An assessment of Nepal’s 5 major trademark cases

The Supreme Court of Nepal has clearly stated what a trademark is according to legal standards and who should have ownership of it.

The following is an explanation of the trademark in the case of Tejram Dharampal of Delhi, India vs. Shri Ganapati Toba’s Pvt. Ltd. (NKP 2076 Decision No. 10303 Page 3842).
Intellectual property is fundamental human creation; every person’s fundamental creation is considered his intellectual property, and a trademark is used to identify that intellectual property. Trademarks are a form of intellectual property.

The inventor has complete ownership of his intellectual property, which he uses for commercial and other purposes. Despite the fact that it is governed by the domestic laws of several countries, it is currently governed by international law.

Section 2 of Article 15 of the TRIPS Agreement defines a trademark as “any sign, or any combination of signs, capable of distinguishing one undertaking’s goods or services from those of other undertakings.” Trademark registration is available for words, letters, numbers, figurative elements, and color combinations, as well as any combination of these signs.” which specifies the requirements for trademark registration.

Similarly, according to the Patent Design and Trademark Act of 2022, a trademark is “a word, symbol, or image or a combination of words, symbols, and images used by a firm, company, or individual to distinguish its product or service from other goods or services.” In N.K.P. 2062 Issue 5 No. 7536, petitioner Nur Pratap Rana stated that the principle of “trademark nature is used to identify the products of an industry and to distinguish them from others.”

According to the definitions and principles stated above, a trademark is any firm, company, or individual who uses any word, symbol, or image, or a combination of these three things, to symbolically identify their creation, distinguish it from others, and confirm that such product is their creation. A trademark is a symbol that represents a product, and a customer can obtain information about the related product, the characteristics and qualities of its product, and form an opinion about that product based on the trademark.

Because a trademark is a component of industrial intellectual property, it is recognized that the creator concerned should have the right to protect the creator’s product (intellectual property) and to promote and protect the product. Such recognition provides the legal foundation for creators to register and exploit intellectual property and trademarks.

Because the trademark represents the goods or products and is closely related to the safety and protection of the product or goods, there is a legal provision to register the trademark in the name of the product to which it belongs in order to protect, preserve, and have full rights over it.

Also according to Article 16 of the Patent, Design, and Trademark Act of 2022, a person can register his or her trade or business with the department in accordance with Article 18 and obtain the right to use that trademark under the Act. If a manufacturer or creator of a trademark related to a product, goods, or trade registers it under this legal provision, the manufacturer or creator owns it.

1. Madan Prasad Lamsal vs. Repsona Publications Pvt. Ltd. (N.K.P. 2068 Decision No. 8686 page 3308)

Concerning the publication of Madan Prasad Lamsal’s Business Age magazine, the word BUSINESS AGE and the collective form of the label were registered as a trademark in such a way that it could be used exclusively as their trademark. Repsona Publications is the sole owner of the trademark for the compound word BUSINESS AGE. Hari Kumar Rai, Managing Director of Repsona Publications Pvt. Ltd. (Hari Rai Editor in the Magazine), was sued for publishing the magazine as an editor and publisher under a similar type of trademark. On the case, the following order was issued:

a. The law in Nepal only protects registered trademarks. However, no matter how long a non-registered trademark has been used, its creator or user will not be able to obtain the exclusive right to use the trademark.

b. Because the owner or user firm, company, or individual will not have exclusive rights to a trademark solely based on its use, if the same trademark is used or claimed by two firm persons or company, the person in whose name the trademark is registered will be recognized as the true owner of the disputed trademark.

No one has the legal right to acquire, use, or claim a trademark solely on the basis of its use, and no other person, firm, or company has the right to use a trademark registered in such person’s name without his/her permission.

2. Nerolac Paints Ltd. vs. Rukmini Chemical Industries Pvt. (NKP 2077 Decision No. 10561 Page 60)

The Supreme Court issued the following order regarding the registration of a trademark similar to Nerolac Paints Ltd. of India by Rukmini Chemical Industries Pvt. Ltd. in Nepal:

a. If any registered trademark and words are similar, or if any letters are the same, or if a letter is copied in the middle or at the end, or by adding a few things, or if any word or symbol looks similar, such shall be regarded as having been presented to deceive.

b. There shall be no statute of limitations for such trademark registration if a trademark of another company or a foreign company is registered with malicious intent, or if the company and the Office of Company Registrar did not show pure intent from the process of registration of such trademark or from the beginning of the trademark registration process.

3. Sun Fitting Pvt. Ltd. v. SANDEEP INDUSTRIES located at 25-Netaji, Subash Road, Punjab, India (NKP 2076 Decision No.10304 Page 1624)

Both Sandeep Industries, an Indian company, and Sun Fitting P. Ltd, a Nepalese company, registered the trademark ‘Sun.’ Sun, which has been popular in India since 1979, has built a reputation by importing hardware into the Nepali market since 1981. The case was filed under Sub-section 1 of Section 18 of the Patent, Design and Trademark Act, 2022, claiming that the reputation of Sandeep Industries’ trademark Sun has declined due to the similar trademark of Sun Fitting P. Ltd. “… if it is likely that someone else’s trademark will be tarnished… the trademark will not be registered.” where The Indian company claims that the trademark application should be invalidated because the trademark  called SUN cannot be registered.

Because Nepal is a signatory to the Paris Convention for the Protection of Industrial Property, Article 6 of the Paris Convention A (1) of Quinques states that “Every trademark duly registered in the Country of Origin shall be accepted for filing and protected as in the other countries of the Union…” The trademark shall be registrable, except in the cases of I, II, and III of “B” of the same Article, and the trademark SUN, of which Sandeep Industries is a part, is registrable. According to A (1) of Article 6 Quinques of the Paris Convention, Sun Fitting P. Ltd. Sandeep Industries claims that the application should be rejected because registration as SUN is not possible.

