Key Points - Trademark Registration and Protection in Nepal

 

In the present highly competitive business environment, economies across the globe are becoming increasingly knowledge and technology-oriented, due to which, Intellectual Property (IP) has gained significant importance too. In line with this global development, Nepal has recognized the value of IP as well. There is indeed a growing trend in the nation both on the part of the legislators and the judiciary to give adequate protection to IP assets and enforce Intellectual Property Rights (IPRs – including trademarks, patents, copyrights, and industrial designs). In this blog, we’ll be giving an overview of Trademark Registration and protection in Nepal.

 

GENERAL INFORMATION 

 

In Nepal, the Patent, Design, and Trademark Act, 1965, forms the legal basis of trademark registration and protection.

The Department of Industries (a sub-department within the Ministry of Industry), situated in the capital city of Kathmandu, governs and deals with the mechanism of registration of trademarks.

A trademark registered could be any name, color, logo, symbol, or sound that uniquely identifies the source of the goods and services. In Nepal, the trademarks protected can be categorized as follows:

1.     CONVENTIONAL TRADEMARKS, including word mark, device mark, collective mark, and series mark.

2.     NON-CONVENTIONAL TRADEMARKS, including 3-D mark, color mark, slogan mark, shape mark, position mark, and texture mark.

3.     WELL-KNOWN TRADEMARKS

 

A Trademark Application in Nepal can be filed in 45 classes – out of which classes 1-34 are for goods and classes 35-45 are for service marks. The 11th edition of Nice Classification is accepted by the concerned trademark authority.

Before filing a trademark application in Nepal, it is highly advisable to conduct a Trademark Search to determine the availability of the proposed trademark and the existence of identical or similar registered trademarks in the trademark register. Performing a trademark search is not mandatory in Nepal for filing the trademark application; however, by doing the same, companies and individuals can avoid the oppositions and objections, which may be put forward by third parties against their proposed trademarks.

For filing a trademark application in Nepal, the following information and documents are required:

1.     Power of Attorney (POA) – Notarized

2.     Home/Foreign Registration Certificate (with required translation) – Notarized

3.     Declaration/Affidavit of USE – Notarized

4.     Priority Document (with required translation) – Certified

5.     Declaration of Ownership – Notarized

6.     Declaration of Nationality/Residence – Notarized

 

TRADEMARK REGISTRATION PROCEDURE IN NEPAL

 

Trademark registration is a lengthy process in Nepal, and it takes 9 to 12 months approximately to obtain registration. The procedure of trademark registration in Nepal is as follows:

1.     FILING A TRADEMARK APPLICATION: In Nepal, a trademark application can be filed only for a single class; multi-class trademark applications are not allowed. Additionally, a trademark application or a Priority Trademark Application claiming priority from a convention country can also be filed in Nepal within six (06) months from the priority date.

2.     EXAMINATION PHASE – NOTICE OF ACCEPTANCE OR REFUSAL: Once a trademark application gets filed, the Registrar then examines the proposed trademark corresponding to the aspects of distinctiveness, conflict (identical or similar to already existing registered trademarks), and the possibility of deceptiveness. The Registrar may accept or refuse the trademark application as per the provisions of the Act.

3.     PUBLICATION OF PROPOSED TRADEMARK – If the Registrar accepts the trademark application in the examination phase, then the proposed trademark gets advertised/published in the Trademarks Journal to invite the public for filing opposition (if required or if any) against its registration.

4.     OPPOSITION OF PUBLISHED TRADEMARK – Upon publication of the proposed trademark in the Trademarks Journal, any person can initiate opposition proceedings against the said trademark by filing a notice of opposition within three (03) months from the date of publication of the proposed trademark in the official gazette.

5.     REGISTRATION AND RENEWAL – If there are no opposition proceedings initiated against the proposed trademark or the oppositions are resolved well in favor of the trademark applicant, then the Registrar issues the Certificate of Registration to the applicant. In Nepal, trademarks are registered for an initial period of seven (07) years starting from the date of the registration, which can be further renewed indefinitely for periods of seven (07) years upon payment of the prescribed renewal fees.

