Nepal: High Court affirms distinctiveness between GM and GMS trademarks citing “Similarities in Trademarks”

The Patan High Court of Nepal has ruled on the case involving Global Message Services vs. The Department of Industries (DOI), affirming the distinctiveness between GM and GMS trademarks. 
Global Message Services is a Swiss-based company specializing in the production of computer hardware and software programs for the telecommunications industry, submitted a trademark application for 'GMS' in Nepal under classes 9, 35, 38, and 42. However, upon examination it was found that the trademark GM had already been registered with GM MODULAR Pvt. Ltd under class 9. Thus, DOI rejected the application of GMS trademark stating the prior filing of the similar trademark during the examination process.
Following their dissatisfaction with the DOI's decision, Global Massage Services filed an appeal before the Patan High Court. The High Court addressed the queries of the legality of the decision and whether the grounds for the appeal justified publication in the Industrial Property Bulletin.
The Patan High Court ruled in favor of Global Massage Services on September 3, 2023. The court emphasized the importance of the "Similarity in Goods and Services" principle in trademark registration. GMS trademark is clearly distinguishable from the GM trademark, with distinct spellings and non-similar color combinations of red and green. Additionally, there are no phonetic similarities between the two trademarks, and there is no potential for confusion among the consumers due to the absence of deceptive similarities. It was noted that Global Massage Services operates in production of recorded computer programs for telecommunications, whereas GM Modular Pvt. Ltd. primarily offers services related to electric fluorescent lamps, chokes, transformers, electric switches, cut-outs, and electric connectors which implies the production in distinct areas. The Patan High Court quashed the decision of DOI and approved for the publication of the GMS trademark in class 9 on the Industrial Property Bulletin for further registration.
Hence the case establishes that the court's emphasis on careful consideration of the distinctiveness between the marks implies the importance of thorough examination in such matters. The decision sets a decision affirming that differences in spelling, color combinations, and the nature of products and services offered play a crucial role in determining the uniqueness of trademarks. This case highlights the need for fairness in trademark evaluations to avoid potential confusion in the market and protects the intellectual property rights of companies operating in distinct sectors.

Global Message Services AG vs. The Department of Industries decided by the Patan High Cout on September 3, 2023.

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