What is a Trademark?
"Trademark" means a word, symbol, picture, or a combination thereof used by any firm, company, or individual in its products or services to distinguish them from the products or services of others. This is the official definition of a trademark under "The Patent, Design and Trademark Act, 2022."
Let's Dive into the Details
A "word" trademark refers to a specific word or set of words that a firm, company, or individual uses to identify and distinguish their products or services from those of others. This can include names, brand names, slogans, or even phrases.
For example, brand names like "Coca-Cola," "Google," and "Apple" are all word trademarks. These words have been registered as trademarks and are legally protected, meaning other businesses cannot use these words in a way that might cause confusion about the origin of their products or services.
When applying for a word trademark, the applicant needs to ensure that the word is distinctive and not merely descriptive. A distinctive word helps consumers identify the source of the goods or services. For instance, the word "Apple" for electronics is distinctive, while "Fruit" for an apple vendor would be considered generic and not eligible for trademark protection.
Slogans also fall under the category of word trademarks. Slogans like Nike’s "Just Do It" or McDonald's "I'm Lovin' It" are protected phrases that reinforce the brand's identity and message.
If another entity uses a similar word in a way that could cause confusion, it may lead to trademark infringement disputes. The trademark owner can take legal action to protect their rights and prevent unauthorized use.
Here's a question: Suppose someone wants to conduct an event and doesn't want anybody else to conduct an event with the same name. How can they ensure this exclusivity?
The answer is by registering the event name as a trademark. Here’s how:
- Choose a Distinctive Name: Make sure the event name is unique and distinctive, not generic or descriptive.
- Conduct a Trademark Search: Before applying, perform a search to ensure the event name is not already in use by another entity in the same category.
- File a Trademark Application: Submit a trademark application, including details about the event and its use in commerce.
- Monitor and Enforce: Once registered, monitor the use of the event name to prevent others from using it without permission, and take legal action if necessary.
A "symbol" trademark refers to a graphic element or design that a firm, company, or individual uses to identify and distinguish their products or services from those of others. This can include logos, designs, icons, and other visual elements.
For instance, logos like the Nike swoosh, the McDonald's golden arches, and the Apple logo are all symbol trademarks. These symbols have been registered as trademarks and are legally protected, meaning other businesses cannot use these designs in a way that might cause confusion about the origin of their products or services.
A strong symbol trademark not only represents the brand visually but also communicates its identity and values. These symbols often become iconic, instantly recognizable by consumers, and synonymous with the brand itself.
When applying for a symbol trademark, the applicant needs to ensure that the design is distinctive and not merely decorative or common. A distinctive symbol helps consumers identify the source of the goods or services. For example, the abstract swoosh of Nike is distinctive, while a simple geometric shape like a circle might not qualify unless it has unique elements.
Process of Registration of Trademark
Step 1: Anyone who wants to register a trademark for their trade or business under the act shall apply to the Department of Industry ("DOI") under the Ministry of Industry, Commerce, and Supplies of the Government of Nepal (web-link: http://www.doind.gov.np/) in a prescribed format along with:
- Copy of registration or license of the business for the product or service in which the trademark is used or intended to be used.
- Four copies of the model of the trademark.
- Authorization letter if somebody has been authorized to act on behalf of the owner to register the trademark.
- Copy of PAN or VAT registration certificate.
- Tax clearance certificate of the last fiscal year.
- If the applicant is a foreigner, a certified copy of any foreign registration certificate and address for service in Nepal must be submitted with the application.
- Receipt of payment of the prescribed application fee.
A separate application shall be submitted for the registration of trademarks for different categories of goods or services.
Step 2: Preliminary Examination by DOI (DOI will check whether the proposed trademark is similar to an already registered trademark or contradicts prevailing law).
Step 3: Publication of Trademark in Industrial Property Bulletin (IP Bulletin, which is published by DOI every 3 months).
Step 4: Successful Trademark Registration in Nepal if opposition isn't received by a third party (Petition for Opposition against Applied Trademark can be filed within 90 days of publication in the IP Bulletin).
Q. How can I allow another person to use my registered trademark?
If you intend to allow another person to use your trademark, you and the other person shall file a joint application, stating the facts accordingly before the Department of Industries accompanied by the prescribed fees. You can also transfer/sell your trademark in a similar way.
Q. What happens if anyone uses my trademark?
The whole point of registering a trademark is to prevent such cases. If someone else infringes your trademark, you can file a complaint with the Department of Industries. The Department may cause the infringing party to pay a reasonable amount for the loss incurred through the violation of the act, compensating the person whose trademark was infringed.
Q. Should I register a trademark?
Securing your trademark at the beginning of your business operations is always a wise decision, especially if you anticipate your business or products will achieve success quickly. This proactive step ensures both you and your investors feel confident about the protection of your intellectual property, alleviating concerns about potential infringement. This is particularly helpful if you have your own product or if you want to franchise. While there may not be an immediate need to register a trademark for a small business, it becomes crucial for a small business that might grow in the future.
