Global Trademark Protection Services
G.P.O.Box: 21816, Putalisadak, Hiuwa Galli (Near
Phone: + 977 1 62 25 201, Fax: + 977 1 44 19 675,
E-mail: trademark@global-trademark.com
Website: www.global-trademark.com
TRADEMARK LAW IN
1.
Description - Trademark and Service Mark
A trademark is a word,
name, symbol or device which is used in trade with goods to indicate the source
of the goods and to distinguish them from the goods of others. A service mark
is the same as a trademark except that it identifies and distinguishes the
source of a service rather than a product. The terms "trademark" and
"mark" are commonly used to refer to both trademarks and service
marks.
Trademark rights may be used to prevent others from using a confusingly similar
mark, but not to prevent others from making the same goods or from selling the
same goods or services under a clearly different mark. Trademarks which are
used in interstate or foreign commerce may be registered with the Trademark
Office.
2. Basic Facts of Trademark
Trademark is an important form of Industrial Property Rights. It plays a key
role in a consumer economy. As in the case of other forms of Intellectual
Property Rights, trademarks also exhibit the dialectics between public and
private interests. As a source identifier, a trademark enables the consumers to
identify the origin of the goods/services. The consumer thus gets the
goods/services of his/her choice. On the other hand, the originator of the
goods (for example the company that manufactures the goods) gets protection for
the mark. Most national laws on trademarks are designed to balance this duality
of interests. Further, the national laws define the legal rights of the owners
of trademarks and prescribe the boundaries of such legal rights. Unregistered
trademarks are protected under the principles of common law in many countries.
3. Registrable Marks
All marks are not registrable. For a Mark to be registrable, it must
conform to certain statutory prescriptions. One such fundamental prescription
is that a mark to be registrable must be "distinctive". The quality
of distinctiveness, distinctive character, or capable of distinguishing is a
basic principle as stated in the national law. A word having a direct reference
to the character or quality of goods is not registrable. However a word having
direct reference to the character or quality of goods is registrable if it has
acquired distinctiveness through long and continuous use. There are several
other principles, all tested by a number of judicial decisions, elaborating the
registrability of trademarks.
4.
5. Priority Claim
6. Trademark Search
It is advantageous to conduct a trademark search to ascertain the existence of
prior registrations of identical marks. The digital database of registered and
published trademarks is available. This has made trademark search easy and
expeditious.
A trademark search can be conducted by making a formal request each in particular
class. The search result with detailed report can be obtained within 7 days
from the date of request.
7. Filing an Application
Application for registration of an ordinary trademark (including a service
mark) must be filed in prescribed form. The Form must be filed accompanied by 5
additional representations of the Mark. Apart from this, 1 representation must
be affixed to the Form itself.
All applications must be accompanied by the prescribed official fee and a Power
of Attorney, if filed through an agent. The Power of Attorney must be made in
the prescribed form. It must be signed by the applicant, two witnesses and duly
stamped/sealed.
An application for the registration of trademark must be filed at the office
designated for purposes of granting trademark registration.
8. Prosecution of the application
The trademark office will conduct an examination of the application;
conduct a search to identify if any prior registration exists. If the trademark
application is accepted, it will be published in the Industrial Property
Bulletin. If there are any objections to the registration, an examination
report is sent to the applicant/agent.
Once an examination report is issued, the applicant or his representative has
to reply in writing. If the Registrar is not satisfied, he can reject an
application. In case the application is rejected, the applicant can file a
request for review of the order of the Registrar. If the application is again
rejected, the applicant can file an appeal before the Appellate Court. If the
trademark application is accepted, it will be published in the Trademarks
Bulletin.
The applicant, if complies with the requirements of the Trademarks law, the
Mark will be accepted in due course. The Trademarks Registry thereafter advertises
the Mark in the Trademarks Journal.
9. Opposition
The Mark remains open to opposition for 90 days from its publication in the
bulletin by a person interested to enter opposition. If a Notice of Opposition
is filed within this period, the application enters the opposition proceedings.
The hearing committee allowing or rejecting the opposition. After such decision
any party may appeal to the Appellate Court within35 days of the decision.
In the absence of an opposition, the relevant certificate of registration is
issued.
