Context
The dispute concerned the extent to which Nepal’s trademark law protects internationally recognised geographical indications. The central question before the Supreme Court was whether an internationally recognised geographical indication could receive protection in Nepal when the country did not have a separate domestic law specifically governing geographical indications.
Facts
Mohini Hygiene Products applied to register the trademark “VISION (and logo)” for alcoholic beverages with the Department of Industry. The proposed label included the words “Finest Rare Scotch Whisky.”
The Scotch Whisky Association (SWA) opposed the application, arguing that “Scotch” identifies whisky originating in Scotland and carries an established reputation and geographical connection with Scotland.
Mohini contended that “VISION” was the principal element of its mark, that SWA held no registered trademark for “Scotch” in Nepal, and that Nepal had no separate geographical indication law.
The Department of Industry allowed registration only after the word “Scotch” was removed from the logo. Mohini appealed. The Patan High Court upheld the Department’s decision, and Mohini then approached the Supreme Court.
Decision
The Supreme Court upheld the decisions of both the Department of Industry and the Patan High Court. It held that Mohini was not entitled to use the word “Scotch” in its proposed trademark for alcoholic beverages produced outside Scotland. The “VISION” trademark could proceed only after the term “Scotch” was removed from the logo.
Result: VISION could proceed only after removal of the term “Scotch”.
Analysis
“Scotch” as a Geographical Indication
A geographical indication identifies a product as originating from a particular country, region or locality where a given quality, reputation or other characteristic of the product is essentially attributable to that geographical origin. The Court recognised that “Scotch” has a well-established connection with whisky produced in Scotland, arising from Scotland’s natural environment, water, traditional production methods, maturation process and long history of whisky making. Therefore, “Scotch” cannot be treated as a mere ordinary or descriptive word when used in relation to whisky.
Protection Even Without a Separate GI Law
Nepal does not yet have a comprehensive standalone geographical indications statute. The Patent, Design and Trademark Act, 2022 (1965) does not contain specific provisions for the protection and enforcement of GIs. Nevertheless, the Supreme Court held that the absence of a dedicated domestic GI law does not mean that internationally recognised geographical indications may be used freely in Nepal.
Nepal is a member of the WTO and a party to the TRIPS Agreement and the Paris Convention. The Court emphasised that a country cannot avoid its international obligations simply because it has not yet enacted specific domestic legislation. Protection of recognised geographical indications such as “Scotch Whisky” is therefore not optional; Nepal has an obligation to provide such protection in accordance with its treaty commitments.
Reciprocal Value for Nepalese Products
The Court also highlighted the broader importance of GI protection for Nepal. Products such as Ilam tea, Jumla beans and Basmati rice derive identity and commercial value from their geographical origin. If Nepal expects its origin-linked products to receive protection in foreign markets, it must itself respect geographical indications belonging to other countries. Strong protection of foreign GIs strengthens Nepal’s position when seeking similar recognition abroad.
Likelihood of Consumer Confusion
Mohini’s proposed logo contained the words “Finest Rare Scotch Whisky.” There was no evidence that the product originated in Scotland. Use of the word “Scotch” was therefore likely to lead ordinary consumers to believe that the whisky was produced in Scotland or had a genuine connection with Scotch Whisky. Such use would create confusion as to origin and allow the producer to free-ride on the reputation and commercial goodwill attached to Scotch Whisky.
Conclusion
This judgment is a significant development in Nepal’s intellectual property jurisprudence. It confirms that internationally recognised geographical indications can receive legal protection in Nepal on the basis of the country’s international treaty obligations, even in the absence of a dedicated domestic GI statute. The ruling also serves Nepal’s long-term interest in securing reciprocal protection for its own origin-based products in international markets.
