WHO CAN FILE A TRADEMARKAny natural person or a Legal entity can file a trademark application in selected specification of goods or services. The Applicant for trademark under Nepal Trademark law can also foreign national and/or Legal entity as well. In case of a Foreign Applicant, the Applicant is to necessarily provide the Registration certificate of the Mark in its origin country during the filing of the Trademark Application. SELECTING A TRADEMARKWhile selecting a trademark, the two factors to be kept in mind are the mark itself and the specification of goods and services the marks intends to cover. An ideal mark should be distinctive and unique in nature, and should be not similar to an already registered mark. For selecting goods and services, it is important to understand the class under which the trademark would fall; At the moment, under NICE classification goods and services can be classified as 45 different types of goods and services. Classifications 1–34 are for products, and 35–45 are for services. It is to be noted that in Nepal, Multiclass Applications are NOT allowed.Once you have successfully chosen a suitable mark for your company, a trademark search at the Nepal Trademark Office should be conducted to assess the feasibility of the selected mark being registered. A Trademark search is not mandatory, but is highly advised. Request for an official search can be made with the prescribed fee.FILING OF TRADEMARKIn Nepal, trademark registration can be obtained typically within 9-12 months (In case no objections are received). Following are the particulars to be kept in mind:
Name and Address of Applicant;
Name of Trademark, (if it is a stylized mark, logo or device, the actual stylized mark, logo or device);
Complete and Concise Description of the Mark;
International Classification (Nice Classification) of the Goods and/or Services;
Enumeration of the Goods and/or Services;
Translation and Transliteration of Characters (if not in English), certified as correct by Sworn Translator;
If Claiming Convention Priority, a Certified Copy of the Home Trademark Application;
Specification of Colors, if any;
Power of Attorney, Signed and Sealed;
Usage Date of the Mark (whether the mark is in use or proposed to be used in Nepal);
Certified Copy Claiming Convention Priority is to be submitted within 6 months. Hard Copy of Power of Attorney, and document of Usage can be submitted within 2 monthsfrom filing date. EXAMINATION OF TRADERMARKAfter an application is filed the same is then examined by the Registrar with regard to the distinctiveness, possibility of deceptiveness and conflicting trademarks. The Registrar may accept or refuse the application subject to the provisions of the act. A trademark application in Nepal can be refused / objected by the Registrar.
Publication of Trademark: After examination and upon acceptance of the response by the Registrar, the application is ordered for publication in the Trademarks Journal. An application is advertised in the Trademarks Journal so as to invite the public for filing opposition against the registration of a mark. The time period for filing opposition since the day of publication is 3 months
Objection of Trademark: If trademark application does not satisfy all requirements, then the examiner will issue objection. The applicant needs to file the reply after the objection has been raised in the examination report. Even after the reply of the objection the Nepalese Trademark Office may refuse to provide the trademark or may go into hearing.
It is to be noted that the timeline may vary depending on the backlog at the registry.REGISTRATION OF TRADEMARKThe application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is then registered for a period of 7 years from the date of filing of the application and the registration certificate is issued. The trademark can be renewed from time to time for an unlimited period by payment of renewal fees, failing which the mark becomes liable to be removed from the registry on account of non-renewal. Each renewal term is for a period of 7 years.