Nepal’s growing market attracts foreign businesses aiming to protect their brand names and logos. However, trademark registration in Nepal comes with its own legal requirements and practical considerations. This article explains how foreigners can register trademarks in Nepal, the role of agents, key legal provisions, fees, and practical tips to ensure smooth registration.
Can Foreigners Register Trademarks in Nepal?
Yes. Foreigners are allowed to register trademarks in Nepal. However, a trademark registered abroad is not automatically valid in Nepal. Legal protection in Nepal requires registration with the Department of Industry (DOI) or the relevant authority under Nepali law.
Most foreign applicants file through a Nepali attorney or agent using a Power of Attorney and submit supporting documents, including the trademark certificate from their home country if available.
Legal Basis: What Nepali Law Says
Nepal’s core trademark legislation is the Patent, Design and Trade Mark Act, 2022 (1965). The Act defines a trademark broadly as a word, symbol, picture, or combination used to distinguish products or services.
Two sections are particularly relevant for foreigners:
Section 21B – A trademark registered in a foreign country is not valid in Nepal unless registered by the concerned person in Nepal.
Section 21C – The Department may register a foreign-registered trademark without conducting any enquiry, provided the foreign registration certificate is submitted. Nepal provides facilities in accordance with the Paris Convention (1883) for international filings.
In simple terms, foreign registration may support the filing, but Nepal registration is essential for local protection.
Can Foreigners Apply Directly?
The Act does not prohibit foreigners from filing directly. Any person can acquire a trademark title by registration with the Department.
Practical reality: Foreign applicants usually appoint a local representative or legal firm to interact with the DOI, submit documents, respond to objections, and track publication deadlines. This approach ensures compliance with procedural requirements.
Role of Agents and Power of Attorney
Nepali law permits appointment of an attorney or legal practitioner under Section 20, and actions taken by the attorney are considered legally binding for the applicant.
For foreign applicants:
Sign a Power of Attorney granting a Nepali agent authority to file and respond on your behalf.
The agent handles filing, examination responses, publication monitoring, and opposition management.
At Axcel Law Associates we guide foreign clients through this entire workflow, ensuring timely filings and compliance.
What Trademarks Can and Cannot Be Registered
Nepal allows registration of trademarks that distinguish goods or services. Section 18(1) identifies grounds for refusal:
Marks that may harm public morality, national interest, or prestige.
Marks that resemble existing Nepalese trademarks.
Practical tip for foreign brands:
Conduct a clearance search before filing.
Avoid offensive or immoral marks.
Anticipate objections if your mark is similar to an existing local mark.
Step-by-Step Foreign Trademark Registration Process in Nepal
1. Prepare the Application
Submit the application in the Schedule 1(C) format along with:
Four specimens of the trademark
Application fee
2. Power of Attorney
3. File at the Department
Submit the application to the Department of Industry (DOI).
4. Investigation/Examination
The Department reviews the application and may conduct enquiries or request additional information. Applicants have an opportunity to respond to objections.
5. Registration and Certificate
If accepted, the Department registers the trademark and issues the certificate as per Schedule 2(C).
6. Publication and Objections
Trademarks are published for 35 days. Anyone may file a complaint or objection. The Department investigates and takes necessary action.
Tip: Foreign applicants should monitor publications, as competitors may file objections.
Special Route: Registering a Trademark Already Registered Abroad
Under Section 21C, foreign-registered trademarks can be submitted with:
A copy of the foreign registration certificate (and translation if required)
Power of Attorney for the Nepali agent
This allows registration without detailed enquiry and ensures Paris Convention rights are respected.
Classification and Multi-Class Strategy
Nepal requires classification of goods and services. If your brand covers multiple product lines (e.g., clothing + cosmetics + retail services), multiple applications may be needed. Planning ahead reduces additional filing costs.
Use Requirement
Nepal’s Act requires actual use of a registered trademark within one year of registration. Failure to use the mark may result in cancellation.
Practical tip: Align filings with a market-entry plan and maintain evidence of use (distribution, packaging, sales).
Term, Renewal, and Late Renewal
Initial term: 7 years from registration.
Renewal: Any number of times, 7-year periods.
Late renewal: Allowed within six months with a fine (1,000 NPR).
Cancellation: Failure to renew within the window results in automatic cancellation.
Fees Foreign Applicants Should Expect
| Fee Type | Amount (NPR) |
|---|---|
| Application | 2,000 |
| Registration | 5,000 |
| Complaint/Objection | 1,000 |
| Renewal (per 7-year period) | 500 |
Note: Professional fees, translations, notarizations, legalization, and brand searches are separate.
Enforcement, Transfer, and Licensing
Registered trademarks in Nepal are legally protected against unauthorized use:
Assignments/Transfers: Ownership can be transferred and recorded with the Department.
Licensing: Written approval for use can be registered.
Compensation: Violators may be ordered to pay damages.
Penalties: Illegal use can incur fines up to 100,000 NPR and confiscation of goods.
Practical Checklist for Foreign Applicants
Conduct a local trademark search.
Appoint a Nepali agent/law firm with Power of Attorney.
Choose correct classes for goods/services.
Plan to use the trademark within one year of registration.
Maintain a renewal calendar and compliance plan.
At Axcel Law Associates, we assist foreign clients with every step: search, filing, objections, registration, and ongoing IP portfolio management in Nepal.
Conclusion
Foreigners can register trademarks in Nepal, but success requires understanding local laws, procedures, and practical nuances. Filing through a competent Nepali agent, planning multi-class filings, and ensuring timely use and renewals are key to protecting your brand. With proper guidance, foreign businesses can secure enforceable rights and expand confidently into Nepalese markets.
0 comments:
Post a Comment