Intellectual Property Case: CA. K. N. Modi vs. Pradeep Kumar Aanchalia, NKP 2076 B.S, Number 7, DN 10303, p. 1384
Case: Trademark Registration Dispute
Plaintiff/Applicant: Tejaram Dharampal Firm (India) represented by its authorized attorney CA. K. N. Modi
Defendant/Respondent: Pradeep Kumar Aanchalia, Director of Ganapati Tobacco Pvt. Ltd.
Decision Number: 10303
This case is related to recognition of foreign trademark registration certificates under Nepal’s Patent, Design and Trademark Act, 2022.
Facts of the Case:
Ganapati Tobacco Pvt. Ltd. applied for the registration of trademark “RAJ NIWAS” to the Department of Industry on 2072/05/09. Tejaram Dharampal Firm (India) through CA. K. N. Modi, filed a competing application on 2072/07/23 for the same mark claiming that it was the authentic international owner/user of “RAJ NIWAS” citing registrations in Lebanon and the UAE and use/production in India. The Department of Industry on 2073/06/06 B.S ruled in the favour of Tejaram Dharampal, holding that it was the authorized/genuine user of the mark and that it could not be registered in Ganapati Tobacco’s name.
Ganapati Tobacco appealed to the Patan High Court which reversed the Department’s decision and held that Ganapati Tobacco had applied first, had obtained trial production permission, had paid excise duty of over NPR 2.51 crore, and Tejaram Dharampal had not furnished valid proof of registration in its country of origin (India) at the time of application.
Tejaram Dharampal Firm sought review (Muddha Dohoryaune) before the Supreme Court under the Administration of Justice Act, 2073, arguing errors of law in the High Court’s interpretation of Section 21(c) of the Patent, Design and Trademark Act, 2022, and questioning the validity of the certificates it had submitted as proof of foreign registration.
Legal Issues:
- What legal provisions govern acquisition of trademark rights in Nepal, and under what conditions do foreign-registered trademarks gain recognition in Nepal?
- Who holds the rightful claim to register “RAJ NIWAS” between Tejaram Dharampal and Ganapati Tobacco and in whose name should it be registered?
- Was the decision of the Patan High Court correct and does Tejaram Dharampal’s claim on review hold merit?
Different Courts Decision:
Department of Industry:
The Department of Industry on 2073/06/06 B.S. ruled in favour of Tejaram Dharampal Firm; and the application of Ganapati Tobacco was rejected.
Patan High Court:
Appellate Court on 2074/02/18 B.S. reversed the decision of the Department of Industry and held that the trademark should be registered in Ganapati Tobacco’s name since it applied first, began trial production with government permission, paid excise duties, and Tejaram Dharampal failed to prove valid prior foreign registration in its country of origin (India) at the time of application in Nepal.
Supreme Court:
Supreme Court upheld the decision of Patan High Court and held that mere production and advertisement of goods abroad does not, by itself, entitle a party to trademark registration in Nepal. Under Section 21(c) of the Patent, Design and Trademark Act, 2022, a foreign trademark can be registered in Nepal only if the applicant submits a valid registration certificate from another country (or ideally the country of origin) at the time of application – mere “in process” status is insufficient.
Under Article 6(D) of the Paris Convention, a mark not registered in its country of origin does not receive protection – and the mark was not shown to be registered in India (the claimed origin). Ganapati Tobacco had applied earlier and had commenced actual trial production and market use in Nepal, satisfying the domestic use/registration priority principle.
The Supreme Court dismissed Tejaram Dharampal’s review petition and confirmed that “RAJ NIWAS” should be registered in the name of Ganapati Tobacco Pvt. Ltd., Jhapa.
Principle Established:
- The legal right over trademark vest in the creator/user who has it duly registered, not merely in whoever first uses or advertises it.
- Trademark registration in one country does not automatically confer recognition or rights in another country – each nation applies its own domestic law as per Article 6(1) of the Paris Convention.
- Under Section 21(c) of the Patent, Design and Trademark Act, 2022, a foreign trademark may be registered in Nepal only if the applicant furnishes proof of actual prior registration in another country at the time of filing – a mere claim or “in-process” status is insufficient.
Relevancy of the Case:
This decision is a leading Nepali precedent clarifying the interplay between the Paris Convention’s national treatment framework and Nepal’s domestic Patent, Design and Trademark Act, 2022.
