Commentary of the case Tejram Dharampal Firm v.

Ganapati
Tobacco Pvt. Ltd.

Term Paper

in

Intellectual Property Law

Word Count: 2281

Submitted to:

Subject Teacher’s Full Name: Anish Bastola

Designation: Associate Professor

Kathmandu School of Law

Prepared by:

Name: Rejina Paudyal

Year: Fifth Year

Roll Number: 027-5-2-07253-2016

Tejram Dharampal Firm v. Ganapati Tobacco Pvt. Ltd.1: A case
commentary

1. Introduction

The case concerns a dispute regarding the registration of trademark ‘RAJ NIWAS’ in the name
of two reputed industries, one having its principal place of business in Nepal named Ganapati
Tobacco Pvt. Ltd. and the other in India named Tejram Dharampal Firm. Both defendant and
applicant had filed an application for registration within a similar time frame, except the
defendant, Ganapati Tobacco had filed a bit earlier which is why the case was decided in its
favor as per the first to file doctrine.

A lot of other issues were discussed in this case by multiple tiers of judicial and quasi-judicial
bodies. For example, the Department of Industries (hereinafter DOI) was of the view that the
plaintiff Tejram Dharampal has exclusive right over the trademark ‘RAJ NIWAS’, while Patan
High Court, when appealed by Ganapati Tobacco gave a different idea on trademark
registration. Held, that for trademark registration, the production, distribution and revenue
distribution along with consumption of the product are important elements to be taken into
consideration. As, the defendants were involved in all of these acts, the decision was given in
their favor.

Being an Indian enterprise, the plaintiff, Tejram Dharampal, was obliged to present certificates
of home registration plus the registration that they claimed to have done in countries like
UAE, Lebanon, etc. as per the Patent Design and Trademark Act, 2022 and the Paris
Convention as well. Rather, their arguments roamed around the fact that they had been
producing, distributing and advertising in multiple countries and have obtained the goodwill
in those years.

1 Tejram Dharampal v. Ganapati Tobacco Pvt. Ltd., NKP 2076 (2019), volume 7, Decision no. 10303.
2. Reasoning behind the decision

The case was decided by a division bench of Chief Justice Cholendra Shumsher J.B.R. and
Justice Prakash Kumar Dhungana. The bench laid down two widely accepted elements for the
recognition and protection of trademark, registration and its commercial use. The court has
discussed certain ideas and principles of trademark before coming to the verdict and the fact
that registration of trademark is given utmost importance is not unsurprising as both Patent
Design and Trademark Act 2022 and Paris Convention suggests the same. Justice Dhungana
wrote:

A trademark registered in country does not ipso facto makes it registered in

another one. Every country has its own domestic legislations for trademark
registration. Even a well-known mark must first be registered as per the
domestic legislation of the other country to be protected under its law…Paris
Convention itself under Article 6(1) has given mandate to member states to
determine the conditions for the filling and registration of trademarks by their
domestic legislations and Nepal, abiding by the provisions of Paris
Convention, has its own procedures for trademark registration and
protection…

The court has taken the basis of Section 16 of Patent Design and Trademark Act, 2022 which
provides, ‘a person may acquire, under this Act, title to the trademark of his business, upon
registration in the DOI’ to take the decision. It also shades light on Section 21b and 21c of
the Act which provides that a trademark registered in a foreign country shall be valid only if it
is registered in Nepal and that the Department shall register a foreign trademark without any
enquiries if an application along with the home registration certificate or of any other foreign
country is submitted respectively.

In this regard, when the documents were investigated by the court, it was found that even
though the plaintiff had claimed to have registered its trademark in countries like UAE and
Lebanon, its inability to submit the certificates alongside the application proved otherwise.
Also, it so turned out that the plaintiff had filed the application on 2072/7/23 while the
defendant had filed on 2072/5/9, two months earlier. According to Justice Dhungana,
 The plaintiff claimed that it has been involved in production and advertisement
under the trademark RAJ NIWAS in India and other countries as well,
however, mere production and advertisement of the product do not suffice
the registration of the trademark. It has nowhere been provided neither by
Patent Design and Trademark Act 2022 and as per Article 6D of Paris
Convention, a trademark not registered in the country of origin cannot claim
for protection…

The court has also cites another Supreme Court’s decision2 which provides,

Nepalese law protects registered trademark only. A trademark, no matter how

long in use, if not registered in the DOI, cannot be claimed as an exclusive
right by the owner…

Hence, the decision was given in the favor of the defendant, Ganapati Tobacco Pvt. Ltd.