Fact in question:

Trademarks registered outside of Nepal, even if not registered in Nepal, should be recognized.

Supreme Court precedent:

A trademark not only identifies the product produced by the company or entrepreneur, but it also helps to maintain the product’s source and quality while distinguishing it from other businesses or brands that produce similar products.
Because trademark words, images or logos, designs, or other introductory figures are used to differentiate various goods entering the market, the purpose of trademark registration is essentially to introduce the goods or items to the public in an introductory manner and to remove the negative illusion of maintaining the quality of the goods.

The trademark owner will have the right to prevent others from using his or her trademark in an unauthorized way that causes confusion or deception.If it is not possible during the investigation to register the trademark and issue a certificate, the trademark cannot be provided solely on the basis that the application for trademark registration has already been registered.

4. Tejram Dharampal of Delhi, India vs. Shri Ganapati Tobako Pvt. Ltd. (NKP 2076 Decision No. 10303 Page 3842)

First and foremost, Nepal’s Ganpati Toba’s Pvt. Ltd. applied to the Department of Industry to register the RAJ NIWAS trademark in its name. Tejram Dharampal of India counters that the RAJ NIWAS trademark product is currently registered in India and even in third countries, where the video advertisement can also be seen on YouTube.

Supreme Court precedent: 

A trademark is a symbol, image, or combination of all three used by a firm, company, or individual to symbolically identify their creation, distinguish it from others, and confirm that such product is their creation.

Being in the trademark registration process and having received a registration certificate are two different things. Because the law allows for the registration of trademarks in other countries, such a certificate of registration must be submitted along with the application for registration with the Department of Industry.

In the case of a non-receipt of a trademark registration certificate from abroad, mentioning it in the application does not imply that such certificate was obtained.

5. Sumi Distillery Pvt. Ltd. v. Guinness United Distillers Vintners Amsterdan Bv (now known as Diageo Bronds SBV) NKP 2068 Decision No. 8577 pages 4588

The CORDON trademark was registered in the name of Nepali Udyog Sumi Distillery Pvt. Ltd., and the Netherlands-based Guinness United Distillers Vintners Amsterdan Bv (currently Diageo Bronds SBV) has applied for GORDON’s trademark registration in Nepal, which may cause confusion among ordinary consumers.

Supreme Court precedent:

a. Patent design and trademark are essential for every industry. Regardless of how liberal the economy is and how limited the government’s role is to licensing, the industry will have exclusive rights to industrial property such as patents, designs, and trademarks.

b. In a country with an open economy, the government, not a single industrialist, ensures competition for goods.The same beneficial law is passed. In such a case, however, it is considered the state’s public duty to develop and use the patent, design, and trade mark used in any product or service, to protect the consumer’s interest in the product or service made by an entrepreneur and businessman, and to protect such patent, design, and trade mark.

The primary responsibility of the state will be to protect intellectual property as well as any other property acquired by an individual.

According to the legal provisions of the Patents, Designs, and Trademarks Act, 2022, trademarks in Nepal must be registered with the Department of Industry for protection, and after registration, the department may revoke the registration if the registered trademark tarnishes the reputation of another’s trademark.

6. Mount Everest Brewery Pvt. Ltd. vs. United Brewery Nepal Pvt. Ltd. (NKP 2067 Decision No. 8356 Page 3153)

Mount Everest Brewery, another beer company, fills its products, San Miguel Beer and Golden Tiger, in empty bottles of Tuborg beer and lettering produced by Gorkha Brewery Pvt. Ltd., which the United Brewery infringed by using them in their beer.

a. Industrial goods producers have two types of ownership rights in the goods they make. The first important intellectual or industrial property right is physical ownership of the goods produced in this manner, while the trademark or design used to distinguish the goods produced by other competing producers from the goods produced in this manner is considered the second important intellectual or industrial property right. Because the nature of each of these two rights differs, so does the process of selling or transferring each of these rights.

Physical ownership of such industrial products or commodities is transferred through a straightforward buying and selling process.However, the law governs the process of transferring intellectual property, such as trademarks or designs used or used in such items. Without such a procedure, such a transfer of rights cannot occur, and ownership of such trademark and other intellectual property will remain with its legal owner until such transfer of rights is completed.

b. Physical ownership of the product is transferred to the buyer after the product is sold. However, the producer’s intellectual property rights in the said item have not been transferred to the buyer as a result of the sale process. Such rights remain with the producer.

c. Beer and its inscribed trademarks, i.e. intellectual and industrial property, are not for sale or purchase. Following the consumption of the bottled beer, the purchaser who acquires physical ownership of the bottle may have the right to break the bottle, break it, destroy it by any means, or make it into another item or make a new bottle out of it.

Purchases and sales may be made for reasons other than selling to end users. However, because the “trademark” inscribed on the bottle is an intellectual and industrial property rather than a physical property, the buyer of the bottle has no right to such intellectual and industrial property.Furthermore, they may not use such trademark-marked bottles or wrappers to pack goods of the same nature, or to harm or mislead the general consumer.

Should you have any questions, please do not hesitate to contact us at +977-9745374671 or by email -info@corporatelawyernepal.com

Note: Author: Pram Singh Maharjan- Intern at Prime Legal Consultants and Research Center

Supervisor- Alpana Bhandari, Founding Partner & CEO at Prime Legal Consultants and Research Center

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