Trademark Protection System in Nepal & in International Level

 

 

-Janak Bhandari*

glap@wlink.com.np

 

 

Introduction of Trademark:

 

Today intellectual property is a major aspect of the world trade. Trademark is one factor of that which travels around the world by its quality product and popularity. Therefore, in world market place to save the goodwill of the products through the trademark every country has developed the legal rule to protect the trademark.

 

A consumer is duped if he buys a commodity presuming it to have originated from a certain identified source when actually it is not and later he finds the commodity substandard. In the process the reputation of traders suffers if spurious goods are sold as those originating from him. The interests of both the consumer and trader can be saved if some definite symbol which marks out the origin of goods from a definite trade source is attached with the goods emanating from such source. Such symbol is called a trademark.  Regarding the trademarks aspect the following definitions may clear what the trademark is in actual sense.

 

Trademarks are diverse and familiar feature in both industrial and commercial markets. Trademarks have long been used by manufacturer and traders to identify their goods and distinguish them from goods made or sold by others.[1] 

 

A Trademark is a sign capable of distinguishing the goods or services produced or provided by one enterprise from those of another enterprises. [2]

 

Trademarks are "visible signs" which serve to identify the goods or services of an enterprise and to distinguish them from those of another. The term "visible sign" is very broad in scope and includes any of the following or combinations thereof: "arbitrary or fanciful designations, names, slogans, devices, numbers, letters, pictures or symbols, labels, combinations or arrangement of colors, and shapes of containers or of the goods themselves."[3]

 

In Nepal regarding the definition of trademark the Patent Design & Trademark Law 1936 (1993 BS), define as "the sign which is affixed in the goods to know whose goods is this or to know who made this goods."

 

The Patent Design & Trademark Act 1965 (2022 BS) define the trademark as " a word or symbol or illustrations or a combination of the three to be used by a firm, company or person to distinguish their products or services from those of others."[4]

 

In the International aspects TRIPs define a trademark as "any sign or any combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertaking.'[5]

 

By above definitions it is known that the trademark are distinctive signs that are used to distinguish products whether goods or services, of one undertaking from another's. Which helps consumers decide which goods to buy and thus serve the competitive market interest of an enterprise as well as general economic interests.

 

The main feature of trademark is "Distinctiveness", which became associated with quality and consumers expectations in a product or service.

 

 

Historical development of Trademark:

 

Trademarks are not a creation of our times. It has a long History. Trademarks as marks of origin were affixed by the makes of bricks, leather books, weapons, cooking ware and other things even in the ancient cultures. These marks were either letters usually initials or other symbolic sign stamped on the goods to signify the maker of product. Such makings were also used as signs of ownership. The English word "brand" often used synonymously with trademark even today, reflects of this brand today was the marking placed on cattle by farmers with hot irons.[6]

 

In the Roman times it was common for pottery to be embossed or impressed with a mark.[7] Merchant's marks were used in commerce in Britain from the thirteenth century; William Caxton used the mark W74C and gold and silver articles were hallmarked as early as the fourteenth century. By the end of the sixteenth century it was very common for shopkeepers to erect signs illustrating their trade. Traders took to using cards bearing their name and address, often accompanied by a device of some sort, an early form of business card.[8]

 

Trademark although not yet called by that "term of art" a word created only in 19th century continued to play a similar role throughout the greater part of History, including medieval time and the centuries beyond.[9]

 

In regarding the Nepalese trademark law history, it is not found any trademark law before the enactment of Patent Design & Trademark Law 1993 BS. After enactment of this Act, one of the merchants from Indrachowk, Kathmandu has registered a trademark in 1994 BS for his mustard oil products, and that was a first trademark registered in the history of Nepal.[10] Several foreign marks also registered under this law and some of these marks still existed.

 

The existing Patent Design & Trademark Act 1965 repealed old one. Under this Act there are around 27000 trademarks are registered domestic and foreign owners.

