Trademark Objection Reply: Sample & Structure (Nepal)

A reply to a trademark objection is the defence the Department of Industry must let you put before it decides. The Act then obliges it to inquire further on the defence made. Content matters far more than layout.

Key takeaways

• The right to answer is statutory. Sec. 18(1) requires the Department to give a sufficient opportunity to defend.
• The same subsection obliges it to inquire further on the defence made, so a reply that engages nothing gives it nothing.
• Sec. 18(1)'s proviso holds the grounds: prestige, public conduct or morality, national interest, another mark's reputation, or already registered to another.
• The deadline is the one printed on your notice. Do not take a period from another application or another article.
• A downloaded format cannot do the work, because the Department is examining your mark against a specific cited one.
• Sec. 18(3) lets the same grounds cancel a registration later, after a show-cause opportunity.
• Under Sec. 18B you must not present the mark as registered while the application is still being examined.

What is a trademark objection reply in Nepal?

It is your written answer to the concerns the Department of Industry raises after examining your application under the Patent, Design and Trade Mark Act 1965.

It is not an appeal, because nothing has been decided. The application is live, and the Department is asking you to satisfy it first.

Most of what is called a "trademark objection format" is packaging. The Department is weighing your mark against a specific ground and, usually, a specific earlier mark.

Does the Act actually give you a right to reply?

Yes, and in unusually direct language. Sec. 18(1) requires the Department to conduct necessary investigation and provide sufficient opportunity to defend before it decides whether registration is appropriate.

The same sentence goes further. It says the Department shall also conduct further inquiry based on the defence made, which makes the content of your reply the thing that drives the next step.

That wording came from the 2006 amendment, alongside matching words in Sec. 17(1). Before then the Act said nothing about hearing the applicant.

Which grounds can the Department raise?

The proviso to Sec. 18(1) is the list, and it is short. A mark shall not be registered where it may hurt the prestige of any individual or institution, adversely affect public conduct or morality, undermine the national interest or the reputation of another person's trade mark, or where it is already registered in another person's name.

Most Nepali objections are the last two. But a notice can raise several at once, and answering one is not answering the notice.

Why won't a downloaded reply format work?

Because the statutory duty is to inquire on the defence made, and a template makes no defence. It arranges headings around an argument that has not been written.

The specific problem is the cited mark. Every similarity objection names a different registration, with its own owner, date, goods and appearance, and the comparison is the reply.

A borrowed format also carries borrowed law. Replies copied from foreign practice cite procedures Nepal does not have, which tells the examiner the notice has not been read.

We deliberately publish no fill-in-the-blanks reply here. Drafting is an advocate's job, and a reply built around your own notice beats a well-formatted empty one.

What must a reply address?

Treat it as a set of questions rather than a document. If the draft answers all of these, the layout looks after itself.

How do you answer an "already registered" ground?

By pulling the cited record and treating it as a fact. Owner, number, class, goods and the mark exactly as filed.

Sometimes the record answers the objection by itself: the owner is a related company, the goods are genuinely different, or the citation is against a different sign.

Start from the register, not from memory. Our published trademark search covers marks published in Department bulletins, and the application-number lookup finds one by number.

How do you answer a reputation ground?

By comparing the two marks as a Nepali buyer would meet them, not as two images side by side.

Look at the dominant element, how each is pronounced, what each means, the goods on each specification and the trade in which they are bought. The owner search shows what else the cited owner has published.

Where the marks are genuinely close, arguing is the wrong lever, and what counts as confusingly similar explains why.

How do you answer a prestige or morality ground?

With meaning and context rather than law. These grounds turn on what the sign conveys in Nepal, in the language a buyer reads it in.

An explanation of the word's sense, its origin, or how it reads on the goods is often the whole answer. Where one element causes the problem, removing it can be cleaner than defending it.

The national-interest ground is rarer and harder to predict. Where the artwork rather than the word is the problem, registering a logo explains what can and cannot be changed.

What order should the work be done in?

Deadline first, drafting last. The order below keeps the useful work ahead of the writing.

1. Read the date on the notice and diary it the day the notice arrives.
2. Get the complete communication from your agent if you have only been told about it.
3. Split the notice into grounds and number them, even where they overlap.
4. Pull every cited record and set out owner, date, class and goods for each.
5. Decide argue or amend for each ground separately, before anything is written.
6. Assemble the annexures, with one line saying which ground each one answers.
7. File it properly and keep the acknowledgment, with every page accounted for.

