Trumping local marks: A note on well-known trade marks in Nepal

On 2 August 2017, the Patan High Court upheld the principle ‘first-to-file’ to receive protection under Nepalese trade mark law and refuse to consider the trade mark ‘Havells’, which has been used in Nepal since 2001 and over time has been expanded to cover products like cables, wires, motors, fans, home appliances among others, as a well-known trade mark in Nepal.1 The decision did not escape criticism for providing inadequate legal protection to well-known trade marks and the country’s negative attitude towards foreign brands. This note attempts to introduce the intellectual property (IP) regime in Nepal and discusses well-known trade marks in light of recent cases. The first part introduces an IP framework in Nepal, providing a helicopter view of the first National IP policy issued in 2017. The second part briefly delineates the international framework for the protection of well-known trade marks. The third part delves into the current system of trade mark protection, examines recent cases related to well-known trade marks. The last part provides the drive for change in the current legislation.