 

 

Trademark protection System:

 

 

As understand that the trademark is a distinctive sign, which identifies certain goods and services as these produced or provided by a specific person or enterprise. Distinctiveness is the main feature of the trademark, and the trademark performs the following functions:

 

1.                  It identifies the product and its origin

2.                  It guarantees unchanged qualities

3.                  It advertise the product

 

For the protection of trademark it is need to register in home country and other countries, where the business is made or the entrepreneurs wished to protect. In home country which is nation of origin the protection is available under the national law, but for the international protection it is need to follow the rules provided by the various international treaties, agreements & conventions.

 

Trademark Protection System in Nepal:

 

1.         Patent, Design & Trademark Law, 1936 (1993BS)

 

 This law gives the right over the trademark after having its registration with the concerned authority. In which mentioned that" Everyone can registered his trademark to the concerned authority.[11] At that time the law had a provision of compensation or jailed for infringing the others trademark. The authority can compensate the infringer

 up to 200 Rupees or 6 months jailed and along with the confiscation of all the articles connected with an infringement.[12]

 

Under this law there were protected various national and foreign marks. Some of them are still existed by making the continuous renewal.

 

2.         Patent, Design & Trademark Act, 1965 (2022BS)

 

 

Under this Act the right is protected under the registration of trademark with the concerned authority. The trademarks are registered in Nepal if such trademark would not damage the reputation of any individual or institution, or be likely to adversely affect public conduct or morality or the national interest, or the reputation of the trademarks of another person, or where such trademark is found to have already been registered in the name of another person.[13] These are the restrictions to registrations. The trademark that passed these restrictions during the search & examination conducted by the Registry after receiving application, these may register.

 

There is provision of USE of trademark after having registration. If the trademark is not brought into use within one year from the registration, the Registry after making necessary investigation cancel the registration of such mark.[14]

 

Regarding the duration of trademark this act provides the 7-year period protection after having the registration and can be renewable for further after completion of each 7 years.

 

The protection of infringement matters, the Act made the provision as "if the Department found an infringement the infringer shall be liable for a fine of Rs. 100000 and confiscation of all the articles connected with infringement."[15] This act does not have a provision of jailed to the infringer.

 

In the litigation aspect the Registry (Department of Industries) has a semi-judiciary authority. Appeal against the decision of Department can be filed in appellate court and after then Supreme Court. Regarding the remedy of injunction the Act is quite, but in practice it can be done through the provision of Civil Right Act 2012 BS.

 

 

 Protection of Trademark in International Level

 

There are various treaties, agreement and conventions for the international trademark protection. In this aspect we will see the major provisions of these treaties in brief separately.

 

1.         Paris Convention for the Protection of Industrial Property Protection, 1883

 

 

This is the first international convention for the international system of trademark protection along with other industrial property. This was drafted in 1880 and came into force in 1884. It has been revised several times, most recently in Stockholm in 1967. It was last amended in 1979. [16] We will see the major provisions of this convention for protection of trademarks.

 

 The first major provision of this convention is the National Treatment for the applicant of member countries. The one member country treated as the own national for the applicant of another country and distributed the same privileges also. In convention it is said that "National of any country of the union shall, as regards the protection of industrial property, enjoy in all the other countries of the union the advantages that their respective laws now grant, or may hereafter grant, to nationals"[17]

 

Another major aspect of this convention is the Right of Priority, an application for the registration of trademark in own home country gets its priority in other member countries also from the date of first application filing, the priority claim in the other country within a period of 6 months.[18] This is a great benefit if in the mean time someone else had filed for the same trademark in those other countries.

 

Further, trademarks duly registered in the country of origin shall be accepted for filing and protected as in the other countries of the Union. The only reasons under which the trademark offices of those other countries may refuse the registration is when the trademark infringes rights acquired by third parties in those countries, where the trademark is devoid of any distinctive character, or when the trademark is contrary to morality or public order or may deceive the public.[19]

 

These are the major provisions of this convention for the international protection of trademark.

