What is the law under which the Trademark Protection is granted in Nepal?

Patents, Design and Trade Marks Act, 1965 governs and deals with the mechanism of registration of trademarks in Nepal.

Which governmental body is responsible for registration of Intellectual properties in Nepal?

The Department of Industry (DOI)is a government body that is responsible for granting patents, designs, and trademarks registrations in Nepal.

What type of marks can be registered?

In Nepal, the marks that can be protected as trademarks can be categorized as follows:

1. Conventional Trademarks including word mark, device mark, logo mark and collective mark.
2. Non-Conventional Trademarks including colour mark and shape mark.

Who can file an application for trademark registration in Nepal?

Any natural person, body corporate (like a company), trust, society, or joint applicants, even if they are not Nepalese citizens can file an application for the registration of the mark in respect of his goods/services.

Can an application be filed for single class or multiple class?

A trademark application can be filed for a single class only. Multi-class trademark applications cannot be filed in Nepal.

Which edition of NICE Classification is accepted by the Trademarks office?

The Nepal trademark office follows the 12th edition of NICE Classification and has a list of accepted goods and services.

What are the documents and information required at the time of filing the application for registration?

1. A Power of Attorney signed by the applicant sealed and attested by two witnesses, notarization.
2. Copy of registration or license of the business for product or service in which trademark is used or intend to use.
3. Four copies of model of trademark.
4. Authorizations letter if somebody has been authorized to act on behalf of the owner to register the trademark.
5. If the applicant is a foreigner, certified/notarized copy of any foreign registration certificate and address for service in Nepal must be submitted with application.
6. priority claim, where priority of an earlier application is claimed.
7. Registration of foreign trademarks in Nepal is to the extent of the foreign registration of such marks. For registration of marks belonging to foreign entities, the applicant must submit a certified or notarized copy of a valid trademark registration certificate for the same mark in the same class in the name of the applicant, either from the client’s own jurisdiction or from any foreign jurisdiction.

What is the initial registration term?

Once the trademark is registered, it is valid for a period of 7 years from the date of application.

What is the time frame to complete trademark registration in Nepal?

Trademark registration is a long process, and it takes around 6-12 months from the date of application to obtain registration in case no opposition is filed by a third party.

What are the grounds on which a trademark application can be refused/objected by the Registrar in Nepal?

1. formalities: i.e., for compliance with the filing requirements.
2. classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application.
3. distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations.
4. conflict with prior registration, prior-filed application or earlier unregistered rights resulting from an official search.
5. If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another.

What is the prescribed period for filing opposition after the trademark has been published?

Upon publication of the trademark in the Trademarks Journal, any person can oppose the registration of the said trademark by filing a notice of opposition within the prescribed period of 90 days from the date the Trademarks Journal is published in doind.gov.np.

What is the renewal term?

In Nepal, first trademark registration is valid for 07 years from the date of registration with a possibility to renew in every 07 years, one (01) month prior to the expiry date and 35 days after expiry, by paying normal fees. The mark can be further renewed for a term of 7 years after lapse of the 35 days after expiry, within 6 months, by paying late fees. If a trademark is not renewed within this timeframe, it is automatically cancelled.

What is the non-use cancellation period of a Trademark in Nepal?

The non-use cancellation period of a Trademark is for 1 year from the date of registration.