Intellectual Property Case: Madan Pd. Lamsal vs. Repsona Publication Pvt. Ltd, NKP (6th Semester)

Intellectual Property Case: Madan Pd. Lamsal vs. Repsona Publication Pvt. Ltd., NKP 2068 B.S, Number 9, DN 8686, p. 1545.  

Case: Trademark dispute
Plaintiff/Applicant: Madan Prasad Lamsal
Defendant/Respondent: Repsona Publications Pvt. Ltd
Decision Number: 8686

This case is related to the registration, ownership, and exclusive right to use a registered trademark.

Facts of the Case:
Madan Prasad Lamsal registered the composite word-and-label mark “BUSINESS AGE” as a trademark in his own name on 2057/11/24 in connection with his monthly magazine New Business Age. He filed a complaint alleging that Repsona Publications Pvt. Ltd. had begun publishing a rival magazine under the same “BUSINESS AGE” name/label, deceiving the public and infringing his registered trademark in violation of Section 16(2) of the Patent, Design and Trademark Act, 2022.

Repsona Publications countered that it had been formed jointly by Madan Pd. Lamsal and Hari Kumar Rai under the Companies Act, 2053, with Rai holding 900 shares and Lamsal 100 shares. The company’s board had authorized Lamsal who was then a director and later editor to publish the “Business Age” magazine and to register its trademark on the company’s behalf on 2055/02/24. Repsona Publications argued that Madan Lamsal wrongfully registered the mark in his own personal name rather than in the company’s name, and later published a rival magazine using the same mark after resigning as editor. Repsona thus sought cancellation of Lamsal’s trademark registration under Section 18(3) of the Act.

The Department of Industry on 2060/10/09 ordered both parties to continue publishing their respective magazines but they must each change their design/mark to avoid confusion. Both parties appealed to the Patan Appellate Court. The Appellate Court, relying on Sections 7(4) and 40 of the Press and Publication Act, 2048, upheld the requirement that both parties alter their designs, and rejected Lamsal’s claim for fines and compensation from Repsona under the PDTA, 2022. Madan Lamsal then appealed before the Supreme Court.

Legal Issues:

1. Once a trademark is registered in a person’s name under Section 18 of the Patent, Design and Trademark Act, 2022, can another person who used an identical/similar mark prior to registration, but without registering it, claim a right to use it without the registered owner’s consent?
2. In a dispute over use of a trademark appearing on a registered newspaper/magazine, does the Press and Publication Act, 2048 apply, or does the Patent, Design and Trademark Act, 2022 govern exclusively?
3. Is the appellant Madan Lamsal entitled to compensation under Sections 19 and 25 of the PDTA, 2022?

Different Courts Decision:

 Department of Industry:
The Department of Industry on 2060/10/09 ordered both parties to change the design/mark of their respective publications to avoid confusion.

Patan Appellate Court:
The Appellate Court upheld the Department’s design change order and rejected Lamsal’s claim for fine/compensation against Repsona Publications.

Supreme Court:
Supreme Court reversed the decision of the Patan Appellate Court in regard to the trademark ownership but held the Appellate Court’s order regarding the appellant’s claim for fine and compensation against Repsona. The Court held that Nepali Law protects only registered trademarks and mere prior use does not confer exclusive rights over an unregistered mark. Since “BUSINESS AGE” was undisputedly registered in Lamsal’s name, Repsona had no legal right over it merely through use. The Court further ruled that the Press and Publication Act, 2048 governs registration of printing presses, publications, and their ownership transfer- it does not govern trademark rights, registration, or use; matters of trademark are governed specifically by the Patent, Design and Trademark Act, 2022.

Principle Established:

1. Registration is the sole basis for trademark protection and prior or continuous use of an unregistered mark does not create exclusive rights over it, regardless of duration of use.
2. Where two parties use or claim the same trademark, only the party in whose name it is registered is recognized as the lawful owner with exclusive rights to its use; unauthorized use by others without the registrant’s consent is not permitted.

Relevancy of the Case:
This decision clarifies that registration is the sole basis to ensure the protection of intellectual property including trademark.