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. Paris Convention

Nepal is a member of the Paris Convention for the protection of Industrial Property as of 2001; hence an applicant can claim priority of up to six months as per the convention. The International Classification of Goods and Services for the purposes of the Registration of Marks consisting of 45 classes is followed in Nepal.

5. Priority Claim

Nepal ratified the Paris Convention in 2001. An application for registration of a trademark claiming convention priority can be filed within 6 months from the date of filing of the corresponding application in the respective jurisdiction. To claim priority, a certified copy of the convention application is required.

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 Nepal is not compulsory for filing applications or necessary for maintaining registrations in force for foreign applicants.

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:

1. Temporary and permanent injunction to restrain other from using the mark in whatever way.
2. To claim damages OR an account for profit
3. Seizure of the infringing goods/labels/advt. materials for destruction.