Trademark registration plays a crucial role in protecting brand identity and commercial goodwill. In Nepal, the legal framework governing the registration and protection of trademarks is provided by the Patent, Design and Trademark Act, 2022 B.S. (hereafter referred to as the PDT Act, 2022). The Act, enacted on 2022 B.S. (1965 A.D.), outlines the procedures, rights, and obligations related to the registration and enforcement of trademarks. The Department of Industry (DOI), operating under the Ministry of Industry, Commerce and Supplies, has the official authority for the registration and management of trademarks in Nepal.
What is a Trademark?
A trademark is any distinctive word, symbol, logo, design, picture, slogan, or combination thereof used to identify and distinguish goods or services of one business from those of others. Trademarks help consumers recognize the source and quality of products or services.
Nepal is a signatory to several international treaties and agreements related to the protection of trademarks:
- Paris Convention for the Protection of Industrial Property, 1883– Ensures protection of industrial property (including trademarks) across member countries and provides rights of priority. (Accession date: March 22, 2001)
- World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1994– Sets minimum standards for the protection and enforcement of intellectual property rights, including trademarks. (Ratification date: April 23, 2004)
- Convention Establishing World Intellectual Property Organization (WIPO Convention), 1967 (Accession date: November 4, 1996)
Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, 1957 (applied in practice, though not formally acceded) Nepal follows the Nice Classification system for trademark registration purposes.
These treaties strengthen Nepal’s commitment to the global standards of trademark protection, enabling Nepalese businesses to seek protection abroad and allowing foreign trademarks to be recognized in Nepal under the principle of reciprocity.
Registration Process
- Step 1: Eligibility for Registration
Any individual, firm, or company using or intending to use a mark in connection with goods or services can apply for trademark registration. However, the trademark must:
- Be distinctive in nature,
- Not be identical or deceptively similar to existing registered trademarks,
- Not be contrary to public morality or order,
- Not be misleading in terms of nature, quality, or geographical origin.
- Step 2: Application Procedure
An application including application fee of NPR 1,000/- for trademark registration must be submitted to the Department of Industry under Ministry of Industry, Commerce and Supplies in a prescribed format. The application must include:
- Application (Applicant’s name and address, representation of trademark, class of goods/services as per NICE Classification, proof of use or intention to use) of trademark registration (1 set original)
- Label of Trademark to be registered (4 color print sets)
- Power of Attorney (1 original)
- Certificate of Registration of Proprietor Firm or Company
- Tax Registration Certificate (1 set)
- Letter of completion of Annual Compliance
- Tax Clearance Certificate of the last fiscal year
- Payment voucher showing payment of registration fee
- Copy of PAN/VAT registration certificate, Citizenship
- Industrial Registration Certificate or License from Concerned Authority (1 set)
- Step 3: Examination by Department of Industry (DOI)
Upon receiving the application, the Department of Industry (DOI):
- Conducts apreliminary examination (check uniqueness, possibility of deceptiveness, whether the proposed trademark is similar to already registered trademark or contradicts with prevailing law),
- Publishes the trademark in the Industrial Property Bulletin for opposition,
- Allows 90 days for any third party to file opposition.
- Step 4: Registration and Validity
If no opposition is received or the opposition is resolved in the applicant’s favor, the Department registers trademark and issues a Certificate of Registration. The registration fee of NPR 5,000/- must be paid by the applicant. Trademarks must be used within one year from the date of registration.
- The trademark is valid for 7 years from the date of registration.
- It is renewable (renew within the period of 35 days from the date of expiry) for consecutive periods of 7 years upon payment of prescribed fee of NPR 500.
- Renewal may be made by paying a fine of NPR 1000 within six months after the date of expiry. Failure to renew within such timeframe leads to automatic cancellation of the trademarks.
Application Registration and Renewal Fees in respect to Trademarks:
| S. No. | Details of Fees | Fee (NPR) |
| 1 | Application Registration fee | 1,000/- |
| 2 | Application Amendment fee | 500/- |
| 3 | Registration fee | 5,000/- |
| 4 | Transfer fee | 2,000/- |
| 5 | Endorsement fees for amendment on record and certification except transfer | 1,000/- |
| 6 | Fees for the information of registration details | 500/- |
| 7 | Fees for complain and objection | 1,000/- |
| 8 | Fees for the copy of the registration certificate | 2,000/- |
| 9 | Renewal fee (Annual rate) | 500/- |
Registration of Foreign Trademarks
The DOI may register foreign trademarks without further inquiry if the application includes valid foreign registration certificates, and will extend protection under the Paris Convention for the Protection of Industrial Property (1883) to the trademark holder.
Rights of a Trademark Owner
A registered trademark owner has:
- The exclusive right to use the mark in relation to the registered goods/services,
- The right to sue for infringement and claim damages,
- The right to assign or license the trademark.
Ground of Refusal of Trademark Registration
The Act prohibits registration of marks that:
- Offend public morality or religious sentiments,
- Are identical or confusingly similar to existing trademarks,
- Mislead as to the origin, quality, or character of goods/services,
- Use names or flags of foreign nations or international organizations without consent.
A registered trademark may be cancelled if:
- It is found to have been registered in bad faith,
- It remains unused for more than one year,
- It is proved to be non-distinctive or misleading.
Infringement and Penalties
Any unauthorized use of a registered trademark constitutes infringement. The Act provides criminal remedies, including:
- Fine not exceeding 1,00,000/-
- Confiscation of infringing goods and articles
Conclusion
Trademark registration in Nepal is a well-structured legal process governed by the PDT Act, 2022. Entrepreneurs, businesses, and innovators are encouraged to register their trademarks to secure their brand identity and prevent misuse by others. The protection and legal rights offered by a registered trademark are vital assets in today’s competitive market.