Legal Recognition of Well-Known Trademarks in Nepal : 2025

Table of Contents

    Introduction

    In today’s global marketplace, trademarks are more than just business identifiers—they are valuable intellectual assets. Among them, well-known trademarks enjoy a special status and extended protection, even without registration in certain jurisdictions. In Nepal, although the legal framework does not explicitly define or regulate well-known trademarks, courts and the Department of Industry (DOI) have increasingly recognized and enforced them through evolving jurisprudence and international obligations.

    This article explores the definition, legal interpretation, determining criteria, and landmark cases that have shaped the landscape of well-known trademark protection in Nepal.

    What is a Well-Known Trademark?

    A well-known trademark refers to a mark that has become widely recognized among a substantial segment of the public, such that its use in relation to different goods or services may lead consumers to mistakenly assume a connection with the original brand.

    In simple terms, if a trademark is so widely known and associated with a specific company or quality that consumers may get confused when someone else uses it, it qualifies as a well-known mark.                                                     Well-known Trademark

    Legal Framework in Nepal

    Nepal does not have a dedicated statutory definition or separate registration process for well-known trademarks. However, protection is afforded through interpretation of existing provisions of the Patent, Design and Trademark Act, 2022 B.S. (1965 A.D.).

    Section 18(1) — Proviso Clause

    “Where the proposed trademark is likely to hurt the reputation of the trademark of the other, such proposed trademark may not be registered.”

    This clause is frequently invoked to prevent the registration of marks that may damage the reputation of well-known trademarks, even if those well-known marks are not registered in Nepal.

    Nepal is also a signatory to the Paris Convention and the TRIPS Agreement, both of which mandate protection of well-known marks.

    Determination of Well-Known Trademarks: DOI Guidelines

    Although there are no codified standards for recognizing a well-known trademark in Nepal, the Department of Industry (DOI) has outlined informal criteria in correspondence with the High Court in relation to a trademark dispute.

    Factors for Determining a Well-Known Trademark in Nepal:

    1. Scope and Identity of Goods/Services:
      • The broader and more identifiable the product or service category, the higher the chance of being well-known.
    2. Duration and Geographical Use:
      • Longevity of use and the extent of usage in various jurisdictions contribute significantly.
    3. Advertising Reach and Investment:
      • Broad geographical coverage and high advertising spend are indicators of reputation.
    4. Trademark Registration:
      • Widespread and long-standing registrations across countries add weight.
    5. Legal Protection Efforts:
      • Proactive legal steps taken to enforce trademark rights are considered.
    6. Ownership and Continuity:
      • Clear ownership and consistent use strengthen recognition.
    7. Recognition by Other Authorities:
      • Acknowledgment as well-known by foreign courts or inclusion in reputed publications or media.

    Landmark Cases on Well-Known Trademarks in Nepal

    Nepalese courts and the DOI have handled several key cases recognizing and protecting well-known trademarks, even in the absence of domestic registration.

    1. Societe Des Produits Nestle S.A. v. Local Manufacturer (2006)

    • Issue: Unauthorized use of the “Nestlé” mark on food products.
    • Decision: DOI upheld Nestlé’s claim and barred the local entity from using the mark.
    • Significance: One of the first recognitions of a foreign mark as well-known in Nepal.

    2. PepsiCo Inc. v. Local Manufacturer(2010)

    • Issue: Similar branding and trade dress mimicking Pepsi’s products.
    • Decision: Courts issued injunctions, recognizing Pepsi as a well-known brand.
    • Significance: Extended protection to trade dress and overall brand identity.

    3. Microsoft Corporation v. Local Importer (2012)

    • Issue: Distribution of pirated Microsoft software.
    • Decision: Authorities confiscated pirated copies, citing Microsoft’s well-known status.
    • Significance: Affirmed that software trademarks are protected under IP law.

    4. Samsung Electronics Co. Ltd. v. Local Importer (2016)

    • Issue: Counterfeit Samsung mobile accessories.
    • Decision: Customs and DOI intervened and seized fake products.
    • Significance: Showcased the intersection of customs enforcement and trademark law.

    5. Nike Inc. v. Local Manufacturer (2018)

    • Issue: Use of the Nike “swoosh” logo on local apparel.
    • Decision: DOI ruled in Nike’s favor under international treaty obligations.
    • Significance: Set precedent for TRIPS-based protection of unregistered marks.

    6. Hyatt International v. Local Hotel Applicant (2019)

    • Issue: A local business attempted to register a mark similar to “Hyatt”.
    • Decision: DOI rejected the application, citing Hyatt’s global recognition as a hotel chain.
    • Significance: Reinforced that use of globally well-known trademarks in the same industry is not allowed, even if unregistered in Nepal.

    7. Holiday Inn Marks (Express, Logo, etc.) – DOI Decision (July 10, 2023)

    • The DOI recognized multiple “Holiday Inn” marks (including the “H” logo) as well-known in Nepal

    • It struck down the registration attempt by Holiday Express Travels, citing bad-faith registration and potential consumer confusion.

    This further reinforces Nepal’s expanding recognition of international hospitality brands beyond their registered classes.

    International Obligations

    Nepal’s commitments under the Paris Convention (Article 6bis) and the TRIPS Agreement (Article 16) require the protection of well-known trademarks against misleading use and unfair competition. These international treaties allow for enforcement without the need for domestic registration, aligning Nepal with global IP standards.

    Conclusion

    While Nepal’s statutory framework still lacks dedicated laws or registration mechanisms for well-known trademarks, the Department of Industry and judiciary have increasingly acknowledged and protected such marks. Through judicial interpretation, DOI guidelines, and reliance on international treaties, Nepal offers practical enforcement pathways for global brand owners.

    Businesses seeking to operate in Nepal should ensure that their well-known trademarks are protected under local IP strategy—even if not yet registered—by proactively monitoring unauthorized uses and invoking legal remedies when necessary.