 

 

.2.        The Madrid Agreement Concerning the International Registration Marks, 1891

           

 

This agreement was signed on April 14, 1891, and entered into a force on July 15, 1892. It has been revised on number of occasions, the most recent being in 1967 and amended in 1979. It is part of the Paris Convention, but only for the ratifying countries. Most of the industrialized countries have ratified the Madrid agreement, with the exception of the United States, Japan, United Kingdom, Ireland and the Scandinavian countries etc.[20]

 

The World Intellectual Property Protection (WIPO) administers this agreement. This Agreement simplifies international registration procedures for the acquisition of trademark protection by providing for a single international application upon payment of single fee.  The System of Madrid Agreement may be summarized[21] as follows:

 

v     a citizen or a legal entity of a member state owns a registered in the country of origin;

v     on the basis of the home country registration , the trademark owner applies for the international trademark registration through the national office to the International Bureau of WIPO, indicating the member countries in which the applicant like to have trademark protection,

v     the International Bureau makes the registration and passes the application to all the designated member countries

v     in each of these states, the international application is treated as a national application,

v     the states have one year from the date of application receiving in which to refuse the registration of their country,

v     and if they do not send the notification about refusal within period of 12 months, the trademark automatically been registered in these countries.

 

Under this system there are two major aspects, one is home registration must be required to file an international application and second aspect is that if the trademark is registered internationally, the trademark protection is available if the trademark is canceled in home country after the five years of registration.  But if the trademark canceled in home country within the period of 5 years from the date of registration all the international protection[22] will also ended.

 

 

3.               The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989

 

The Madrid Protocol was signed on June 27, 1989 and entered into force on April 1, 1996. It contains basically the same provisions as the Madrid Agreement. But there are some important differences.

 

The Protocol permits the international registration on the basis of a national application instead of national registration[23]. Other procedures are as same as applied in Agreement regarding the application till it enters into the national phase.

 

Furthermore, the protocol extends the deadline to make a notification to the applicant and WIPO that registration has been denied to eighteen months. If opposition to protection is raised by a third party the deadline is extended an additional seven months.[24]

 

Although the protocol is new treaty independent from the Madrid Agreement and introduces new procedures for international registration, both are intended to be linked by means of common implementation regulation, which entered into a force an April 1, 1996 as a Madrid System.

 

The interesting provisions about these agreement and protocol is, if the country of origin is member of both the agreement and protocol, and the countries where the international application should made also the member of both, then the provisions of the agreement take precedence over the provision of the protocol in these countries.[25]

 

 

4.   The Trademark Law Treaty 1994

 

 

The Trademark Law Treaty (TLT) was adopted in October 27, 1994 and signed in Geneva on October 18, 1994 by 39 member countries of WIPO. The Treaty entered into a force on August 1, 1996, three months after the date on which the Treaty was ratified by a minimum five countries and now effects in many countries.[26] It is the result of initiatives undertaken by WIPO for the preparation of a new international trademark agreement. Basically it simplifies, harmonizes and streamlines procedures for obtaining and maintaining a trademark in countries party to the treaty. The goal of this treaty was to simplify and harmonize trademark registration world wide through changing to the laws of individual member nations.[27]

 

 The Principal features of trademark protection practice which treaty seeks to harmonize include, the followings: [28]

 

v     The initial registration and renewal terms of trademark registrations s will be ten years. Applications to renew trademark registration may file up to six months following expiration of the term.

v     In this treaty a single application may file to cover multiple international classes

v     Service marks are given the same protection s trademarks under the Paris convention.

v     One power of attorney may be submitted for each applicant and member states may not require the signatures on powers be authenticated

v     the documentation procedures such as the submission of multiple powers of attorney, certificates of incorporation or corporate status, chamber of commerce certificates, certificates of good standing , witness requirements, authentication, certification and legalization requirements will be alleviated

v     Contracting states must comply with the Provisions of the Paris Conventions. The TLT also provides model forms, which the contracting states are encouraged to adopt for their own trademark offices.

