Trademark protection and recognition are solely based on distinctiveness. The primary aim of a trademark is to differentiate goods and services from others, making them distinctive from other products and services.

Basic requirements to be a trademark:

• It must be a mark that is a brand, heading, ticket, name, or an abbreviation of a name, signature, word, letter, or numeral shape of goods, packing, or a combination of various shades of colors or any blend thereof.
• It must be capable of distinguishing the goods or services of one person or business from others.
• It must be used or offered to be used in relation to goods or services.
• The use must be of a printed nature or other visual or audio representation of the brand.

Trade marks can be divided into 2 classes:

Registered Trademark

A trademark that is registered under the concerned authority of  any state under its prescribed trademark law is commonly known as a registered trademark. Most of the countries in the world have extended their trademark protection only on the condition of registration. After due procedure and required legal guidance under concerned authority, a trademark obtains its shield of protection under the law of the country and can claim remedies in case there is infringement.

In the case of Nepal, the Patent Design and Trademark Act, 2022 B.S. (hereinafter referred to as PDTA), has duly mentioned the condition of registration to gain protection under patent design and trademark law. There are six major steps for the registration of a trademark:

1. Filing application for registration

An applicant willing to have trademark registration must duly submit an application to the DOI as prescribed by the PDTA in section 17 along with the prescribed application fee, which is Rs. 1000 per trademark per class. Fees are prescribed in Annex 3 of PDTA under Section 26(A) along with four sets of design\label\logo of the trademark if the mark is not a wordmark.

The application of registration of a trademark happens for two reasons, such as the following:

a. Local Applicant as per Procedural Manual Related to Service, 2001

b. Foreign Applicant: For a foreign applicant, the following documents must be duly submitted:

• Duly filled up application form.
• Home registration certificate (hereinafter called HRC) (should be notarized by a notary public pursuant to the law of the concerned foreign country).
• Letter of Priority Date, if possible.
• POA and Nepal Contact address.

2. Examination of the application

After receiving the application for registration of trademark, the Department of Industry (hereinafter called “DOI”) examines the application to determine whether it complies fully with the requirement under PDTA or not. Here, both substantive and preliminary examinations are conducted. DOI has prepared a checklist for this purpose. In the case of a foreign application, the checklist includes whether the application has been duly filled out; whether the required documents are submitted; whether there are elements having exclusive rights in the label/mark; whether labels have been submitted in the case of label trademarks; HRC, if any application filed or registered has the identical mark in the same class; and the correctness of the classification of goods and services. In case DOI finds that the application doesn’t meet the prescribed requirement, it informs the applicants and provides them with the opportunity to amend the same or can even ask for clarification. The DOI has the power to reject the application for the registration of a trademark. The DOI has even formed an advisory committee to discuss and suggest some critical issues in the course of trademark examination that are submitted by the examiner. However, there are certain grounds for refusal of the registration of a trademark under the Section 18(1) proviso clause of PDTA, which are

• If there seems to be any possibility that such trademark hampers the reputation of any person or institution,
• If there is contradiction to public order, public morale or national interests,
• If there is possibility of contradiction or hampering of the goodwill of someone else’s trademark,
• If such a trademark has already been registered in the DOI in the name of someone else.

3. Publication of IP Bulletin

When the applicant satisfies the requirement as mentioned in paragraphs  1 and 2 of the article, the DOI publishes the trademark in the IP bulletin for an opposition so that the interested party can oppose it, which is also mentioned in the trade-related aspect of the Intellectual Property Agreements, 1979 Article 6(1). Anyone can oppose the registration of a trademark by filing an opposition with the DOI along with the required evidence. As per PDTA 2022 sec. 18(1), the filing for the opposition period is 90 days from the publication in the IP bulletin.

4. Classification of Goods and services

The government of Nepal, for the purpose of registration of trademarks relating to any goods and any types of services, may classify such goods and services. Furthermore, the International Classification of Goods and Services for the purpose of the registration of marks (Nice Classification) is applied to this effect.

