How to Register a Foreign Trademark in Nepal: A Step-by-Step Guide

A trademark is a distinctive sign that identifies the goods or services of a particular person or entity from those of others. A trademark can be a word, symbol, logo, slogan, or a combination of these elements. Trademarks help consumers to recognize and choose the products or services they trust and prefer.

If you are a foreign business owner or entrepreneur who wants to expand your market presence and protect your brand identity in Nepal, you may want to register your trademark in Nepal. Nepal is a member of the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which means that it recognizes and respects the intellectual property rights of foreign nationals and entities.

However, Nepal does not have a specific provision for the protection of foreign well-known trademarks on the basis of use. Therefore, the only way to secure your trademark rights in Nepal is by registering your trademark with the Department of Industry (DoI), which is the competent authority for trademark registration and administration in Nepal.

In this blog, we will explain how to register a foreign trademark in Nepal in a step-by-step guide.

Step 1: Submission of an application for registration of a trademark to the DoI

An application in a prescribed format shall be submitted to the DoI for registration, along with all required documents. The documents include:

• A copy of the registration certificate or license of the business for the product or service in which the trademark is used or intended to be used.
• Four copies of the specimen of the trademark.
• A power of attorney if someone has been authorized to act on behalf of the owner to register the trademark.
• If the applicant is a foreigner, a certified copy of any foreign registration certificate and an address for service in Nepal must be submitted with the application.
• A receipt of payment of the prescribed application fee.

A separate application shall be submitted for the registration of trademarks of different categories of goods or services. The DoI follows the International Classification of Goods and Services (Nice Classification) for this purpose.

Step 2: Preliminary examination of the application by the DoI

The DoI will examine the application and check whether it meets all the formal and substantive requirements for registration. The DoI will also conduct a search to see if there are any identical or similar trademarks already registered or pending registration in Nepal.

The DoI will refuse to register a trademark if:

• It is likely to affect the dignity of any individual or institution or damage the reputation of another's trademark.
• It is likely to affect the well-being and morale of people in general or national interest.
• It is contrary to the principles, norms, and international conventions of industrial property.
• It has already been registered in the name of another person.

The DoI will notify the applicant about its decision within 15 days from the date of receipt of the application. If there are any defects or objections in the application, the applicant will be given an opportunity to rectify them within 35 days from the date of receipt of the notice. If the application is accepted, it will proceed to the next step.

Step 3: Publication of trademark in the Industrial Property Bulletin (IP Bulletin)

After conducting a preliminary examination, if the DoI finds the trademark consistent with the law, such a trademark will be published in an IP Bulletin. Trademarks are published in the IP Bulletin so as to invite the public for filing an opposition for registration of the trademark. An opposition against the published trademark shall be filed within 90 days of publication in the IP Bulletin.

Step 4: Registration of the trademark

If there is no opposition filed, the DoI will register the trademark and issue the trademark registration certificate. Generally, it takes about nine months to a year to complete the process of trademark registration and issuance of trademark registration certificate where no petition for an opposition is filed.

Step 5: Renewal of trademark

The registered trademark holder shall have his right to the trademark for a period of seven years from the date of registration. The registered trademark holder shall renew the trademark within 35 days from the date of expiry. The renewal fee shall be paid as prescribed by the DoI.

Benefits of registering a foreign trademark in Nepal

Registering a foreign trademark in Nepal can provide you with several benefits, such as:

• It gives you exclusive rights to use your trademark in Nepal and prevents others from using it without your permission.
• It helps you to establish your brand identity and reputation in Nepal and differentiate your products or services from those of your competitors.
• It enables you to take legal action against anyone who infringes your trademark rights in Nepal and claim damages or compensation.
• It increases your chances of obtaining registration or protection for your trademark in other countries that are members of the Paris Convention or TRIPS.
• It adds value to your business and enhances your goodwill and customer loyalty.

If you need any assistance or guidance on registering a foreign trademark in Nepal, please feel free to contact us. We are a team of experienced and qualified lawyers who can help you with all your legal needs in Nepal.