The law relating to trademarks of Nepal is governed by the Patent, Design and Trademark Act 1965.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition (i.e., if the respective trademark proves to be famous or well known).
Nice classification, 9th edition
Registrable as trademarks are all distinctive words, symbols, pictures or a combination thereof.
The following trademark types are registrable: trade marks and service marks. Collective marks registered under the Nice classification in a foreign country can also be registrable.
The application is filed at the Department of Industry.
A separate application has to be filed for each class.
Foreign applicants need a local agent.
A power of attorney is necessary, but it does not have to be notarised.
Foreign applicants need a domestic registration to register a trademark in Nepal. In this case, a notarised copy of any foreign registration certificate and an address for service in Nepal must be submitted with the application. If the certificate has been issued in a language other than English (for example in Chinese or French language) it should be accompanied by English translation certified by Notary Public.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration is approx. 5 months. The first office action is taken after approx. 1 month.
After examination, the trademark application is published in the monthly official Industrial Property Bulletin for opposition claim.
The opposition period is 90 days from the date of publication in the official bulletin.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 7 years from the date of registration. The registration is renewable for periods of 7 years each.
The grace period for renewals is 6 months from the expiration date of the trademark.
According to the IP act, a trademark is vulnerable to cancellation upon request of any interested party, if it has not been used for a period of one year after its registration. However, in practice there is no prior case for a non-used trademark cancelled on this basis. Most of the foreign trademarks are not in use in Nepal but they are protected and continually renewed. The Department of Industry has not established any proper mechanism to varify use and non-use. Therefore, it can currently be said that use is not required in Nepal.
Official application fee is 1,000.00 NPR (approx. EUR 9.00) for one class. Another 5,000.00 NPR (approx. EUR 46.00) are due for registration of the trademark.
Trademark Licence Agreement
In Nepal a licence agreement has to be in writing. Licensing of unregistered marks is not permitted. A trademark may be licensed for some or all of the goods or services covered. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of licensing.
There are provisions in law for the mandatory recordal of the licensee but no time frame for a recordal. There is no prescribed form or content for the validity of a licence agreement.
The following documents are required for a recordal:
1. A power of attorney simply signed by the licensee and the licensor, sealed and attested to by two witnesses
2. An application form executed as above (no need to notarise)
3. A certified copy of the deed of the licence along with an authenticated translation into English, certified by a notary public
4. The original Nepalese trademark registration certificate
The licence becomes effective and enforceable against third parties after the recordal with the Trademark and Patent Office of Nepal. The licence is not required to be published.
There is no evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. The registered user is entitled to call upon the registered proprietor to institute trademark infringement proceedings. He can also institute proceedings in his own name if the proprietor refuses or neglects to do so. The licensee must cite the proprietor as co-defendant in any such procee.
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