Documents for Trademark Registration in Nepal

This Article provides an overview of Documents for Trademark Registration in Nepal. Preparing and submitting the correct documentation is crucial for successfully registering a trademark in Nepal. The Department of Industry (DOI), which handles trademark registrations, has specific requirements for various documents. Understanding these requirements can help applicants navigate the registration process more efficiently.

Documents for Trademark Registration in Nepal

The primary document for trademark registration in Nepal is the official application form:

1. Form TM-1: This is the standard application form for trademark registration.
2. Availability: The form can be obtained from the DOI office or downloaded from their website.
3. Language: The form must be completed in Nepali.
4. Required information: Includes applicant details, representation of the mark, goods/services list, and priority claim (if applicable).
5. Signature: Must be signed by the applicant or authorized agent.
6. Copies: Typically, three copies of the completed form are required.

Ensuring that the application form is correctly and completely filled out is crucial, as errors or omissions can lead to delays or rejections.

Trademark Representations

Submitting proper representations of the trademark is essential:

1. Number of copies: Generally, 8-10 copies of the trademark are required.
2. Size: Each representation should be no larger than 5 cm x 5 cm.
3. Clear depiction: The representation must clearly show all elements of the mark.
4. Color claims: If color is claimed as a feature, color copies must be provided.
5. Standard character marks: For word marks, a simple typed representation is sufficient.
6. Special format: Marks in special font or with design elements require high-quality graphic representations.

The quality and accuracy of these representations are crucial, as they define the scope of protection granted to the mark.

Power of Attorney

A power of attorney (POA) is required for all trademark applications in Nepal:

1. Mandatory for foreign applicants: Foreign entities must appoint a local agent through a POA.
2. Format: No official form; can be a general or specific POA.
3. Content: Must clearly authorize the agent to act on behalf of the applicant for trademark matters.
4. Signature: Must be signed by a person authorized to bind the applicant company.
5. Notarization: The POA should be notarized.
6. Legalization: Legalization by a Nepali embassy is recommended but not always strictly required.
7. Deadline: Can be submitted after filing, but within 3 months of the application date.

The POA is crucial for establishing the authority of the local agent to represent the applicant before the DOI.

Specimens of Use

Nepal does not require specimens of use at the time of filing a trademark application:

1. Intent-to-use system: Nepal operates on a first-to-file basis, not requiring actual use for registration.
2. No specimens needed: Applicants do not need to submit examples of the mark in use.
3. Declaration of use: While not required at filing, a declaration of intention to use the mark is part of the application form.
4. Post-registration use: Non-use for a continuous period of 5 years after registration can make the mark vulnerable to cancellation.

While specimens are not required, applicants should be prepared to use the mark in Nepal to maintain registration.

Read More: 1. Trademark Enforcement in Nepal 2. Application for Trademark in Nepal 3. Copyright Act, 2002

Translations for Foreign Language Marks

For trademarks containing text in languages other than Nepali or English:

1. Translation requirement: A Nepali translation of the foreign text must be provided.
2. Transliteration: For non-Latin scripts, a transliteration into Latin characters is also required.
3. Certification: Translations should be certified by a qualified translator.
4. Explanation of meaning: If the foreign text has a specific meaning, an explanation may be required.
5. Disclaimer: The DOI may require a disclaimer of exclusive rights to the translated terms if they are descriptive.

Accurate translations are important to allow the examiner to assess the registrability of the mark and to inform the public of its meaning.

Priority Documents

For applications claiming priority based on earlier foreign filings:

1. Certified copy: A certified copy of the priority application is required.
2. Deadline: Must be submitted within 3 months of the Nepali filing date.
3. Translation: If not in English, a Nepali translation of the priority document is needed.
4. Multiple priorities: If claiming multiple priorities, documents for each claim are required.
5. Certification: The copy should be certified by the trademark office of the priority country.

Priority documents are crucial for establishing the earlier filing date for examination purposes.

Proof of Corporate Status

For corporate applicants, proof of corporate status may be required:

1. Certificate of incorporation: A copy of the company’s registration certificate.
2. Good standing certificate: Document showing the company is currently active.
3. Certification: These documents should be certified by the appropriate authority.
4. Translation: Nepali translations are required for documents not in English.
5. Deadline: Can usually be submitted after filing, but before registration.

These documents help verify the legal status and capacity of the applicant to own trademarks.

Declarations of Use or Intent

While not strictly required at filing, certain declarations are part of the process:

1. Intent to use: The application form includes a declaration of intention to use the mark in Nepal.
2. Actual use: No separate declaration of actual use is required at filing.
3. Statement of use: May be required at the time of renewal to show the mark is in use.
4. Affidavit of use: In case of non-use cancellation actions, an affidavit of use may be needed to defend the registration.

These declarations help maintain the integrity of the register by ensuring registrants intend to use their marks in commerce.

Description of Goods/Services

A clear description of goods/services is a crucial part of the application:

1. Specific listing: A precise list of goods/services for which the mark will be used.
2. Class headings: While acceptable, more specific terms are recommended.
3. Nepali language: The list should be in Nepali, with English translations provided.
4. Multiple classes: Separate applications are required for goods/services in different classes.
5. Limitation: The scope of protection is limited to the goods/services listed.

The accuracy and specificity of this list are critical in determining the scope of protection granted to the mark.

Trademark Search Results

While not mandatory, submitting trademark search results can be beneficial:

1. Optional submission: Search results are not required by the DOI.
2. Recommended practice: Conducting and submitting a search can help address potential conflicts proactively.
3. Unofficial searches: Due to limited public access, comprehensive searches may be challenging.
4. Examiner’s search: The DOI conducts its own search during examination.
5. Relevance: Search results can support arguments for registrability in case of office actions.

While not required, search results can be helpful in anticipating and addressing potential obstacles to registration.

Legalization and Notarization

Requirements for legalization and notarization vary:

1. Power of Attorney: Should be notarized; legalization is recommended but not always strictly enforced.
2. Priority documents: Generally do not require legalization if certified by the issuing office.
3. Corporate documents: Notarization is typically sufficient; legalization may be required in some cases.
4. Declarations: Notarization may be required for certain declarations or affidavits.
5. Flexibility: The DOI may show some flexibility in extraordinary circumstances.

Applicants should consult with a local agent to determine the specific legalization requirements for their situation.

Supporting Documents for Famous Marks

For marks claimed to be famous or well-known:

1. No official requirement: Nepal does not have a formal famous marks registry.
2. Helpful evidence: Submitting evidence of fame can support broader protection.
3. Types of documents: May include advertising expenditures, sales figures, consumer surveys, and foreign registrations.
4. Translation: All supporting documents should be translated into Nepali.
5. Discretionary consideration: The DOI has discretion in weighing this evidence.

While not strictly required, such documents can be influential in obtaining broader protection for truly famous marks.

In conclusion, while the document requirements for trademark registration in Nepal are fairly standard, the specifics of preparation, translation, and submission can be complex. The emphasis on Nepali language documents and the potential need for legalization add layers of complexity, especially for foreign applicants. Working with experienced local counsel can be invaluable in ensuring that all documentation is correctly prepared and submitted, helping to avoid delays and complications in the registration process. As Nepal’s trademark system continues to evolve, some of these requirements may be streamlined or digitized, but for now, careful attention to documentary details remains crucial for successful trademark registration in the country.

FAQs