 

CANCELLATION PROCEEDINGS

A registered trademark in Nepal is vulnerable to a cancellation action by the Department of Industries or a third party if it is not used within one (01) year from the date of registration. For view source: https://www.kashishipr.com/blog/key-points-trademark-registration-and-protection-in-nepal/

 

 

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Netflix Secures 'Space Force' Trademarks Ahead of the US Armed Forces

The Netflix original comedy, ‘Space Force,’ starring Steve Carell and based on the new branch of the military launched by President Donald Trump, has quite recently obtained the Trademark Rights for the name before the US government.

Space Force is the space warfare service branch of the US Armed Forces. According to various reports, the show has efficiently secured the trademark rights to the name ‘Space Force’ in multiple places, including Mexico, Australia, and Europe. On the other hand, the Air Force, at present, has a pending Trademark Application for the registration of the name ‘Space Force’ in the US. The same implies that the show has more confirmed trademark rights than the US military.

Usually, the US Patent and Trademark Office (USPTO) grants trademarks as per the ‘First-to-use’ system, and Netflix had filed the trademark application for the name of the show as early as January.

In 2018, Trump had directed the Pentagon (the headquarters building of the US Department of Defense) to create a Space Force serving as the sixth and the youngest military service branch of the Department of Defense. The move has indeed been a talking point for President Trump in the past, with the supporters chanting ‘Space Force’ at his rallies taking place in the months following the directive.

The Netflix original show named after the branch debuted late last month. It revolves around the character of Steve Carell, who works as a General developing the new Space Force. The series, in addition to Carell, has other stars, including Ben Schwartz, John Malkovich, Lisa Kudrow, Diana Silvers, and Jimmy O. Yang.

Although most of the people across the globe do understand that there is a massive difference between the military ‘Space Force’ and the show ‘Space Force.’ However, the concept of a trademark can undoubtedly play an integral role in the merchandise confusion; for instance, if mugs or clothing were to hit the stores and the customers become curious to know who out of the two was selling the goods.

An Air Force spokesperson has recently mentioned that the military branch is unaware of any trademark conflicts at the moment with the fictional program ‘Space Force’ produced by Netflix. The entire branch has wished the best to the ‘Space Force’ show in its creative description of the newest branch of the military in the US. For view source: https://www.kashishipr.com/blog/netflix-secures-space-force-trademarks-ahead-of-the-us-armed-forces/

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Inter Miami Suffers Setback in Trademark Infringement Fight with Inter Milan

Inter Miami and Major League Soccer (MLS) have recently suffered a setback in the Trademark Infringement dispute with Serie A giants Inter Milan, as the U.S. Patent and Trademark Office (USPTO) dismissed one of the two arguments made by Miami that it should not be compelled to change its name.

On September 5, 2018, it was announced that the new Major League soccer franchise in Miami would be named Inter Miami CF – the official name Club Internacional de Fútbol Miami. As the team continued with a tradition of MLS teams copying European club titles like Real, Sporting, United, and City, the announcement raised some cries.

It also raised voices at Inter Milan, which filed a Trademark Application for its official name F.C. Internazionale Milano S.p.A in 2014 with the USPTO to get exclusive rights to use the term ‘Inter’ in the US, a move to prevent Inter Miami from marketing itself as ‘Inter.’ Inter Milan, in its application, contended that the team has become identical with the word Inter.

Despite the announcement made on September 5, MLS didn’t apply for the Trademark Registration for the name Inter Miami CF until September 25, 2018, and it wasn’t until March 2019 that MLS filed a notice of opposition to Inter Milan’s claim. The league, in the filed opposition, alleged that due to the widespread use of the word ‘Inter’ in soccer, the relevant customers don’t associate this word with one soccer team. Moreover, ‘Inter’ isn’t a source indicator for goods and services related to soccer.

The notice further claimed that the registration sought by the Applicant would damage MLS as such registration will prevent registration of ‘Inter’ with other wording even upon a showing of acquired distinctiveness in association with a soccer team.

