1. Legal Framework
Trademark protection in Nepal is principally governed by the Patent, Design and Trademark Act, 2022 (1965). The Department of Industry administers trademark registration and handles infringement complaints under the Act.
Section 16 prohibits copying or using another person’s registered trademark without a lawful transfer of ownership or written permission.
2. What Constitutes Trademark Infringement?
Trademark infringement may arise where a person copies or uses a registered trademark without authorisation. It can involve the unauthorised use of a brand name, logo or other protected mark on products, packaging, advertisements or business materials.
3. Why Registration Matters
Registration is the foundation of statutory trademark rights in Nepal. A business registration certificate, company name, domain name or social media account does not replace trademark registration.
Before taking enforcement action, the owner should confirm:
- The trademark is registered in the correct owner’s name;
- The registration covers the relevant goods or services;
- The registration remains valid and has been renewed when required; and
- Any transfer or permission to use the mark has been properly documented.
A trademark registration generally remains valid for seven years and can be renewed for further seven-year periods. Foreign registration alone does not establish trademark rights in Nepal under Section 21B of the Act.
5. Filing a Complaint with the Department of Industry
A complaint should clearly identify the trademark owner, the registered rights, the alleged infringer and the conduct complained of. Supporting documents ordinarily include:
- Trademark registration and renewal certificates;
- Documents establishing ownership or authority to act;
- Samples or images comparing the marks;
- Evidence of unauthorised manufacture, sale, advertising or distribution;
- Relevant correspondence; and
- Evidence of actual loss where compensation is claimed.
The relief requested should be linked to the evidence and the Department’s powers under the Act. Where another party has obtained a conflicting registration, an objection or cancellation proceeding may also require consideration.
6. Penalties and Compensation
Under Section 19 of the Act, unlawful trademark use may attract a fine of up to NPR 100,000, depending on the gravity of the offence, together with confiscation of goods connected with the offence. Additionally, Section 25 of the Act permits the Department to order compensation for actual loss suffered by the registered owner because of a violation.
7. Appeal Against the Department’s Decision
A person dissatisfied with an order of the Department may appeal to the High Court within 35 days under Section 27 of the Act. The decision and applicable filing requirements should be reviewed promptly to protect the right of appeal.
Frequently Asked Questions
Can another business use my registered trademark without permission?
Section 16 of the Act prohibits copying or using another person’s registered trademark without a lawful transfer or written permission.
Does registering a company name protect the brand as a trademark?
No. Company registration and trademark registration are separate processes. Trademark protection should be obtained through the Department of Industry.
Is an identical copy necessary to raise a trademark dispute?
No. A dispute may also concern a misleadingly similar mark. The assessment depends on the marks, relevant goods or services and surrounding circumstances.
Can I claim compensation for lost sales?
Compensation may be sought under Section 25 for actual loss caused by the violation. Financial records and other evidence should support the claim.
Is a cease-and-desist notice always required before filing a complaint?
The Act does not establish it as a universal prerequisite. A notice may help resolve the matter, but the appropriate approach depends on the facts.
Can a foreign trademark owner take action in Nepal?
Foreign owners must secure Nepalese registration for statutory protection. Questions involving reputation, competing applications and treaty protection require separate assessment.
Can I use the registered trademark symbol while my application is pending?
Section 18B of the Act prohibits presenting a trademark as registered in Nepal before registration. Filing an application does not itself establish registered status.
How Alpha Law Associates Can Assist
Alpha Law Associates assists businesses with trademark registration, brand protection reviews, cease-and-desist notices, infringement complaints, opposition and cancellation proceedings, compensation claims and appeals.