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Trademark Law in Nepal – Protection and Enforcement Guidelines

1. Description – Trademark and Service Mark

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Trademark Office.

2. Basic Facts of Trademark

Trademark is an important form of Industrial Property Rights. It plays a key role in a consumer economy. As in the case of other forms of Intellectual Property Rights, trademarks also exhibit the dialectics between public and private interests. As a source identifier, a trademark enables the consumers to identify the origin of the goods/services. The consumer thus gets the goods/services of his/her choice. On the other hand, the originator of the goods (for example the company that manufactures the goods) gets protection for the mark. Most national laws on trademarks are designed to balance this duality of interests. Further, the national laws define the legal rights of the owners of trademarks and prescribe the boundaries of such legal rights. Unregistered trademarks are protected under the principles of common law in many countries.

3. Registrable Marks

All marks are not registrable. For a Mark to be registrable, it must conform to certain statutory prescriptions. One such fundamental prescription is that a mark to be registrable must be “distinctive”. The quality of distinctiveness, distinctive character, or capable of distinguishing is a basic principle as stated in the national law. A word having a direct reference to the character or quality of goods is not registrable. However a word having direct reference to the character or quality of goods is registrable if it has acquired distinctiveness through long and continuous use. There are several other principles, all tested by a number of judicial decisions, elaborating the registrability of trademarks.

4. Paris Convention

Nepal is a member of the Paris Convention for the protection of Industrial Property as of 2001; hence an applicant can claim priority of up to six months as per the convention. The International Classification of Goods and Services for the purposes of the Registration of Marks consisting of 45 classes is followed in Nepal.

5. Priority Claim

Nepal ratified the Paris Convention in 2001. An application for registration of a trademark claiming convention priority can be filed within 6 months from the date of filing of the corresponding application in the respective jurisdiction. To claim priority, a certified copy of the convention application is required.