According to many reports, Inter Milan successfully applied for a motion with the USPTO to dismiss the ‘likelihood of confusion’ claim by MLS. As the USPTO ruled, MLS claimed that several clubs worldwide use the term Inter in their name; for instance, SC Internacional of Porto Alegre, Inter Atlanta FC, FC Inter Turku (Finland), Brazil, Inter Nashville FC, NK Inter Zapresic (Croatia), Inter de Grand-Goave (Haiti), and Inter Leipzig (Germany). Nevertheless, the claim failed in showing that MLS possesses valid proprietary or ownership of the name ‘Inter.’

The USPTO ruling undermines one of the two key legal arguments of Miami. Although Inter Miami has used its right to replead the ‘likelihood of confusion’ claim and Inter Milan has filed a motion to dismiss it, the legal battle is expected to continue later this year. For more visit: https://www.kashishipr.com/ 

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How to Monetize Your Trademarks?

No matter whether you have developed a fitness club, industry’s interesting technology, or a global agency, you as a businessman must protect every aspect of your Intellectual Property (IP). Undoubtedly, there are several ways in which you can do so, but the most vital one is registering your business’s or products’ actual name and the logo as trademarks.

Trademark

Trademarks can refer to any number of things, including words, logos, phrases, or slogans that help consumers make a clear distinction amid different companies with related products or services in the market. With this ability to provide a unique identity, a trademark cannot just safeguard the business name and logo from theft and piracy but also benefit the related company with remarkable goodwill and brand reputation.

Hence, when launching your business, it is vital to trademark the name and logo to ensure protection against issues like losses due to Trademark Infringement or confusion that makes consumers buy from your competitors rather than you.

Besides providing the opportunity to preserve your hard work from getting misused by others, Trademark Registration can aid you to make money. A few famous trademarks worth billions. For instance, Google’s trademark values around $44.3 billion, Microsoft’s weighs in at $42.8 billion, and Walmart’s comes in at $36.2 billion.

As billion-dollar values don’t befall overnight, it will be in your best interest to start building an IP portfolio now so that you can upsurge the monetary value of your business by capitalizing on your trademarks.

Steps You Should Take to Ensure Your Trademark has Value

Get Creative

Before filing Application for Trademark Registration in India or any country you want, ensure that the slogan, name, or logo is memorable and distinctive. Besides, it should be your creation, i.e., not copied from anywhere, and must not be confused with any other company or brand.

Almost all successful brands use marks made up of words and images that not just portray their business but also describe their products and services in new and unusual manners.

Focus on Slogan

A remarkable way to enhance your trademark portfolio and make more value is to have an amazingly marketable slogan based on the current trend and industry. Consider the case of boxing ring announcer Michael Buffer, who has made not less than $400 million with his trademarked phrase ‘Let’s Get Ready to Rumble.’ This appears as a great example when it comes to monetizing a trademark.

Make it Legal

To enjoy the comprehensive benefits, you need to complete the Trademark Registration Process of your mark successfully. In this process, you, first of all, should apply for it with the associated department, like the trademark registry in India and United States Patent and Trademark Office (USPTO) in the United States.

Once the relevant department or Office finds that the Trademark Application has met all the filing requirements, it’d assign a serial number to the application and then send the same to an examining attorney. If the attorney decides that there are problems in allowing the registration of your mark, he/she will issue a notice, which explains their arguments against registering your trademark and outlines the changes needed in the application. You, as an applicant, should respond to the notice as soon as possible.

As the complete Trademark Registration Process in India or any nation seems time-taking and tricky, working with an experienced Trademark Attorney can be the best for you. Being skilled and aware of legal rights, matters, etc., he/she can help you in streamlining the process, along with overcoming the challenges that may prevent successful application or registration of your mark.

1.     Analyze Your Options

Once the creative name, slogan, or logo with which you came up is registered, you are ready to monetize your trademark. Here’re some options you should analyze:

• License Your Trademark: Trademark Licensing is a fairly common practice to capitalize on any registered mark. Licensing your trademark to another company or person means that you are allowing the same to use it for particular products and services in exchange for the expected fees. Think of celebrities or sports teams who allow others to use their names, images, etc., on things like beauty products, soft drinks, restaurants, and more.
• Co-branding with Another Company: It allows both parties to take advantage of each other’s goodwill and brand reputation. It is a good way to attract more consumers and enhance your sales. Apple and Nike working together on goods for athletes, Bonne Belle and Dr. Pepper collaborating on a flavored lip gloss, are the two well-known examples of this type of joint venture.
• Making Money through the Securitization of Your Trademark: It is the concept that enables the companies to use the value of their trademarks to generate financing.

