Intellectual Property Case: Nurpratap Rana vs. Department of Industries et. al, NKP 2062, Number 5, DN 7536, p. 539.
Case: Writ of Certiorari
Plaintiff/Applicant: Nurpratap Rana on behalf of Kiran Shoe Manufacturers
Defendant/Respondent: Department of Industries, Basnet Footwear Industries and Patan Appellate Court
Decision Number: 7536
This case is related to trademark infringement (deceptively similar trademarks) and the use of certiorari to challenge a judgement made against Principle of Natural Justice.
Facts of the Case:
Kiran Shoe Manufacturers had earlier registered the trademarks “Gold Star”, “Super Star” and “Seven Star” for sports shoes and had built market goodwill and reputation around these marks. Later, Basnet Footwear Industries applied for registration of three new trademarks – “Good Star”, “Gold Super” and “Eleven Star” to the Department of Industries. The Department of Industries rejected Basnet Footwear’s applications on 2059/06/18 holding that these marks were phonetically and visually similar to Kiran Shoe’s already registered trademarks and could harm Kiran Shoe’s goodwill and mislead consumers.
Basnet Footwear appealed to the Appellate Court, Patan, which reversed the Department’s decision on 2060/01/30 and ordered registration of the three marks without hearing from Kiran Shoe Manufacturers who was not party to the initial proceedings of the case but was directly affected by the decision of the Appellate Court.
Upon learning of this, Nurpratap Rana on behalf of Kiran Shoe’s Manufacturers filed a writ petition to the Supreme Court under Article 88(2) of the Constitution of the Kingdom of Nepal, 2047, seeking certiorari to quash the Appellate Court’s decision, arguing violation of Principle of Natural Justice and infringement of statutory trademark rights under Section 16 of the Patent, Design and Trademark Act, 2022.
Legal Issue:
- Is the trademark registered by the Basnet Footwears same as, or different from, the trademark registered by the petitioner?
- Is the decision of the Patan Appellate Court directing the trademark requested by Basnet Footwears lawful or not?
- Has the legal or constitutional rights of Kiran Shoe’s Manufacturers been infringed by the acts of respondents or not?
- Does a situation regarding the issuance of the writ as demanded exist or not?
Different Courts Decision:
Department of Industries:
The Department of Industries rejected Basnet Footwear’s applications on 2059/06/18 finding “Good Star”, “Gold Super” and “Eleven Star” phonetically and visually similar to Kiran Shoe’s registered trademarks which would likely mislead the public and damage Kiran Shoe’s established goodwill invoking the proviso to Section 18(1) and Sections 2(c) and 16(2) of the Patent, Design and Trademark Act, 2022.
Patan Appellate Court:
The Patan Appellate Court reversed the decision of Department of Industries on 2060/01/30 and held that mere similarity of name/mark did not by itself restrict an industry’s right to choose a name, and directed the Department of Industries to register the three marks in Basnet Footwear’s name without hearing Kiran Shoe Manufacturers, the party whose rights were directly affected.
Supreme Court (Joint Bench):
Judge Anup Raj Sharma held that the writ should be issued since no effective alternative remedy existed for a non-party (i.e Kiran Shoe’s Manufacturers) which was affected by the decision of the Appellate Court.
Judge Paramananda Jha held that the writ should be dismissed reasoning that alternative remedies existed under Section 21(a) and Section 27 of the PDTA, 2022 and Section 86 of the Court Proceedings Chapter of the Muluki Ain, 2020.
Due to the conflicting judgements between the judges the matter was referred to a Full Bench of the Supreme Court under Rule 3(1) (a) of the Supreme Court Rules, 2049.
Supreme Court (Full Bench):
The full bench of the Supreme Court quashed the decision of the Patan Appellate Court. It held that the registration of three marks of Basnet Footwears violated the proviso to Section 18(1) of the Patent, Design and Trademark Act, 2022, which prohibits registration of a mark identical or similar to an already-registered mark likely to harm another’s reputation or mislead the public. The court issued the writ of certiorari and restrained the Department of Industries from registering the proposed trademarks in Basnet Footwear’s name.
Principles Established:
- Only a person who was a party to the proceedings before the Department or the Appellate Court has the right to file an appeal under Section 27 of the Patent, Design and Trademark Act, 2022. A third party who was not involved in the proceedings cannot claim statutory right of appeal.
- Publication of trademark details under Section 21A (1) of the Patent, Design and Trademark Act, 2022 is not mandatory; therefore, no appeal or complaint lies merely against a decision to publish such details.
- Trademarks exist to distinguish one company’s goods from another’s. A trademark deceptively similar to an already registered one cannot be registered, even with minor changes in wording.
- A trademark which is visually and phonetically similar risks confusing consumers and harming the original owner’s goodwill.
Relevancy of the Case:
This case protected the Intellectual Property right of the famous Nepali brand “GoldStar” shoes by adopting the visual and phonetic similarity tests shaping how the Department of Industries and courts evaluate trademark confusion.
