Nepal: High Court Decision permits the registration of “TOOFAN” Trademark 

The Patan High Court of Nepal delivered a significant judgment in the case of Raja Flavours and Food LLP vs. The Department of Industries (DOI) on May 23, 2023. The court held that merely filing a trademark is not sufficient to establish the rights of the owner, emphasizing that it is the duty of the involved party to actively pursue issues related to their trademark.          
Raja Flavours and Food LLP, an Indian Company specializing in the production of food and beverages, submitted an application on for the registration of the "TOOFAN" trademark for goods under class 30 in Nepal. However, during the examination process, it was determined that the TOOFAN trademark is confusingly similar to the previously filed TUFFAN trademark filed by a local company named Pragati Tea Industry on October 8, 2006. Due to this similarity, DOI decided against the proceeding for registration of the TOOFAN trademark, referencing the prior application for TUFFAN. The DOI issued a rejection letter.
Raja Flavours Company, dissatisfied with the decision of DOI, filed an appeal before the Patan High Court. Appellants argued that the company owning TUFFAN trademark has not fulfilled the necessary fee payments and certificate acquisition obligations, despite being published in the Industrial Property Bulletin on April 29, 2008. The appellants further argued that the TOOFAN is a well-known trademark among its consumers in Nepal and no law is violated or breached if the two companies with two different products use a similar trademark for their products. The applicant deemed to neglect its responsibility. 
Following a thorough consideration of the arguments presented by both the parties, High Court ruled in favor of appellants, permitting them to proceed with the registration as DOI did not conduct a proper examination process and no significant opportunity was provided for the opposition claimed by the appellants. As a result, the decision of the DOI is annulled and the TOOFAN trademark proceeds for the publication on the Industrial Property Bulletin as per decision of the Patan High Court, Nepal. 
Therefore, this case establishes that merely registering a trademark does not automatically confer rights to the owner. The owner must proactively monitor issues related to their trademark. This case serves as a prominent example for similar cases in the future.

RAJA FLAVOURS AND FOODS LLP vs. Department of Industries, decision issued by the Patan High Court on 7 May, 2023.

For further information please contact at: info@apexlaw.com.np