Trademark Opposition Process in Nepal
The trademark opposition process in Nepal, is governed by the Patent, Design, and Trademark Act, 2022. Trademark opposition can be initiated by submitting an opposition request to the Department of Industries (DOI). This allows any concerned party to challenge a trademark application based on specific legal grounds.
A trademark may be opposed if it is found to be descriptive, lacks distinctiveness, is misleading, or closely resembles an existing registered mark. The Director General of the DOI holds the primary authority in deciding trademark opposition cases.
Step-by-Step Trademark Opposition Procedure in Nepal
Filing a Notice of Opposition
A trademark opposition notice can be filed by any individual or entity once the DOI has examined the trademark application and published it in the Industrial Property Bulletin. Under Section 18(1) of the Patent, Design, and Trademark Act, 2022, an opposition must be formally submitted within the specified timeframe.
Timeframe for Opposition
The notice of opposition must be filed within 90 days from the date the Industrial Property Bulletin is made publicly available. No extensions are granted beyond this period.
Fees and Compliance Requirements
The opposition notice must be accompanied by the applicable fee and must be submitted to the Department of Industries following the prescribed format.
Grounds for Opposition
A trademark may be opposed under Section 18 of the Patent, Design, and Trademark Act, 2022, based on the following grounds:
- If it is detrimental to the reputation of an individual or an organization.
- If it negatively impacts public morality or ethical standards.
- If it is deemed harmful to national interest or conflicts with existing trademark rights.
- If it closely resembles or is identical to an already registered mark.
- If its nature or intended use is contrary to public order.
Trademark Opposition Procedure in Nepal
The opposition process consists of the following steps:
1.Notice of Opposition
- Once the opposition notice is filed, it is forwarded to the applicant by the DOI.
- The notice should clearly outline the reasons for opposition and be supported by relevant evidence.
2. Counter statement Submission
- The applicant (defendant) must submit a counter statement within 21 days of receiving the opposition notice.
- The response should include evidence to counter the claims made in the opposition.
3. Hearing
- A formal hearing takes place at the DOI, where both parties are given an opportunity to present their arguments.
- The Director General evaluates the evidence and issues a decision regarding the opposition.
Conclusion
Trademark opposition serves as a formal mechanism to prevent the registration of misleading or conflicting trademarks. Any interested party who believes they may face commercial or reputational harm due to a trademark application may file an opposition under Section 18 of the Patent, Design, and Trademark Act, 2022.
If you are looking for expert lawyer assistance in trademark opposition in Nepal, Moksha Legal Group provides comprehensive legal services to protect your brand. Our team of intellectual property lawyers offers strategic guidance in filing oppositions, responding to counterclaims, and ensuring compliance with Nepalese trademark laws.
How do I oppose a trademark in Nepal?
To oppose a trademark in Nepal, you need to file a formal opposition with the Department of Industry (DOI) within 90 days from the date of publication of the trademark in the Industrial Property Bulletin. The process includes:
Monitoring the Trademark Journal – Check newly published trademarks to identify potential conflicts.
Filing an Opposition – Submit a written opposition stating the legal and factual grounds against the trademark.
Responding to Counterarguments – If the applicant replies, both parties may present their case before the DOI.
Final Decision – The DOI reviews evidence and issues a decision based on the arguments presented.
It is advisable to consult an IP lawyer to ensure a strong case against the trademark application.
What is the opposition period for a WIPO trademark?
For WIPO (World Intellectual Property Organization) trademarks, the opposition period varies by country, as trademarks registered through the Madrid System are subject to national laws. However, in most jurisdictions, including Nepal, the opposition period typically ranges between 30 to 90 days from the date of publication.
Each designated country under the Madrid Protocol follows its own rules, so it’s essential to check the national IP office of the respective country where opposition is intended.
What is the difference between TM and R trademark?
™ (TM – Trademark): This symbol is used to indicate that a brand or name is being claimed as a trademark but is not yet officially registered. It offers limited legal protection.
® (R – Registered Trademark): This symbol means that the trademark is officially registered with the relevant intellectual property authority, granting exclusive rights and legal protection against unauthorized use.
In Nepal, you can use the ™ symbol when applying for a trademark and the ® symbol only after receiving official registration approval.