Protecting Intellectual Property Scenario in Nepal trademark, copyright patent

1. Protecting
IntellectualProperty:
Scenario in
Nepal
Prepared by:
Lalita Shrestha
Dilisha Shrestha
Pukar K.C.

2. Introduction &
Importance

3. Intellectu
al
Property
Therefore, IPR refers to the legal rights owned by institutions or individuals over
the ownership and use of the IPs.
 The World Intellectual Property Organization (WIPO) –
 Traditionally,
“creations of human intellect, such as inventions, literary &
artistic works, designs, symbols, names & images used in
commerce.”
 In recent times,
database, trade secrets , indigenous knowledge & geographical indications
along with publicity rights, rights against unfair competition & moral rights
have also found place in the list of IPs.
patents, designs, trademarks & copyrights have been
considered major IPs.

4. 01
Plays vital role for economies to
thrive in today’s competitive
world.
02 To attract investments &
secure national interests.
03
For businesses: a valuable
intangible assets necessary
for their growth &
sustainability.
Beside adding revenue to the government: creates
environment where they can invest to expand their
business & engage in fostering innovations which in
turn generate employment.
Importanc
e

5. Current IPR
Scenario in Nepal

6.  Enacted Nepal Patent, Design & Trade Mark Act, 1993 BS.
 History of IPR regime: traced back to the period of Rana Prime Minister
Juddha Sumsher some 80 years ago.
 Four factors that drive the engine of IP: creation, promotion,
protection & use of IP.
(Nepal lacks in remaining three)- Madhu Soodhan Poudyal,
General Secretary of the IPPSON.
 At present IPR activities in Nepal are limited only to the areas of
trademark, design, patent and copyright.
 Presently, Patent , Design and Trade Mark Act, 2022 BS &
Copyright Act, 2059 BS exists.
01
Background

7.  Annual application rate of patent & design ranges from 0 to 4.
 Some 4,000 maintained & valid trademarks.
 Copyright activities in musical and cinematographic works appear
satisfactory.
 No activities seen in other forms of IP including geographical
indications, trade secrets, integrated circuit design & new plant
varieties
02
Current
Statistics

8.  The absence of specialized IP offices, service institutions and
training centers.
 Lack of other activities seen in other forms of IP is due to the
absence of legal frameworks to govern these IP aspects.
03 Reasons

9.  Violation of trademarks happens generally in the form of unauthorized
registration and the copying of trademarks of internationally recognized brands,
& also called well known marks, by individuals & organizations.
Reasons for
Infringements
 to take advantage of the market value of international
trademarks.
 Financial benefit- bargain for the ownership of the
brands in Nepal & demand large amount of
money to return the ownership.
Insecure trade & service
marks

10. Encouragement for
Infringements
01
Patent, Design & Trademark Act, 2022
BS, the rights & the ownership of foreign
brands are only established after the
trademarks are registered in Nepal.
Loopholes
Lack of
Parameters02 Six parameters of WIPO:
i. Determining the 1st user or adopter of
the well known mark
ii. The duration, extent & geographical
area in terms of any use of the mark
iii. Registration & recognition along with
its promotion &advertising
iv. The duration &geographical area of
any registrations
v. The record of successful enforcement
of rights in the mark
vi. Brand value
According to WIPO- well known marks are usually
protected, irrespective of whether they are
registered or not, in respect of goods & services
which are identical with, or similar to, those for
which they have gained their reputation.
Caused ambiguity in terms of registration &
ownership of trademarks.
 Court can impose a fine of up to Rs.
100,000 on trademark infringement.
 Patent infringements- cannot exceed
Rs. 500,000.
Low Fine
Amount
03

11. Some Cases of
Trademark
Infringements in
Nepal

12. 01 Kansai Nerolac Paint V. Nepali
Business Groupo Had to wage legal battle against a local
firm.
o Nerolac Paint entered Nepal in 2012 in a
joint venture partnership with a Nepal
company Shalimar Paints.
o Was denied trademark registration as a
firm named ‘Kansai Nerolac Paints Pvt.
Ltd.’ was already registered here.
o Eventually, Japanese-Indian was bound to
shed its individuality and operate in the
name of KNP in Nepal.
02
03
05
04
06
07
08

13. 01 Swastik Fragrance V. Rajnigandha
o 14 years ago, Nepali Co. Swastik Fragrance,
registered the trademark of Rajnigandha, a
fmous Indian panmasala brand produced by
Dharmpal Satyapal Limited.
o Then, Rajnigandha fought a legal battle
against Swastik.
o 8 years later, Patan Appellate Court issued a
verdict in favour of Swastik Fragrance.
02
03
05
04
06
07
08

14. 01 Centerfruit, Center fresh V. Center
fillz
o Centerfruit & Center Fresh chewing gums:
manufactured by Italian-based co. in India.
o Center Fillz is a knock off of these two
products & made in Nepal.
o After 3 days of hard try the Indian co. was able
to register its case.
02
03
05
04
06
07
08

15. 01 Goldstar
o Goldstar too found itself in a legal fight over
infringements of its trademark.
o And, the violators were sentenced with tough
punishments for their involvement in illegal
activities.
02
03
05
04
06
07
08

16. 01 Magic Footwear
o Published notices in newspapers warning
some manufacturers to immediately stop
copying its trademark & designs of products
or to face legal actions.
02
03
05
04
06
07
08