 

 

5.         Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) 1994

 

 

TRIPS is a part of and parcel of World Trade Organization (WTO) set up as in annexure 1-c to the Marrakesh Agreement by which WTO was established. Objects of TRIPS are to give protection and enforcement of intellectual property rights to be required for the promotion of intellectual innovation.[29]

 

 The TRIPS Agreement imposes an obligation on its participant states to apply the Paris Convention standards relating trademark[30]. It also cross refers to those provisions at a number of points, supplements some of them in significant respects and imposes its own obligations in addition thus is adopting a broad definition of the signs capable being marks, it requires trademark registration to extend to marks for services.[31]For the first time in international intellectual property law, the section on trademarks of the TRIPS agreement gives a clear definition what constitutes a trademark and lays down[32] the definition we already mentioned in chapter-1 in definition.

 

As these, TRIPS extends the Paris Convention provision on the protection of well-known marks to service marks and to cases of dilution by use for different goods and services where that use is damaging.[33]

 

Use may not be used automatic precondition of registration, though it is to be taken into account in assessing distinctiveness.[34] Removal for non-use can occur only after a period of at least three years.[35]The term of a grant before renewal of a registration must be at least 7 years.[36]

 

 

While it is proper to require the use of a house mark in addition to product mark, other incumbrances, such as use with another trademark, use in a special form or use in an manner detrimental to its capacity to distinguish, are forbidden, as is compulsory licensing.[37] Assignments, more over, are to be permitted with or without the transfer of the related business. Developing countries have some times sought to impose trademark curbs with a view to controlling technology transfers involving trans-national corporations. These hopes have largely proved vain and have been curtailed or abandoned. TRIPS will help to bury them.[38]

 

Basically TRIPS do the following not only for the trademark protection but also for the whole Intellectual property system.

 

v     Establishing minimum standards for intellectual property rights protection in the national systems of WTO members

v     Prescribing agreed elements of an effective mechanism for administration and enforcement of intellectual property rights

v     Creating a transparency mechanism each WTO members is required to provide details of their national intellectual property laws and systems, and to answer questions about their intellectual property systems

v     Creating a predictable, rules based system for the settlement of disputes about trade-related intellectual property issues between WTO members

v     Allowing for mechanisms that ensure that the national intellectual property systems support widely accepted public policy objectives; such as stamping out unfair competition, facilitating transfer of technology, and promoting environmental protection

 

TRIPS Agreement is not itself an international law but it is the guidelines for the state, where the national laws must be meet the compliant with the provisions of TRIPS Agreement.

 

 

6.               The Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, 1957

 

This agreement adopted in June 15, 1957 and entered into force on April 8, 1961. This agreement has established a special union which known as "Nice Union" composed of all state party to the agreement.[39] In a trademark application an applicant must indicate the class numbers as defined in this agreement, it is clear to everybody what the trademark protects.

 

Under this agreement there are 34 classes in regarding the goods and 11 classes for services, total 45 classes.

 

Various countries that are not a party to the agreement also use this classification system. Nepal also used system without becoming the party of this agreement.

 

 

7.   The Vienna Agreement 1973

 

 

This agreement was adopted at the close conference on 1973 and entered into force in 1985. The purpose of this agreement is to establish an international classification for the figurative elements of trademark. Means not all trademarks are covered by this classification but only those trademarks which contain figurative elements, like stars, human beings, animals, plants, etc.[40]

 

 

8.   The Lisbon Agreement 1966

 

This agreement came into force in September 25, 1966, for the protection of appellations of origin of Geographical indications, which is applied for a mark or word, used in connection with the goods or services. Some geographical indications have a particular descriptive meaning in the mind of the potential consumers due to the particular characteristics of products from that source. For example, the word "Champagne" is geographical indication, which, while referring to an area in France, has also developed a strongly descriptive meaning with regard a wines. A geographical indication that has this type of additional meaning is referred to as an appellation of origin.[41]

 

Article 5 of the Agreement provides for the international registration of appellations of origin. Registration is effected by the competent Office of the country of origin. This applies in the name of any natural persons or any legal entities, public or private having a right to use the appellation, according to their national legislation.

