In Nepal, the process of trademark protection and enforcement is regulated by the Patent, Design and Trademark Act (PDTA), 1965 (2022). As per Section 18 of PDTA, the validity of a registered trademark is for a period of 7 years from the date of application.
Department of Industries (DOI), a sub-department within the Minister of Industries, governs both foreign and native trademark registration process.
The DOI executes mainly two functions: quasi-judicial function and administrative functions for the enforcement and protection of the trademark rights:
- Quasi-Judicial Function
- Pro-opposition of trademarks
- Revocation of Trademark
- Action against the unauthorized use of the registered trademark product
- Administrative Function
- Trademark registration and renewal
- Assignment and licensing of trademark
- Trademark recordals (Name and Address of the trademark owner) changes
The following international treaties are signed by Nepal for the enforcement and protection of trademark rights:
- The Paris Convention For Protection of Industrial Property, 1883
- Conventions Establishing the World Intellectual Property Organization, 1979
- Agreement on Trade-Related Aspects of Intellectual Property Rights, 1995.
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February 4, 1997
TRADEMARK PROTECTION BASED ON REGISTRATION
Under Section 16 of PDTA, a person can fortify the trademark title only through registration by the DOI.
PROTECTION OF WELL-KNOWN MARKS
There are no specific laws for the protection of well-known trademark under the PDTA. But DOI can decline the application of any trademark or already registered trademark under the Section 18 (1) and (3) in following situations: a) for sabotaging the reputation of any individual or institutions, or b) for damaging someone’s trademark reputation.
A trademark right is violated if any unauthorized party uses or replicates an identical or similar product, which is already registered. However, the trademark owner can take legal action only for the registered trademark, by submitting evidence for the same. The person can seek legal action for the infringements of trademark rights by filing an application. However, the person can complain anytime, as there is a time limit set by the government.
Civil, criminal or administrative action can be taken by the grieved party in case of trademark infringement. Under the Civil Right Act 1955, the person can also file for an injunction the High Court.
Rules and Procedure for regulating the issuance of the injunction for preventing imminent or further infringement of trademark rights:
The injunction is filed under the Civil Right Act 1955, and High Court regulations. In this case, the raid is carried at the place where the trademark infringement has allegedly taken place by the unauthorized party.
The owner of a registered trademark has the right to file an injunction. But the party has to prove his claim that its trademark right has been infringed by the accused.
The claim for the damage can be made by submitting the proof for the same. All the products/labels/ advertising materials which are infringing the trademark right can be seized.
The infringing goods/ labels/advertising materials can also be seized by the government for destruction. In a criminal action, raids can also be conducted, while the same is not possible in a civil action. The accused can be fined up to NRS 1000000.
For administrative action, the person can file an infringement complain in the Department of Industry.
In Nepal, the Ministry of Finance, under the Customs Act, 2007, governs all the activities related to enforcement and protection of trademark rights. Under Section 68 (1), if a party imports or exports any product which is infringing the IP rights of any person, then the concerned person can submit an application, along with proof to the customs officer to stop the import or export of the goods.
If trademark application is filed under Section 68 (1), the customs officer can withhold the import or export of such goods. However, he can also pass an order to the concerned authority to undertake the necessary action, under Section 68 (2).
Then, the authority will undertake the relevant legal action as per the trademark laws. After that, under section 68 (3), the customs officer, will be informed in detail.
If it’s found in an investigation that goods are liable for forfeiting, the customs officer under Section 68 (3) will hand over those goods to the concerned body for further action.
Defense available to the accused:
In case of infringement of trademark rights, the defendant can plead for the following defenses:
- The doctrine of estoppels;
- The doctrine of laches;
- Can prove the dissimilarity between the trademark;
- Can also show that the feature of its goods is entirely different from that of the plaintiff;
- Can also show that the client base is completely different from the plaintiff;
Under Section 27 of the Patent, Design, and the Trademark Act (2022/ 1965), a person can appeal within 35 days from the issuance of infringement decision. For more visit: https://www.trademarkmaldives.com/