3. Principle of territoriality in Intellectual Property Law

One of the most important and often reiterated principles of IP Law is the principle of
territoriality. In simpler words, the term ‘territorial’ itself serves to the meaning of the principle.
Its fundamental objective dimension means that an IP right is limited to the territory of the
state granting it.3

All forms of IP rights, be it copyright, trademark, industrial design, etc. may be protected in
country but unprotected in the other. The domestic legislations of each member country is
equally respected as long as it is consistent to the international standards and treaties. For
example, the substantive minimum rights and the principle of national treatment according to
which each country shall accord the rights provided for in the conventions to the national of
other member states.4

2 Madan Prasad Lamsal v. Repsona Pvt. Ltd., NKP 2068, volume 9, Decision no. 8686.
3 Alexander Peukert, Territoriality and Extraterritoriality in IP Law, Beyond Territoriality: Transnational Legal Authority in
an Age of Globalization, Brill Academic Publishing, Boston, 2012, p. 1, available at Territoriality and
Extraterritoriality in Intellectual Property Law by Alexander Peukert :: SSRN, accessed on 16 July 2021.
4 Ibid, p. 3.
In today’s world, however, due to the existence of various multilateral conventions and treaties
binding IP laws worldwide into one coherent system, this principle is often questioned. The
protection of well-known trademark, Article 5(1) of TRIPS which prohibits the imposition of
formal requirements regarding registration of copyright for its protection, Protocols like
Madrid Protocol which provides for the collective protection of trademark, etc. shows that
strict form of territorialism has never been applied in IP law. The reason behind the protection
of well-known trademark is because the traditional or classical understanding of the protection
of trademarks leads to a situation where foreign brands cannot be protected. Thus, the modern
system of trademark protection has developed the concept of well-known marks as an
exception to this principle of territoriality.

Having said that, it cannot be denied that territorial domestic laws are always considered to be
supreme in nature. Even international treaties and conventions do not adhere to complete
annihilation of territorialism. Both Paris and Berne Conventions, being the first multilateral
treaties on IP rights, still preserved the principle of territoriality and states were largely
permitted to design their national IP laws in a manner that suits their needs and interests as
long as the basic principle of trade law is respected.5 Even though copyright need not be
registered to be protected, but the Copyright Act of Nepal obliges the owner to register their
work for protection. In the case discussed above as well, domestic legislation has been given
utmost priority where judges have reached to a decision solely on the basis of the Patent
Design and Trademark Act 2022. It is a true fact that this principle allows countries to design
their IP laws in a manner that facilitates the achievement of specific societal goals.6

5 Emmanuel Kolawole Oke, ‘Territoriality in IP Law: Examining the Tension between Securing Societal Goals
and Treating IP as an Investment Asset’, Scripted 313, volume 15:2, 2018, p. 316, available at
file:///C:/Users/hp/Downloads/okeSCRIPTed.pdf, accessed on 16 July 2021.
6 Ibid, p. 313.
4. Searching for well-known trademark (an exception to territoriality
principle)

Protection of well-known trademark by several international treaties and national legislations,

including Paris Convention7 and TRIPS8 Agreement shows the importance of its protection.
A trademark which has earned reputation is understood and referred through several
expressions such as well-known mark, famous trade mark, widely known trademarks, etc.9
However, Nepal has yet not included such provision regrading well-known mark in the Patent
Design and Trademark Act, 2022. Nevertheless, court practices seem to be moving towards
the positive end of the tunnel. One of the recent landmark judgement would be the case of
Kansai Nerolac Paints v. Rukmani Chemical Industries Pvt. Ltd. Even though the defendant had
claimed under the first to file doctrine regarding the dispute of use of trademark ‘KANSAI’
and others, the court gave the decision in favor of the plaintiff, Kansai Nerolac Paints,
recognizing its status as a well-known trademark.

This however, is not always the case. There are times where the decisions of different authority
in Nepal seem to be inconsistent and the decisions are rather traditional and not in the favor
of well-known brands. On 2 August 2017, Patan High Court upheld the ‘first to file’ doctrine
to receive protection under Nepalese trademark law and refused to consider the trademark
‘Havells’, which has been used in Nepal since 200110. In Kansai, the DOI neither discussed
about well-known mark nor did it render decision in its favor, the court, however proved
otherwise.

