Case Study: Supreme Court of Nepal's Landmark Decision on Trademark Registration

August 18, 2025

Nepal Case Study on Protecting the brand with Trademark

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Supreme Court of Nepal's Landmark Decision on Trademark Registration: The Case of "GORDON'S" vs. "CORDON"

The Supreme Court of Nepal has issued a significant ruling (Decision No. 8577) concerning intellectual property rights, specifically trademark registration. This case highlights the judicial body's role in ensuring fair and just application of the Patent, Design, and Trademark Act, 2022. The decision, rendered on February 14, 2011 (Nepali calendar: २०६७।११।०२), pertains to a dispute between two prominent entities: Guinness United Distillers Vintners Amsterdam B.V. and Sumi Distillery Pvt. Ltd.

Case Overview

The dispute arose when Guinness United Distillers Vintners Amsterdam B.V., a global entity now known as Diageo Brands SBV, sought to register its well-known "GORDON'S" trademark in Nepal. The application was met with resistance from the Industry Department, which had already granted a similar-sounding trademark, "CORDON," to Sumi Distillery Pvt. Ltd. The department's initial decision was to deny the registration of "GORDON'S," citing the potential for consumer confusion.

Legal Arguments

The plaintiff, Guinness United Distillers, challenged this decision, arguing that the Industry Department's ruling was legally unsound. Their appeal was based on several key legal frameworks:

Patent, Design, and Trademark Act, 2022: The plaintiff contended that the department’s decision violated specific provisions of this act.

Nepal Treaty Act, 2047: The plaintiff also referenced this act, highlighting Nepal's obligations under international agreements.

International Conventions: Arguments were made referencing the Paris Convention and the World Trade-related Protocol, which Nepal is a signatory to, emphasizing the protection of trademarks across international borders.

The Court's Ruling

The case progressed through the judicial system, with a ruling from the Patan Appellate Court before reaching the Supreme Court.

Appellate Court's Decision: The Patan Appellate Court overturned the Industry Department's initial ruling. It observed that the department's decision lacked a proper judicial review and was primarily based on a legal officer's opinion. The appellate court ruled that the Industry Department must hear both the plaintiff's application for trademark registration and their separate complaint to cancel the defendant's "CORDON" trademark together.

Supreme Court's Final Decision: The Supreme Court upheld the decision of the Patan Appellate Court. The Supreme Court's ruling concluded that the Industry Department’s initial decision was legally flawed. The court instructed the department to reconsider the entire matter, ensuring a comprehensive and fair hearing for both the trademark registration application and the petition for cancellation. The Supreme Court dismissed the appeal from Sumi Distillery Pvt. Ltd., affirming the merit of the lower court's decision.

Conclusion

This ruling serves as a crucial precedent in Nepal's intellectual property landscape. It reinforces the principle that trademark registration and disputes must be handled with a proper judicial process, adhering to both national laws and international conventions. The decision ensures that intellectual property rights are protected through a thorough and impartial review, preventing the arbitrary denial of trademarks and safeguarding both brand owners and consumers from confusion.

Link published in Nepal Kanun Patrika, Nepal : निर्णय नं. ८५७७ - ट्रेडमार्क दर्ता

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