High Court in Nepal issues key ruling on trademark distinctiveness registration
04 March 2024
On November 28, 2023, the Patan High Court of Nepal issued a consequential verdict in Hawkins Cookers v. The Department of Industries, providing a significant ruling on the matter of trademark distinctiveness registration and legal implications for cancellation due to non-renewal.
Indian cookware manufacturer Hawkins Cookers applied for the registration of the Contura trademark in Nepal under class 21 on January 14, 2019. However, during the examination conducted by the Department of Industries (DOI), it was found that the Contura trademark was confusingly similar to the Diamond Contura mark filed by Nepalese kitchenware manufacturer Tinau Top Kitchen Industries on June 9, 2008. As a result, the DOI decided not to register the Contura trademark due to the prior filing of the application.
Hawkins Cookers filed an appeal before the Patan High Court, arguing that the words and pictures used by the other company for the Diamond Contura and Contura marks are different. The appellants also emphasized the widespread recognition of CONTURA as a well-known trademark among their consumers in Nepal.
After thorough consideration of the arguments presented by both parties, the High Court ruled in favour of Hawkins Cookers, allowing them to proceed with the registration process. The court acknowledged the distinctiveness between the two marks and noted that the Diamond Contura trademark had been cancelled due to non-renewal. Tinau Top Kitchen initiated a reapplication for the trademark on May 30, 2017. As per this basis of a decision given by the Patan High Court on November 28, 2023, the registration process for the Contura trademark will proceed and will be published in the Industrial Property Bulletin.
The ruling clarifies that the applicant is obligated to follow up on all its trademark-related issues. This significantly carries legal consequences for the registration of a trademark after negligent cancellation due to non-renewal. This decision sets a rule, influencing a positive approach for similar cases in the future.
- Asia IP
