDepartment of Industry (DOI), not the courts. A trademark right holder submits a petition to the Industrial Bureau requesting relief such as an injunction against the infringer's infringing acts and compensation for damages, and the Industrial Bureau makes a decision after investigating the facts. The Bureau of Industry has the power to issueinjunctions, the award of damages, and the search and seizure of infringing goods. The Industrial Bureau thus plays aquasi-judicial roleand acts as a court of first instance in infringement proceedings. Parties who are dissatisfied with the decision of the Industrial Bureau can appeal to the High Court (appellate court) and then to the Supreme Court.

• Time limit for filing a lawsuit: If you are seeking relief for trademark infringement, you must file a complaint with the Industrial Bureau within three months from the date you become aware of the infringement. If this deadline is exceeded, there is a risk that a claim for relief may not be recognized due to the statute of limitations. Therefore, it is important to promptly collect evidence and file a complaint with the Industrial Bureau through a local representative if infringement is detected.

• Requirements: A valid registered trademark is a prerequisite for civil remedies. Regarding unregistered trademarks in Nepal, it is theoretically possible to seek relief from the court based on passing-off (acts of unfair competition) as mentioned above, but it is difficult to prove and there are very few success stories.

Criminal penalties: In Nepal, trademark infringement is not subject to criminal penalties. In other words, direct criminal prosecution such as police arrest and prosecution for trademark infringement itself is not carried out, and trademark infringement is treated as a matter of civil dispute (*Copyright infringement can be investigated by the police, and criminal penalties are also stipulated). However, Article 19 of the Patents, Designs, and Trademarks Act provides for penalties of up to 100,000 Nepali rupees and confiscation of the violating goods in the event of violation of an order issued by the Industrial Bureau, and it is possible to impose a fine as an administrative penalty on trademark infringers. The new bill also significantly increases the cap on fines for malicious trademark infringement (up to 1 million rupees) and includes provisions to increase deterrence.

Enforcement system: In addition to civil injunctions and claims for damages, the following methods exist as countermeasures against products that infringe on trademark rights.

• Customs Border Enforcement: Nepal's Customs Act and Export/Import Control Act have provisions to prohibit the import and export of goods that infringe on intellectual property rights. Trademark owners can apply to customs authorities to suspend the import of counterfeit products that use their registered trademarks without permission. At that time, if you submit a complaint along with the necessary documents such as trademark registration certificate and invoice, customs will detain or seize the goods. Although the law does not specify a specific deadline for filing an application, it is important to act quickly before infringing goods cross the border. The Export and Import Control Act stipulates that the government can prohibit or restrict the import and export of specific goods for the purpose of protecting intellectual property, and it is possible to stop the distribution of infringing goods at administrative discretion if necessary.

• Police investigation (limited): Trademark infringement itself is not a criminal case, but if the act of infringement falls under other crimes (for example, fraud or violation of the Unfair Competition Prevention Act), or if it occurs concurrently with other intellectual property crimes such as copyright infringement, the police may launch an investigation. Additionally, from around 2022, it has been reported that a new law will be enacted to strengthen enforcement, as it has been pointed out that there will be an increase in cases of counterfeit foreign brands appearing on the market, hindering foreign investment. As part of this effort, we are considering strengthening the detection of particularly malicious counterfeit products in cooperation with the police and customs.

• Other remedies: In addition to civil lawsuits, trademark owners can also file claims for unjust enrichment and damages based on torts against infringers. In addition, in some cases, we cooperate with industry organizations and international brand protection organizations to monitor the market and lobby government authorities to stop the distribution of counterfeit products. Nepal has been focusing on raising awareness of intellectual property in recent years, and in 2017, it formulated an intellectual property policy and made strengthening IP protection a national priority. It is expected that, in conjunction with the enforcement of the new law, the response to trademark infringement will be further enhanced in the future.

[References]Official website of Nepal Bureau of Industry (Intellectual Property Department), WIPO "WIPO Lex" (Nepal laws and treaties information), Japan External Trade Organization (JETRO) "Intellectual property rights system in India's surrounding countries (Nepal edition)", Japan Patent Office/JETRO overseas survey report, INTA Bulletin, Apex Law Chamber field report, various news releases, etc.