Foreign Trademarks in Nepal: Registration Is the Only Route

Two short sections decide how a foreign brand owner stands in Nepal. One of them closes a door and the other opens a narrower one.

Quick reference

A foreign registration does not reach Nepal

Section 21B is unambiguous:

The title to any patent, design or trade-mark registered in a foreign country shall not be valid in Nepal unless it is registered in Nepal by the concerned person.

So there is no automatic recognition and nothing to argue about. A brand with registrations across the region and nothing in Nepal has no Nepali title.

Three other provisions push in the same direction and are worth reading together with it.

Section 16(1): title to a trademark is acquired upon registration at the Department.

Section 18B: no trademark may be used as a registered trade-mark without registering it at the Department — breach of which is an offence under section 19.

Section 19: the enforcement provision is built entirely around registered marks and marks cancelled under the Act.

The Act contains no passing off provision, no unfair competition provision and no well-known marks provision. For a foreign owner, the practical consequence is that registration is the strategy, not one option among several.

The section 21C route

Section 21C is the provision worth knowing, and it is easy to miss because it sits among the miscellaneous sections rather than with the registration machinery:

The Department may register patents, designs and trade-marks registered in foreign countries without conducting any enquiries if an application is filed for their registration along with certificates of its registration in a foreign country, and the Department shall provide the facility of pursuant to the Paris Convention for the Protection of Industrial Property 1883 to the registration holder.

Two limbs, doing different things.

Registration without enquiries. Where the application comes with the foreign registration certificate, the Department may register without conducting enquiries. That is a streamlined route, and it is why a home registration certificate is the central document in a Nepali filing for a foreign applicant.

Note the word “may”. It is a facility, not an entitlement, and the refusal grounds in the proviso to section 18(1) are not disapplied by it.

The Paris Convention facility. The Department shall provide the facility pursuant to the Paris Convention to the registration holder. Nepal acceded to the Paris Convention in 2001 and the obligation is expressed as a duty rather than a discretion.

What to file

Drawing section 17 and section 21C together, a foreign applicant’s filing is built around:

• the application in the format prescribed in the Schedule to the Act;
• four specimens of the mark;
• the application fee;
• the foreign registration certificate, for the section 21C route; and
• the appointment of an attorney or legal practitioner under section 20, whose actions are deemed to be the applicant’s own.

A separate application is required for each category of goods or services under section 18A, and the registration fee is payable separately to obtain the certificate.

See filing a trademark in Nepal.

No Madrid route

Nepal is not a member of the Madrid Protocol. There is no international registration designating Nepal, and a Nepali business cannot use a Nepali mark as the basis for an international application.

Across the region:

• India — Madrid member since 2013.
• Pakistan — Madrid member since 24 May 2021.
• Nepal — not a member.
• Bangladesh — not a member.
• Sri Lanka — not a member.

So an international registration reaches India and Pakistan. Nepal, Bangladesh and Sri Lanka each need a direct national filing through local agents, on their own timetables and their own terms.

The terms are the part that breaks a shared diary. Nepal runs seven-year cycles with a renewal window that opens at expiry; Bangladesh starts at seven and renews at ten; Sri Lanka and Pakistan run ten. See trademark renewal in Nepal.

If someone else registered your brand first

The Act gives a foreign owner two things to work with, and neither requires a Nepali registration of your own.

The reputation ground. The proviso to section 18(1) withholds registration from a mark that may undermine the reputation of the trade-mark of any other person. It is not framed as a likelihood-of-confusion test and it is not expressed to require a Nepali registration. The same ground supports cancellation under section 18(3), with no statutory time limit, after a show-cause opportunity to the holder.

The one-year use rule. Section 18C requires the Department to inquire and cancel where a registered mark has not been brought into use within one year of registration. Against a speculative or blocking registration, this is often the most direct route, because the period is so short.

The procedural windows are a complaint within 35 days of the publication of a registration under section 21A, and otherwise putting material before the Department in support of cancellation. See trademark opposition in Nepal and trademark cancellation in Nepal.

Planning a Nepali filing

File it, and file it close to launch. Section 18C makes an early speculative filing riskier than elsewhere.

Bring the home registration certificate. It is the document section 21C is built around.

Keep the categories tight, and add others under section 18A(3) as the business reaches them.

Diary the seven years and the one year separately. They are different obligations with different consequences.

Confirm current Departmental practice. The Act is short and the rules under it are not published in English, so procedural detail — document requirements, timetables, how priority claims are handled in practice — is best settled with the Department or local counsel at the time rather than taken from secondary material.

Frequently asked questions

Is my foreign trademark registration valid in Nepal? No. Section 21B provides that title registered in a foreign country is not valid in Nepal unless registered in Nepal by the person concerned.

Does my foreign registration help at all? Yes. Under section 21C 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.

Is Nepal in the Madrid System? No. Nepal is a Paris Convention member, since 2001, and a WTO member, but not a Madrid member. Protection requires a national application.

Can I file in Nepal myself from abroad? Section 20 allows the appointment of an attorney or legal practitioner, whose actions are deemed to be the applicant’s own, and that is the practical route for a foreign applicant.

What if a local party has already registered my brand? The refusal and cancellation ground concerning undermining the reputation of another person’s trademark is available, as is the one-year use rule where the mark has not been put into use. A complaint can be filed within 35 days of publication, and otherwise material can be put before the Department in support of cancellation.

Can I rely on passing off in Nepal? The Act contains no passing off or unfair competition provision, and no statutory action for an unregistered mark, so registration is the route.

Useful official resources

• Department of Industry, Nepal
• WIPO Paris Convention — contracting parties
• Patent, Design and Trade Mark Act, 2022 (1965) — sections 16, 17, 18, 18A, 18C, 20, 21A to 21D

See our related notes on filing a trademark in Nepal, trademark cancellation and trademark protection in Nepal.

Taking a brand into Nepal, or dealing with a local filing of it? Talk to us.