 

Registered appellations of origin enjoy full protection in the member countries of the Lisbon Union such time as it loses protection in country of origin.[42]

 

These are the international treaties and the provisions of which is the system of international protection trademarks.

 

 

Conclusion:

 

A trademark is a sign creates distinctiveness, the main function of which is to enable consumer to identify a product or origin. This developed from the ancient time when the makers of bricks put the mark in bricks. As we see this is the very valuable asset, that’s why it needs to protect. And the protection is available through national or international system.

 

As we discussed above the national protection is available through the national law, in Nepal the protection is available under the Patent Design & Trademark Act, 1965. This has a many lacks in regarding the protection & enforcement of trademark rights, after having the WTO membership the law need to be change to meet the minimum requirements provided by the TRIPS agreement.

 

In the aspect of International system of protection we discussed various treaties, agreements, and conventions relating to the trademark. Every treaty have own importance, it is seen that the Madrid System & the TRIPS is the major role to protection the trademark in International level. The Madrid system provides the International registration services through WIPO and TRIPS defining the basic rules of protection of intellectual property in international trade.

 

Nepal is a member of the W.T.O. and it need to change their law to compliant TRIPS Agreement, for this exercise is ongoing, and hope to get the new Intellectual Property law very soon which may more supportive to better protection & enforcement of the trademark rights in Nepal.

 

 

 

 

 

 



* Advocate, Patent & Trademark Attorney, (LLM in Business & Int'l Trade Law)

 



[1] David Bainbridge, Intellectual Property, Fifth Edition, Aditya Books Private Limited. (2003), P. 531

[2] Making a Mark, An Introduction to Trademark for small and medium sized Enterprises, WIPO,( 2004), P.3

[3] Guide on the Industrial Property Activities of Enterprises in Developing Countries, WIPO, Geneva, (1995), P. 25

[4] Section 2C

[5] Article 15.1 of TRIPs Agreement

[6] Supra Note 1 at P. 27

[7] Supra Note 3 at P. 531

[8] ibid

[9] Supra Note 1 at P. 27

[10] From the source of DOI

[11] Section 24 (a), Patent Design & Trademark Law 1936

[12] Section 25 (a & b), Patent Design & Trademark Law 1936

[13] Proviso Section 18(1), Patent, Design & Trademark Act 1965

[14]  Section 18(C), Patent, Design & Trademark Act 1965

[15] Section 15, Patent, Design & Trademark Act 1965

[16] Supra Note 1 at  P. 4

[17] Article 2(1), Paris Convention

[18] Article 4C(1 & 2), Paris Convention

[21] ibid

[22] Article 6 (1) , Madrid Agreement

[23] Supra Note 22

[24] ibid

[25] Supra Note 21, 3/14/05

[27] General Information, WIPO, (2004),p. 7

[28] Supra Note 28,  3/14/05

[29] Supra Note 1 at  P. 302

[30] TRIPS Article 2(1)

[31] ibid Article 15

[32] Jayshree Watal, Intellectual Property Rights in the WTO & Developing Countries, Oxford, (2002),P. 248

[33] TRIPS Article 16

[34] ibid Article 15(1), (3)

[35] ibid Article 19

[36] ibid Article 18

[37] Supra Note 2 at P. 524

[38] ibid

[39] Background Reading Material on Intellectual Property, WIPO, (1988), P. 184

[40] ibid at  P. 185

[41]ibid

[42] ibid