In Tejram, the plaintiff had claimed to have obtained goodwill of the mark, ‘RAJ NIWAS’.
Even though the valuation of goodwill is a debatable and relative concept, it is an intangible
asset and must be taken into consideration. The plaintiff in Tejram had been producing and
advertising its product through different media so, it is obvious that it might have gained a
certain level of popularity and reputation in the market (goodwill), if it claims as such.
However, the court has fallen short in discussing this matter and so is the problem with

7 Paris Convention for the Protection of Industrial Property, 7 July 1884, Paris, 20 March 1883, art. 6 bis.
8 Agreement on Trade-Related Aspects of IP Rights, 14 April 1994, 1869 UNTS 299, Marrakesh, art. 16(2).
9 Pratyush Nath Upreti, ‘Trumping local marks: A note on well-known trade marks in Nepal, Journal of IP Law

and Practice 144, volume 14:2, 2019, p. 147.

10 Ibid, p. 144.
traditional understanding of the protection of trademarks, that is, irrespective of being well-
known, a mark must be registered11.

It was in 1996 on McDonald’s Corporation v. Joburger Drive-Inn Restaurant12, the level of awareness
in the public for a brand to be well-known was discussed. Because of diversity of population
as to the status, education, cultural values, etc. and the fact that knowing the degree of
awareness might be vague and not very specific, not all population might be well aware about
a brand13. In Tejram, the defendant had claimed that there is no any record showing the
recognition of ‘RAJ NIWAS’ trademark as a well-known brand in India. These might be the
reasons and also a defense for the Supreme Court as to why no discussion in the matter of
well-known mark was done in Tejram.

Nevertheless, the decision might have been slightly different, had the ‘goodwill’ or even the
‘well-known’ characteristics of plaintiff’s trademark been brought up. Also, well-known marks
are usually protected, irrespective of whether they are registered or not14.

5. Conclusion

As I had said earlier, Nepalese laws and court practices seem to be tilted more towards the
traditional aspects of IP protection. In today’s period of globalization, it is very necessary to
adapt the domestic laws in coherence with the international treaties and practices. The fact
that the Patent Design and Trademark Act 2022 has not even mentioned the term ‘well-
known’, let alone the protection bit, shows the outdated fashion that we have been following
in this regard. In Tejram, the judges were very much right to give decision in favor of Ganapati
Tobacco based on first to file principle and also based on the fact and evidence that the
plaintiffs were unable to provide registration certificates along with the application filed in

11 Ibid, p. 147.
12 McDonald’s Corporation v. Joburgers Drive-Inn Restaurant (Pty) Ltd., South Africa, 1996, Case no. 547/95.
13 Ibid.

14 LTC Harms, Famous Trademarks, WIPO, Tokyo, 2017, available at

https://www.wipo.int/edocs/mdocs/mdocs/en/wipo_ipr_tyo_17/wipo_ipr_tyo_17_t15.pdf, accessed on 16
July 2021.
DOI. My only contention and concern however, is how the concept of well-known mark and
goodwill is completely neglected by the court.

In Nepal, IP laws are seriously neglected by the law makers, compared to other parts of law.
The outdated and old-fashioned legislations lead us to nowhere in this competitive era. The
National IP Policy 2017 seems to formulated with high aims and objectives, the only concern
is, the vast gap between the letters of the policy and its implementation. On positive note, in
the 2017 case of Facebook Inc. v. Amrit Distillery, DOI had ruled that ‘FACEBOOK’ is a well-
known trademark in Nepal15. The new IP Bill also has high expectations to fulfill and is the
only hope. It doesn’t discard the first-to-file doctrine but as per the draft, the proposed bill
provides for a duty on DOI to protect well-known marks which are not registered in Nepal.
So, to conclude on a positive note, the government has felt the need for a change and has also
taken necessary measures.

15 Pratyush Nath Upreti, ‘Prioritize IP Rights’, The Kathmandu Post, Kathmandu, 26 April 2019, available at
https://kathmandupost.com/opinion/2019/04/26/prioritise-intellectual-property-rights, accessed on 16 July
2021.
 BIBLIOGRAPHY

 Harms, LTC, Famous Trademarks, WIPO, Tokyo, 2017

 Oke, Emmanuel Kolawole ‘Territoriality in IP Law: Examining the Tension between

Securing Societal Goals and Treating IP as an Investment Asset’, Scripted 313, volume
15:2, 2018

 Peukert, Alexander, Territoriality and Extraterritoriality in IP Law, Beyond Territoriality:

Transnational Legal Authority in an Age of Globalization, Brill Academic Publishing,
Boston, 2012

 Upreti, Pratyush Nath ‘Prioritize IP Rights’, The Kathmandu Post, Kathmandu, 26 April
2019

 Upreti, Pratyush Nath, ‘Trumping local marks: A note on well-known trade marks in
Nepal, Journal of IP Law and Practice 144, volume 14:2, 2019

 WIPO, WIPO IP Handbook, WIPO Publication, 2nd edition, 2004

THANK YOU 