Nepal states its refusal grounds in a single proviso to section 18(1). There are five of them, they are drafted broadly, and the same five grounds reappear as the basis on which a registration can later be cancelled.
That double use is the thing to understand. In most systems the registrability grounds and the cancellation grounds are separate lists. In Nepal they are the same list, which means a mark registered despite one of them never becomes safe simply by being on the register.
Quick reference
| Ground | What it covers |
|---|---|
| Prestige | The mark may hurt the prestige of any individual or institution |
| Public conduct or morality | The mark may adversely affect public conduct or morality |
| National interest | The mark may undermine the national interest |
| Another’s reputation | The mark may undermine the reputation of another person’s trademark |
| Prior registration | The mark is found already registered in another person’s name |
And the same grounds support cancellation under section 18(3), after a show-cause opportunity.
What the proviso says
Section 18(1) requires the Department to register a mark on an application under section 17, after conducting the necessary investigation and giving the applicant a sufficient opportunity to be heard.
The proviso then withholds registration:
in case it is felt such trade-mark may hurt the prestige of any individual or institution or adversely affect the public conduct or morality or undermine the national interest or the reputation of the trade-mark of any other person, or in case such trade-mark is found to have already been registered in the name of another person, it shall not be registered.
Five grounds, expressed as things that may happen rather than things that have been established.
Prestige of any individual or institution
Broader than the “scandalous or obscene” and defamation-adjacent grounds in neighbouring statutes. It covers harm to the standing of a person or an institution, without requiring the person to be living, recently deceased or connected to the mark in any particular way.
For a brand built on a name, a historical reference or an institutional allusion, this is the ground to think about first.
Public conduct or morality
The familiar public order and morality bar, and as elsewhere it is assessed in context rather than in the abstract. A mark that is unremarkable in another market can be refused here.
National interest
This has no close equivalent in the trademark statutes of the neighbouring countries, which deal with State emblems and official signs through specific provisions rather than a general national-interest test.
It is a wide ground, and its breadth is the point: it is not confined to flags, emblems or official insignia.
The reputation of another person’s trademark
The relative ground, and note how it is framed. It is not a likelihood-of-confusion test and it is not limited to identical or similar goods. The question is whether the mark may undermine the reputation of another person’s trademark.
That phrasing is closer to a dilution test than to a confusion test, and on its face it is available to the owner of a reputation rather than only to the owner of a Nepali registration.
For a foreign brand owner facing a local filing of their name, this is the ground to build on — alongside section 21C, which requires the Department to extend the Paris Convention facility to a holder of a foreign registration. See foreign trademarks in Nepal.
Already registered in another’s name
The conflict ground proper, and it is expressed as a finding of fact: the mark is found to have already been registered in the name of another person.
Note what it does not say. It does not refer to similar marks, to similar goods, or to pending applications. The statutory ground is prior registration in another name, and anything short of that falls to be dealt with under the reputation limb instead.
The same grounds cancel a registration
Section 18(3): the Department may cancel the registration of any trademark if it is satisfied that any of the circumstances prescribed in the proviso to subsection (1) exists.
The proviso to that subsection protects the holder: the Department shall, before cancelling, provide a reasonable opportunity to the holder to show cause why the registration should not be cancelled.
So registration does not cure a ground. A mark registered despite the prestige, morality, national interest, reputation or prior registration grounds remains cancellable, with no statutory time limit on the Department’s power.
That is a materially different position from a jurisdiction with a conclusiveness provision, and it is worth factoring into any assessment of the strength of a Nepali registration — your own or an opponent’s.
See trademark cancellation in Nepal.
Raising the grounds as a third party
Two routes.
The 35-day complaint. Section 21A requires the Department to publish registered trademarks together with particulars of renewal or cancellation, and allows any person with an objection to the published particulars to file a complaint within 35 days of publication, after which the Department holds inquiries and takes necessary action.
Prompting a cancellation. Section 18(3) is framed as the Department’s own power, exercisable where it is satisfied a proviso ground exists. A party with evidence of a ground is in a position to put it before the Department.
See trademark opposition in Nepal.
What the Act does not say
Worth being explicit, because the gaps are where secondary material tends to fill in detail that is not statutory.
The Act contains no list of absolute grounds of the descriptive, generic or non-distinctive kind; no shape exclusions; no provisions on colour; no express bar on State emblems or international organisations’ emblems as a separate ground; and no honest concurrent use or consent provisions.
That does not mean none of those considerations is applied — the Department investigates applications under section 18(1) and the proviso grounds are wide enough to carry a good deal. It means the statutory basis is the proviso, and the way those considerations are handled in practice is a matter for the Department’s own procedure, which is worth confirming at the time rather than assuming from a neighbouring jurisdiction’s rules.
Frequently asked questions
What are the grounds for refusing a trademark in Nepal? Five, all in the proviso to section 18(1): harm to the prestige of an individual or institution, adverse effect on public conduct or morality, undermining the national interest, undermining the reputation of another person’s trademark, or the mark already being registered in another’s name.
Is there a likelihood-of-confusion test? Not as such. The conflict grounds are prior registration in another name, and undermining the reputation of another person’s trademark — the second of which is framed closer to a reputation or dilution test.
Can a registered mark be cancelled on the same grounds? Yes. Section 18(3) lets the Department cancel a registration where satisfied that any of the proviso circumstances exists, after giving the holder a reasonable opportunity to show cause.
Is there a time limit on cancellation? The Act does not provide one for cancellation under section 18(3), which is a difference from jurisdictions where registration becomes conclusive after a period.
How can a third party raise these grounds? By complaint within 35 days of publication under section 21A, or by putting evidence before the Department in support of cancellation under section 18(3).
Does the Act deal with descriptive or non-distinctive marks? Not expressly. The statutory grounds are the five in the proviso, and how distinctiveness considerations are applied is a matter of Departmental practice rather than a statutory list.
Useful official resources
- Department of Industry, Nepal
- Patent, Design and Trade Mark Act, 2022 (1965) — sections 17, 18, 21A, 21C
- Nepal Law Commission
See our related notes on trademark cancellation in Nepal, trademark opposition and foreign trademarks in Nepal.
Facing a Nepali refusal, or a local registration of your brand? Talk to us.