Monetizing your trademarks can bestow you with substantial new revenue streams. However, to grab the full advantage of the opportunity, you should not miss out on any single way to secure your valuable assets under the robust shield of Trademark Protection.

An experienced Intellectual Property Law Firm is one of the best sources to get any kind of help you need in this area. It can help you in successful registration as well as licensing of your trademark.

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All About Two Vital Trademark Symbols – TM & ®

Undoubtedly, most of us know that a trademark is a type of Intellectual Property (IP) that comprises a recognizable word, sign, symbol, or expression used to distinguish products of a particular source from those of others. However, this is not all. To get the expected benefits from trademarks, you need to be aware of all vital elements related to this exclusive Intellectual Property Right (IPR). For instance, TM and ® symbols. These are the two significant components of trademarks that often create confusion, thus limiting the gains of people associated with the IP industry. Like many other individuals and organizations, if you are also confused with these two trademark symbols, then this article is for you!

What do Trademark Symbols TM and ® Mean?

The TM symbol is used for unregistered marks to indicate that the preceding word, logo, or slogan, is a trademark, and the owner is asserting exclusive rights in it. As per the Trademark Law of many countries, trademark registration isn’t necessary to use this symbol for your branding. Note that this symbol doesn’t provide a guarantee that the mark is protected legally. In general, people use the TM symbol, while the relevant Trademark Application is under processing.

On the other side, the ® symbol, which includes letter R enclosed in a circle, is used to indicate that the relevant word, sign, or logo is registered and the owner holds legal rights of ownership on the same. With a strong deterrent effect, it warns people that the violation of the related mark will be considered a breach of trademark laws.

When Should Trademark Symbols TM and ® Be Used?

As mentioned above, the TM symbol only notifies people and competitors that you are claiming ownership rights to the name, logo, etc., next to which it is placed, many countries like the US, UK, and others allow you to use it anytime. Though emphasize unregistered class yet TM symbol is enough to deter competitors or other unauthorized users from using a mark that is either the same or confusingly similar to yours.

In contrast, the ® symbol can only be used when you have successfully registered your trademark with the relevant trademark office. In countries such as the UK and the US, using ® or any other symbol, which indicates that a mark is registered when that’s not, i.e., false representation in regards to a Registered Trademark is a criminal offense. Besides, failure to use the ® symbol in these countries could result in the loss of vital remedies required to sue someone for Trademark Infringement. However, in some other nations such as the Philippines and Mexico, it is mandatory to use the ‘registered mark/® symbol’ to maintain the registration. As trademark law and its privileges vary from nations to nations, it is better to step into this field after having precise and comprehensive information regarding the rules of the region where you want to get your mark registered. Knowledgeable IP Attorney can be the best helping hand if you are in any doubt and want precise solutions and guidance.

Where Should Trademark Symbols TM and ® be placed?

The most common location to place these two trademark symbols is the upper right corner of a mark in superscript. Nevertheless, if the placement on the top appears unpleasant, then it is acceptable to place the symbols on the lower right-hand corner.

Which Route Should Be Taken to Obtain Trademark Protection?

Due to some confusing cases associated with the use of trademark symbols, large companies who own many registered trademarks evade using the symbols to which they are entitled. Moreover, in most cases, they use the symbols only for some products, not for all. Electing not to utilize the symbols isn’t a good idea as it can affect legal actions for infringement, and thus, limit the damages that you otherwise can claim.

™ or ®? No matter which route you plan to take as per your needs, Trademark Registration is essential to reach complete protection. Although this may seem simple, the process as a whole can be tedious and could prevent you from opting for trademark registration. But don’t worry as having an experienced Intellectual Property Firm that specializes in registering brands can help you to apply for and get your mark registered without any hassle. What makes it the best way is that most of these companies are willing to do it for you at a reasonable price. For view-source: https://www.kashishipr.com/blog/all-about-two-vital-trademark-symbols-tm/

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