Foreign Trade Mark Registration in Nepal

March 24, 2023

A Trade mark is any sign that personalized the goods of enterprise and distinguishes from its competitors. Here are some of the frequently asked question about the registration of Foreign Trade Mark.  

 Q. 1) what are the legal ground for the registration of foreign Trade mark?

The legal ground for the registration of foreign Trade Mark is it must be compulsorily register in Department of Industry ("DOI"), Nepal.

Nepal being a member state of the Paris convention for the protection of industrial property, 1883 has adopted a provision, stating if the trademark has been already registered in foreign country and has the certificate of its registration, no authentication shall be required and shall be register without enquiries.

Sec 21(c) of the PDTA provides that if an application is filed for the registration along with the certificates of its registration in a foreign country the department may register Trade Mark without conducting any enquiries. Right to priority claim for six month can be made of such application which allows the claimant to subsequent application in another country for the same invention, design or Trade mark, effective as date of first filing as facility assured by Paris convention.

Q.2) what is the competent authority for the registration of foreign trade mark?

The competent authority for the registration of the foreign Trade Mark is Department of Industry ("DOI").

Q.3) what is the process of registration of foreign Trade mark?

There are certain steps which you need to follow for the registration of foreign Trade Mark, the steps are stated below:

First step: First you need submit the application to the Department

Second step: After submission of the application, Department will conduct examination upon the application whether it is appropriate to register or not.

Third step: Department will publish the Trade Mark in IP bulletin for the information of general public after completion of all requirement.

Fourth step: Registration of Trade Mark if there is no any objection of third party. A complaint may be filed within 35 days of such application if anyone who has objection to the particular Trade Mark published by department.

Q.4) what are the documents required for the registration of the foreign Trade Mark?

The documents required for the registration of the foreign Trade mark is certificate of its registration in a foreign country. Certificate must be submitted to the DOI for the registration.

Q.5) what are the documents that needs to submitted for Registration?

The documents that needs to submit for registration are stated below:

S.N	Documents	No. of copies	format
1.	Application of registration of Trade mark	1	Yes
2.	Certified copy of the Trade Mark registration in abroad	1	No
3.	If possible a letter related to priority date	1	No
4	Power of attorney and address to contact in Nepal	1	No

 

Q.6) is there any ground where Department refuse to register the foreign Trade Mark?

Sec 18(1) has stated ground for the refusal of the registration, here are the grounds;

1) If such Trade Mark hurt the prestige of any individual or institution,

2) If the Trade mark adversely affect the public conduct or morality,

3)If the Trade mark undermines the national interest or reputation of the Trade mark of any person,

4) In case Trade mark is found to have already been registered in the name of another person.

Q.7) required fee for the registration of foreign Trade mark

1	Application fee	NPR 2,000
2	Registration fee	NPR 5,000

 

SADA Associates provides expert services in the field of Business Taxation in Nepal, Foreign Direct Investment (FDI) in Nepal,  Intellectual Property Registration in Nepal, Employment and Immigration in Nepal, Dispute Resolution and Arbitration in Nepal, and Corporate and Commercial compliance and regulatory matters in Nepal. For more information Contact us. 

Please note that this guide is published for general information only and should not be considered as legal advice. You are requested to seek legal advice for specific factual situations. Please note that copyright for this Q&A vests on Sada Associates.