Trademark is one of the categories of intellectual property
which is defined as a creation of mind.
A “trade mark” is commonly defined as a sign capable of being
represented graphically which is capable of distinguishing goods or services of
one undertaking from those of other undertaking. Trademark which is capable of
distinguishing the goods or services may includes shape of goods, their
packaging and combination of colors. A registered mark entitles the authority
of being used in relation to goods or services for the purpose of indicating or
so as to indicate a connection in the course or trade between the goods or services.
Section 2 (C) of Patent Design and Trademark Act, 2022 B.S defines trademark as a word, sign, symbols, or
pictures or a combination thereof to be
used by any firm, company or individual in its products or services to
distinguish them the produces or
services or others. Being a visual symbol or sign in the form of a word, a
device, or a label and a means of identification trademark enables traders to
make their goods or services readily distinguishable from similar goods or
services supplied by others. The Agreement on Trade Related Aspects of Intelectual
Property Rights (TRIPs) under WTO framework gives a clear definition of
trademark and its protection. Article 15.1 of TRIPs mentions a trademark is 'any sign, or any
combination of signs, capable of distinguishing the goods and services of one
undertaking from those of other undertakings, thereof shall be registered and
administered properly.
With this background, it is clear that trademarks are
subject to registrationa and administration under the jurisdiction of the
country’s law. However, administration of trademark is a challenging task in
any part of the world mainly because of the dynamics of trademark as it
concerns with too many stakeholders. Initially, trademark is supposed to be a
medium to identify the source of a product or service. Gradually, trademark has
been developed as the most valuable property of any business. The value is also
added due to the fact that all other intellectual property expects trademark is
time specific like 20 years or so. But trademark is protected for infinitive
time may be over thousands of years if the owner continues it. Trademark has
also been a prominent part of foreign investment. Considering these dimensions
and importance of trademark, it has been a prominent issue in the domestic as
well as international trade and investment in Nepal.
As it has been 12 years that Nepal has become a member World
Trade Organization (WTO), it has to maintain the compliance with international
commitment with respect to compliance of intellectual property and
trademark. However, Nepal has been doing
it with old law, insufficient institutional mechanism and limited resources. In
such context, there may be a lot of deviations about what is happening and what
should have happened in terms of trademark in Nepal.
Thus, the most prominent aspect is that the administration
of trademark in Nepal is in transition phase. The responsible officers at the
trademark administration office have also realized that there should be change
in the system and process that we have been continuing for over last 8 decades.
Further, the changes are more required to comply the commitments under WTO and World
Intellectual Property Organization (WIPO) membership.
Changes are also required to meet the changes in national
and cross boarder businesses. Now, the stakeholder of trademark administration
in Nepal is not only Nepali people and it is not limited within the territory
of Nepal. Multinational companies all over the world watch closely and
contentiously whether the Intellectual Property Bulletin being published by the
Department of Industries (DOI) contains any trademark that happens to be
similar to its own trademark. If they feel that any of the proposed trademarks
may come up in the way to disturb the brand image of their product, they
quickly file opposition. Availabel statistics show among around 400 complaints
filed at the DOI claming their trademarks have been copied, about one third are
filed by foreigners. This is wels snough to gauge the scenario of trademark
registration and administration in Nepal. Therefore, the trademark
administration system should be compatible with global standard simply because
it is really a part of the global process.
In case of complaint regarding trademark, the dispute has to
be setteled through a scientific and well established mechanism with active
involvement of both the parties. Mediation and arbitration are the common
mechanism much used and recommended by the WIPO for the settlement of
intellectual property related disputes. Although, Nepal already promulgated the
mediation and arbitration law considering the alternative dispute settlement
mechanism, this has so far not been effective as expected. Global experiences
show that once the parties are engaged in such dispute settlement mechanism and
once they amicably settle the dispute, it may further come as an opportunity
for both the parties as they may figure out better business relationship
between them.
It seems that the old law, old institution, weak institutional
memory, lack of resources and frequent transfer of government employees are responsible
for most of the constraints in the field of trademark administration. These
things should be address as soon possible. However, there are some things that
can be done immediately with in the present scenario and immediate change can
be seen even on the basis of present law and present institution. However, we need a comprehensive law and
policy on trademark to address all the matters mentioned above.
DOI should consider even label, logo and symbol also while
searching for trademark registration. They should not consider only the words
which are demanded for registration. Rather they should consider whether it
will create confusion or not. Likewise, DOI should be proactive to publish post
registration and post renewal trademark.
DOI should repeal trademarks on the basis of non-use. A standard
criteria and procedure for this can be made. It can be done jointly by the
government and private sector. Private
sector should be cooperative to the above mentioned activities of the
government.
As regards the recommendations for policy makers, Government
of Nepal should replace the old law by a comprehensive law as soon as possible.
This law should also give rooms to make regulations, procedures and manual for
the administration of different fields of intellectual property including trademark.
There should be enough training to DOI staff and enough resources for DOI. Such
trained staff should be retained in the trademark administration office at least
for five years. There should be software to search for logo, level and device
also. There should be proper Management of Information System (MIS) at the DOI
or trademark administration office. There should be enough resources for the
trademark administration office. DOI should repeal the trademarks on the basis
of non-use.
There should be coordination between trademark registration
office and Company Registrar office. There happens to be a pressure to obtain a
certain trademark as the trademark applicants already registered company before
they go to DOI for registration of trademark.
If there happens to be coordination between the Office of the Company
Registrar Office and trademark registration office, such pressure to obtain
certain trademark can be minimized. In the meantime the institutional memory is
also equally important for effective administration of the trademarks.
It seems that some of the owners of well-known marks are
reluctant to register their trademark in Nepal either due to inadequate
awareness or due to over confidence that trademark in Nepal can be protected
even without registration. We should give a clear message to international
community those who are reluctant to register their trademark in Nepal will not
be protected whether it is well-known mark or others.
Statistics show there are around fourty thousand trademarks
registered with the DOI. However, some of the critics say, there is a tendency
to apply for trademark and hold it with out bringing in practice. Frequent copy
of well known national and international brands and the weak administrative confidence
has been motivating business community to hold more trademark which in turn
hindering the effective administration of the trade mark.
In this context, Ministry of Industry along with the
Department of Industries have to work proactively in streamlining the process
of improving trademark administration by establishing better legal base and
other necessary arrangements.
Reference:
1.
Trademarks Act, UK, 1994, s 1(1)
2.
Patent Design and Trademark Act, Nepal, 1965
(Patent, Design ra Trademrk Ain
2022) section-2
3.
Dr.S.R. Myneni: Law of intellectual Property, 4th Edition,
Asia Law House, 2007, p 166
4.
TRIPs
Agreement, 1994, article 15.1
5.
An
In-depth Assesment of Governance of Trademark Laws in Nepal, Confederation of
Nepalese Industries (CNI), 2016
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