5. Opposition

If the opposition is filed by any person within 90 days as per Sec. 18, the process of the disputed trademark is put on hold until the DOI makes the necessary decision after the necessary investigation.

6. Registration

Once the application passes its way through the opposition, the DOI thus issues the certificate of registration to the applicant. Hence, registration is the prima facie evidence of ownership of a trademark. After a trademark is registered, it is treated as personal property, and thus the owner acquires the exclusive rights under Section 16 of PDTA. The date of protection starts from the date of issuance of the registration certificate.

The basic principle for trademark protection in Nepal is summarized under two principles:

· Registration Principle

· First-to-file principle. a registered

That’s to say, only a registered trademark enjoys prima facie protection in Nepal. For applications concerning identical or similar trademarks, the applicant who has first filed an application for trademark registration gets the protection under law in Nepal.

Period of protection

The protection of a trademark is forever until it is renewed under the prescribed time by paying the prescribed fee.  As per PDTA sec. 23B(3), the initial period of protection is thus 7 years from the date of its registration. Revocation of the trademark registration can be executed under some conditions of false registration and if found not being used after its registration, which is mentioned in PDTA Sec. 18(C).

Unregistered Trademark

A trademark that is not registered under the concerned authority of the country under the prescribed trademark law of the country is regarded as an unregistered trademark. But such an unregistered trademark is protected under some prescribed conditions. Some of the countries, like the UK and India, protect the unregistered trademark on the basis of use. A trademark that has extensive publicity and promotion and has acquired a certain reputation in the market and is famous and commonly known to the customer or market is a well-known trademark. A well-known trademark breaches the rule of territoriality jurisdiction that generally a trademark receives under the jurisdiction and registration requirements. Despite this, the protection of a well-known trademark is wider than the general registered mark. With the rise of international trade and global economic concepts, the protection of well-known marks has become unavoidable.

In the case of Nepal, PDTA has not extended its protection to unregistered trademarks expressly. But the judicial judgment made by the court of Nepal expressly shows the protection of unregistered trademarks. Also, in the case of Amrit Distillery v. FACEBOOK, Inc. USA, a judgment made from the Patan High Court (Case No. 074-DP-1229, decision date: 2075-06-16) extensively analyzed the issue related to well-known marks and held that such marks should be protected. The DOI has also ruled in favor of Facebook, Inc., and states that imitating trademarks can hurt the prestige of the institution and adversely affect public sentiment. Such an act can undermine the national interest and economic interest and damage the goodwill of the trademark.

Whereas Amrit Distillery claims that Facebook Inc. has not registered its mark in Class 33, which deals with alcohol products, and it has registered it under Class 33. Here, if allowed for Amrit Distillery under class 33 for registration, it would blur and tarnish Facebook Mark’s reputation and goodwill, which he had carried for years. The sole purpose of Amrit Distillery is benefiting from the goodwill earned by Facebook Inc. and commercially exploiting the market. Such an act can lead to unfair competition.

Right of owner

After registration of trademarks, the registered owner has exclusive rights to use the trademark. The owners of well-known marks have a wider base of rights to use their marks than other registered owners. The exclusive rights include:

The right to use the trademark, which includes

Right to use such a trademark to affix it on goods, containers, packaging, labels, etc., or to use it in any other way.

Right to introduce the goods and services into the market under the trademark.

Right to use the mark in advertising, business paper, or document.

Right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark.

The right to exclude others from using it, which includes

Right to object to the use of confusingly similar marks in order to prevent consumers from being misled.

Right to stop unauthorized use and to get compensation in case of loss.

Conclusion:

Trademark registration in Nepal involves various legal processes through which it ensures protection and exclusive rights for businesses over their distinctive marks. Governed by the Patent Design and Trademark Act, 2022 B.S., the system follows a structured procedure from application to examination, publication, opposition, and final registration. The law strongly emphasizes the “first-to-file” and registration principles, making formal registration essential for legal protection. While unregistered trademarks are not explicitly protected under the statute, judicial interpretations have recognized their significance, particularly for well-known marks. Overall, effective trademark registration not only safeguards business identity and goodwill but also promotes fair competition and consumer trust in the market.