17. 01 Pepsico India
o Had accused a Nepali producer of infringing
its snacks brand name.
02
03
05
04
06
07
08

18. 01 Reliance
o Refused to invest in Nepal after it discovered
that its trademark is owned by someone else.
02
03
05
04
06
07
08

19. 01 Himalayan Distillery Ltd.
o Complained that the company’s brand such as
Royal treasure, Blue Diamond, Golden Oak &
Virgin were copied in terms of not only their
appearances (color & design) but also in taste.
o 40 brands in the market had the names
resembling to its product’s name.
02
03
05
04
06
07
08

20. Has been providing exclusive right to the
authors & the creators of artistic & literray
creations.
Copyright on the Brighter
SideCopyright Act, 2059 BS & Copyright Rule,
2061BS
As per the current provision, registration is
not compulsory for copyrights & in case of
violation, the right holder is simply required
to put the date of creation of his /her works
For violation there is imprisonment and
fines.

21. Member of
WIPO in 1997
Signatory to the Paris
Convention for the
Protection of Industrial
Property in 2001
Signed TRIPS
after the
membership of
WTO in 2004
Berne Convention for
the Protection of Literary
& Artistic Works in 2006.
Membership of
Nepal
Inability to Reform Law
 Not been able to reform or
update the existing IPR laws in line
with the landmarks global deals.
 Continuously extending the
deadlines to update. For eg. The
deadline for implementing the
convention for Nepal has been
extended thrice (2006-2015-2021).
 Yet to become a signatory to other
International agreements related
to IPR. Eg., the country hasn’t
signed the WIPO’s Copyright
Treaty and Performances &
Phonograms Treaty.

22. Government’s Actions for
ImprovementEndorsement of the National Intellectual
Property Policy, 2073 B.S.
01
This policy aims to develop new legal
framework or revise the existing ones for
copyright, patent, industrial design,
trademark, geographical indication, plant
species, etc.
02
Increase awareness about IP & its
importance for the economic, social, cultural
progress of society.03 Encourage commercialization of all forms of
IP.
04
Develop a separate institutional mechanism
namely National Intellectual Property Council
to enforce effective execution of policies set
out in the National Intellectual Property
Policy, 2073 BS.
05
Develop a separate & integrated IP office
under DoI to look after the IPR.
06
Drafting of the umbrella IPR law is also
moving ahead.
07

23. Appendix

24. Main Highlights of Existing IP Laws
& PoliciesNational Intellectual
Property Policy, 2073 BS
o Develop a separate &
integrated IP Office under
DoI to look after the
promotion, Protection &
recording of IPR.
The policy seeks to:
o Develop new legal framework or revise the
existing ones for copyright, patent, industrial
design, trademark, geographical indication, plant
species etc.
o Use existing traditional knowledge, biodiversity &
geographical indication as a tool for national
development.
o Use IP as a source of environment-friendly
technology transfer, foreign investment, research
promotion &development of technical capacity
& knowledge.
o Increase awareness about IP
& its importance for the
economic, social, & cultural
progress of the society.
o Encourage
commercialization of all
forms of IP.
o Develop strong laws &
institutional & human
resources to enforce
protection of IPR.
o Develop a separate
institutional mechanism
namely National Intellectual
Property Council to enforce
effective execution of policies
set out in the National
Intellectual Property Policy,
2073 BS.

25. Patent, Design &Trademark
Act, 2022
The Department of the Industry, register the trademark
in the name of the applicant based on the necessary
examination of a trademark application.
The refusal of trademark application are based on
following:
o If the applied trademark hurts the prestige of any
individual or institution.
o Affects the reputation of the trademark of any
other person.
o Is already registered in the name of another
person.
o The registered trademark remains valid for 7 years &
can be renewed every 7 years for any no. of times.
Copyright Act,
2022
Related to the work of book, pamphlet, article, thesis,
drama, dramatic-music, musical notation with or
without words, audio visual works, architectural design,
fine arts, painting, work of sculpture etc.
Registration of a work, sound recording, performance
or broadcasting is not mandatory to acquire the right.
Enables reproduction of work by library & archives &
for personal use, citation, appropriate with referencing
& teaching & learning purpose & for the information
to the general public.

26. Paris Convention for the
Protection of Industrial
Property
o Each member state must grant similar protection to
nationals of other member countries that it grants to
its own nationals.
o Article 6bis seeks its member countries to refuse
or cancel the trademark registration, and to
prohibit the use of a trademark which constitutes a
reproduction, an imitation or a translation, liable
to create confusion, of a mark considered by the
competent authority of the country of registration.
o Allows at least 5 years timeframe to request the
cancellation of such a mark from the date of
registration.
InternationalTreaties & Conventions
Trade–RelatedAspects of
Intellectual Property rights (TRIPS)
o Jan 1995, multilateral agreement between WTO countries.
o Objective: to provide strong & comprehensive protection fo
various forms of IP throughout the world by laying down
certain minimum standards.
o The agreement requires compliance of the most recent
amended version of WIPO, Paris Convention for the
Protection of Industrial Property & the Berne Convention for
the Protection of Literary & Artistic Works.
o Disputes are subject to the WTO’s dispute settlement
procedure.

27. Berne Convention for Literary &
ArtisticWorks
o Governs copyright law: protecting works & rights of
authors, musicians, poets, photographers, painters,
etc.
o The convention provides them authority to have
control over the reproduction or any other form of
use of their works.

28. Any
Question?
Thank You