10. Issuance of Registration
Certificate
If there is no opposition against the proposed registration or the
opposition proceedings have been decided in favor of the applicant, the mark
will be registered in the national trademarks register and a certificate of
registration will be issued.
A trademark registration is valid for 7 years as of the date of registration
and renewable for further periods of 7 years perpetually.
11. Renewal / Restoration
An application for renewal of the mark should be made within 35 days after
the date of expiration. The mark can also be renewed by paying surcharge within
six months after the expiry date. If not renewed within the said six months,
the mark would be removed from the register of trademarks. After then a fresh
application for registration of the mark is to be filed.
12. Use of Marks
Use of marks in
13. Cancellation of a Trademark
Registration
After registration of the trademark, plea for cancellation of the trademark
pleading that registration of the trademark is invalid should be prosecuted
before the Registrar and against the decision of Registrar to the Appellate
Court.
14. Infringement
Unauthorized use of a trademark registered under the law or an imitation of
such trademark applied on goods and services of the same class, or sale,
storing for the purpose of sale, or exhibiting for sale of goods and services
bearing a counterfeited mark, or using a mark duly registered under the law by
another person to serve the purpose of unauthorized promotion of goods or
services of the same class are offenses punishable under the law.
A registered trademark is infringed, if a person uses unauthorizely the
identical or confusingly similar Trademark in relation to the goods for which
it is registered. Infringement action is possible only for the Registered
trademark and in such cases plaintiff has to show the identical or deceptively
similar trademark is being used without any authority by the defendant in
relation to the goods covered under his registration. No need to show the proof
of actual harm or loss to his business is necessary.
TEST OF INFRINGEMENT CAN BE
LIKELIHOOD OF CONFUSION, MISTAKE, DECEPTION OR DELIBERATE COPYING.
15. Passing off
Passing off is a form of Tort based on Common Law.
It is an actionable wrong to pass off one's goods or business as and for the
goods or business of others by whatever means.
The essential characteristics which must be present in order to create a valid
cause of action for passing off has been described by Lord Diplock in Erven
Warnink Vs Townend (1980) RPC 31 at 93 (HL) which are as follows:
Misrepresentation made by a person in the course of trade, to prospective
customers of his or ultimate customers of goods or services supplied by him,
which is calculated to injure the business or goodwill of another trader, which
causes actual damage to a business or goodwill of the trader by whom the action
is brought or will probably do so.
16. Remedies available against
Infringement of a Trademark
Civil
remedies:
Criminal action:
17.Well-knownTrademarks
Well-known trademarks in the
international market also need to get the registration in
REQUIREMENTS:
1. Filing Trademark / Service Mark Applications
1.
A
Power of Attorney simply signed by the applicant, witnesses and stamped/sealed.
The executed Power of Attorney received by fax or e-mail will be sufficient to
file the application and the original can be submitted later. No notarization
or legalization of this document is required. (Separate for each class mark)
2.
An
Application Form for Registration simply signed by the applicant, witnesses and
stamped/sealed. The executed Power of Attorney received by fax or e-mail will
be sufficient to file the application and the original can be submitted later.
No notarization or legalization of this document is required. (Separate for
each class mark)
3.
A
certified copy of the home or foreign registration certificate along with its
authenticated translation in English by a Notary Public. (Separate for each
class mark).
4.
In
the case Priority claim, certified copy of priority details with certified
English Translation.
5.
If
there is any character of local languages (like Japanese, Chinese etc.),
require a meaning of that character in English that is must be certified by
Notary Public and other legal authorized institutions. (Separately for each
class mark)
6.
Minimum
10 prints of the mark. (Not needed for word mark).
7.
The
list of goods and the class is pertaining there. (Goods/services must be same
as same as mentioned in home/foreign registration certificate/application).
Remark:
The
Notarized/certified copy of the home/foreign registration certificate is
necessary to get the registration in
2. Claiming Priority (if applicable)
Priority can be claimed if the Nepalese application is filed within 6
months from the date of filing of the basic application. Following are required
for claiming priority:
3. Renewal of Trademark/Service Mark
Registrations
4. Assignment Applications
5. Change of Name Applications
6.
Change of Address Applications
7.
Obtain Certified Copy of Registration Certificate:
For requirements patent, design & copy right and appropriate forms of these services please write to: trademark@global-trademark.com