The statutory requirements for a Nepali application are short, and that is both the convenience and the difficulty. The Act sets out the essentials; a good deal of the detail sits in the Department of Industry’s own procedure, which is worth confirming at the time of filing rather than assuming from published material.
Quick reference
| Who registers | The Department of Industry |
| Application | In the format prescribed in the Schedule to the Act |
| Specimens | Four specimens of the mark |
| Fee | The application fee prescribed in the Schedule |
| Classes | A separate application for each category of goods or services |
| Representation | An attorney or legal practitioner may be appointed |
| Foreign registrations | May be registered without enquiry on production of the foreign certificate |
| Registration fee | Payable separately, to obtain the certificate |
| After registration | Published, with a 35-day window for complaints |
What the Act requires
Section 17(1): a person desirous of registering the trademark of their business shall submit to the Department an application in the format specified in the Schedule, along with four specimens of the trademark. Section 17(2) requires payment of the application fee prescribed in the fee Schedule.
Section 18(1) then provides that where an application is filed, the Department shall register the mark in the applicant’s name in the prescribed form, conducting necessary investigation, providing the applicant a sufficient opportunity to defend themselves, and making further inquiry as appropriate — subject to the refusal grounds in the proviso.
Section 18(2): to obtain the certificate, the applicant pays the registration fee, which is separate from the application fee.
So there are two fee points: one on filing, one on grant. See trademark fees in Nepal.
Four specimens
The requirement is unusual enough to flag. Four specimens of the mark accompany the application, under section 17(1).
For a word mark that is straightforward. For a device or composite mark it means preparing the representation properly before filing rather than treating it as a formality.
One class per application
Section 18A sets up classification and does it in three short subsections:
- the Government of Nepal may classify goods or services by notification in the Nepal Gazette for the purpose of registering trademarks;
- a separate application shall be submitted to register trademarks for goods or services placed in different categories; and
- a mark registered for goods or services in one category may be registered for goods or services under another category if it so falls.
So there is no multi-class application, and each class produces its own registration with its own fees, its own renewal date and its own exposure to the one-year use rule.
That last point is the one to think about before filing broadly. See trademark classes in Nepal.
Representation
Section 20 allows a person to appoint an attorney or a legal practitioner to take any action required under the Act, and provides that all actions taken by the attorney or legal practitioner shall be deemed to have been taken by the person themselves.
For a foreign applicant that is the practical route, and the appointment should be in place before the filing rather than arranged around it.
The foreign registration route
Section 21C is the provision most useful to an overseas brand owner, and it is easy to miss because it sits among the miscellaneous sections.
The Department may register patents, designs and trademarks registered in foreign countries without conducting any enquiries, where an application is filed for their registration along with certificates of their registration in a foreign country — and the Department shall provide the facility pursuant to the Paris Convention for the Protection of Industrial Property, 1883 to the registration holder.
Two things to take from it.
A home registration certificate does real work here. It is the document the section is built around, and it is the reason Nepali filings for foreign applicants are usually accompanied by one.
It is permissive, not automatic. The section says the Department “may” register without enquiry. It is a facility, not an entitlement, and the refusal grounds in section 18(1) are not disapplied by it.
Section 21B sits alongside and states the necessity: title to a trademark registered in a foreign country shall not be valid in Nepal unless it is registered in Nepal by the person concerned. See foreign trademarks in Nepal.
What happens next
The Department investigates, gives the applicant an opportunity to be heard, and registers the mark unless one of the section 18(1) proviso grounds applies.
Registration is then published under section 21A, together with particulars of renewals and cancellations, and any person with an objection may file a complaint within 35 days of the publication.
See application stages in Nepal.
Three things to settle before you file
Which classes you will actually use. Each class is its own application, its own renewal cycle and — critically — its own exposure to section 18C, which requires cancellation where the mark is not brought into use within one year of registration.
Whether the launch is real. Nepal’s one-year use rule makes an early speculative filing riskier than it looks. Filing close to launch is often better than filing well ahead of it.
What the current Departmental practice is. The Act is short and the Rules made under it are not published in English, so procedural detail — document requirements, timetables for responding to objections, how search enquiries are handled — is best confirmed with the Department or local counsel at the time rather than taken from secondary sources, which date quickly.
Frequently asked questions
Where are Nepali trademark applications filed? At the Department of Industry, which registers and administers trademarks under the Patent, Design and Trade Mark Act.
How many specimens of the mark are needed? Four, under section 17(1), filed with the application in the prescribed format.
Can one application cover several classes? No. A separate application is required for goods or services placed in different categories.
Can I appoint an agent? Yes. Section 20 allows the appointment of an attorney or legal practitioner, and their actions are deemed to be the applicant’s own.
Does my foreign registration help? Yes. The Department may register a foreign-registered mark without conducting enquiries where the application is accompanied by the foreign registration certificate, and must extend the Paris Convention facility to the holder.
Are there two separate fees? Yes. An application fee on filing, and a registration fee payable to obtain the certificate.
Useful official resources
- Department of Industry, Nepal
- Patent, Design and Trade Mark Act, 2022 (1965) — sections 17, 18, 18A, 20, 21B, 21C
- Nepal Law Commission
See our related notes on trademark protection in Nepal, trademark classes and foreign trademarks in Nepal.
Preparing a Nepali filing, or weighing it against the one-year use rule? Talk to us.