Where an agent acts for you, the Department's form asks for a power of attorney, and Sec. 20 makes that representative's acts count as your own, the reply included.

Which evidence actually helps?

Dated material that proves a sentence in the reply. Labels, invoices, catalogues, advertising and company records work when tied to a specific ground.

The same bundle does almost nothing against an earlier filing. Nepal is first-to-file, so proof that you have traded for years does not displace somebody who applied before you.

Unsupported assertion helps least. "Our brand is well known" is a claim; a dated invoice under the mark is a fact.

Should you argue or amend?

Argue where the record supports you: different owners, different goods, a genuinely different overall impression.

Amend where the notice has found something real — a missing document, a specification that claims more than the business does, an element of the label causing the problem.

Narrowing the goods wording keeps both the sign and the filing date. Check the right trademark class first, because Sec. 18A(2) allows one category per application and a wrong NICE class is fixed by refiling, not by argument.

What deadline applies?

The one printed on your notice. That is not an evasion; it is the accurate answer.

Several different 35-day periods exist in Nepali industrial-property practice, which is probably why that figure gets repeated online for examination replies. We cannot confirm it as a fixed rule for every notice.

If the wording on yours is unclear, confirm it with the Department of Industry or your representative in writing, and do it in the first day or two rather than the last.

What happens if the reply does not persuade the Department?

The proviso is mandatory: where a listed ground is made out, the mark shall not be registered. A refusal is a decision, not another round of correspondence.

A fresh application is sometimes the only route left, and it carries a later date. Clear the replacement name first through our clearance service, because a second refusal costs the same months again.

What follows a refusal, and whether an appeal lies and to which forum, is a question for an advocate on your own file. Read why applications are rejected for the pattern rather than the remedy.

Can the same grounds come back after registration?

Yes, and this is the reason to answer properly rather than minimally. Sec. 18(3) lets the Department cancel a registration if it is satisfied that any of the proviso's circumstances exists.

The subsection carries its own safeguard: before cancelling, the Department must give the holder a reasonable opportunity to show cause why the mark should not be cancelled.

So the grounds you meet at examination can be raised for as long as you hold the mark, and a thin answer now is a thin record later.

Can you call the mark registered while this is going on?

No. Sec. 18B says no trade mark may be used as a registered trade mark without being registered at the Department, and an application under objection is not registered.

Sec. 19 backs that with a fine and confiscation of the goods and articles connected with the offence, on the orders of the Department, according to the gravity of the offence.

Change the packaging copy, not just the letterhead. A pending application is pending on every surface it appears on.

Before refiling anything, test the replacement against the register with the conflict checker, including sound-alikes.

Common mistakes

• Assuming a deadline from elsewhere. The notice carries its own date, and that is the binding one.
• Filling in a downloaded format. It arranges headings around an argument nobody has made.
• Answering the easiest ground. An unanswered ground stands and decides the application.
• Arguing about a missing document. Supply it; it is not a point of principle.
• Changing the mark to escape the citation. A materially different sign is a new mark and a new date.
• Attaching everything. A document with no stated job is a document the examiner must interpret.

A worked example

This is an illustration, not a real case. A Biratnagar company applies for a word mark on packaged snacks and the notice raises two grounds: an earlier similar mark, and a goods list wider than the business.

The weak reply says the logos use different colours. The notice cited the words, and the second ground goes unmentioned.

The stronger reply takes the cited record first — owner, number, class, goods, the mark as filed — and compares it with the applied mark on sound, look and meaning.

It then narrows the goods list to what the company actually sells and attaches dated packaging, with one line saying which ground it answers.

In short

A reply is a defence the Act obliges the Department to consider, and to inquire further upon. Find the ground, pull the cited record, answer each point on its own, and attach only what you can explain.

If it succeeds, the mark goes to the Industrial Property Bulletin, the opposition period follows, and only then does the registration certificate issue for a seven-year renewable term.

The Act is published by the Nepal Law Commission, and the classification by WIPO. For how the process fits together, see the trademark application process; for the drafting itself, our opposition and enforcement team acts on live files.

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If a notice has arrived, the first hour is best spent on the deadline and the cited record, not on a draft. Send us the notice and the application number through contact, or start a clean file with trademark registration.