KATHMANDU, Feb 21: Kansai Nerolac Paints Nepal Pvt Ltd has won a six-year trademark rights battle against Rukmini Chemical Industries.
The Supreme Court on Wednesday issued a verdict in favor of the company which is a subsidiary of Kansai Paints Company Ltd, Japan.
At a time many foreign investors raising concern over weak provision for protection of intellectual property rights in Nepal, the apex judicial organ of the country came up with the verdict in favor of the Japan based multinational company.
Kansai Nerolac Paints, an Indian subsidiary of Kansai Paints of Japan, had launched its products in the Nepali market in 2014. Soon after, the multinational company had to face legal hurdles after Rukmini Chemical – a domestic firm – filed a complaint at the Department of Industries claiming that it holds the right to use ‘Kansai Nerolac’ brand.
Nerolac showroom in Pokhara
The department so far had been barring Kansai Nerolac Paints Nepal Pvt Ltd from using ‘Kansai Nerolac’ brand in its products, stating that the trademark was registered under the name of Rukmini Chemicals.
Although the Japanese company challenged the department’s decision in the court, it lost the first round of legal battle which forced it to send its products with the brand name KNP, an abbreviation for Kansai Nerolac Paint. Later on, the Japanese company filed petition at the Supreme Court to review the case.
On Wednesday, a joint bench of justices Tej Bahadur KC and Bam Kumar Shrestha issued the verdict in favor of the multinational company ruling that the court does not recognize Rukmini’s claim over the trademark right.
So far, the cases on violation of intellectual property right are governed by Patent, Design and Trade Mark Act 1965 and the Copyright Act 2002. Nepal enforced its first National IP Policy in March, 2017. According to officials of the Ministry of Industry, Commerce and Supplies, Nepali firms are rampantly violating intellectual property rights mainly due to the fine amount which is too low.
The court can impose a fine of up to Rs 100,000 on cases related to trademark infringement, while in patent infringement cases, fines cannot exceed Rs 500,000.
Taking advantage of the weak provision in the existing law, many locally-produced goods are being sold imitating logo and name of reputed brands of multinational companies.
This way the companies involved in such malpractice do not have to spend a lot to brand their products and gain a foothold in the market.
Meanwhile, the ministry has begun drafting the Intellectual Property (IP) Rights Bill realizing that the old laws cannot address emerging cases related to intellectual property.
