In the case of Mohini Hygiene Products v. The Scotch Whisky Association (Case No. 075-CI-1164; Trademark Registration) decided on August 19, 2025 (but published this week), the Division Bench of the Supreme Court of Nepal delivered a landmark judgment reconciling domestic industrial property statutes with international treaty obligations. The dispute arose from an attempt by a domestic enterprise to register an alcoholic beverage trademark embedding geographical indication terminology, raising decisive questions on the extraterritorial standing of foreign regulatory bodies and the direct enforceability of multilateral conventions in the absence of a domestic sui generis enactment.
Mohini Hygiene Products, an enterprise situated in Ward No. 8, Devdaha VDC, Rupandehi, filed an application (Application No. 063546) before the Department of Industry (DOI) under International Class 33 to register the trademark “VISION (and logo)” for alcoholic beverages. The composite logo contained the wording “Finest Rare Scotch Whisky”. The Scotch Whisky Association (SWA), an association incorporated under the United Kingdom Companies Act, 1948, representing 68 member entities engaged in the distilling, blending, and trading of Scotch Whisky worldwide, filed an opposition against the proposed mark. SWA contended that “Scotch Whisky” is a recognized Geographical Indication (GI) originating solely from Scotland, and that permitting a domestic manufacturer to incorporate the designation “Scotch” in relation to spirits produced in Nepal deceives the consuming public, constitutes unfair competition under Article 10*(bis)*** of the Paris Convention, violates Articles 22 and 23 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and infringes the proviso to Section 18(1) of the Patent, Design and Trademark Act, 2022 (1965) (PDTA).
Mohini Hygiene Products resisted the opposition, submitting a written reply asserting that SWA possessed neither a registered trademark in Nepal under Sec. 16(1) of the PDTA nor a foreign home-registration certificate, and therefore lacked locus standi to lodge a formal opposition. The applicant further contended that “Scotch” had acquired generic status indicating a style or character of liquor, and that the DOI could not restrict the statutory rights of a domestic industry by importing uncodified geographical indication principles.
On November 26, 2017 (2074/08/10 B.S.), the Director General of the DOI determined that incorporating the word “Scotch” on alcoholic beverages produced in Nepal violates international conventions, the statutory bar under the proviso to Section 18(1) of the PDTA, and earlier administrative precedent, including the departmental decision in The Scotch Whisky Association v. Amrit Distillery Pvt. Ltd. The DOI held that Mohini could not use the word “Scotch” within its logo, while rejecting SWA’s broader prayer to annul the trademark application in its entirety. The DOI additionally issued an internal directive instructing its Industrial Property Branch to refuse incoming trademark applications containing the words “Scotch” or “Scottish” on logos for alcoholic products. On July 3, 2018 (2075/03/19 B.S.), the Patan High Court dismissed Mohini’s appeal and affirmed the DOI’s decision. Dissatisfied, Mohini petitioned the Supreme Court under Sec.12(1)(a) and (b) of the Judicial Administration Act, 2073, which granted leave to appeal on April 23, 2019 (2076/01/10 B.S.).
Decision of the Supreme Court
The Division Bench comprising Hon’ble Justice Hari Prasad Phuyal and Hon’ble Justice Shreekant Paudel unanimously dismissed the appeal and affirmed the decisions of both the Patan High Court and the DOI.
Locus Standi of Foreign Regulatory Entities and International Associations
The Court held that a foreign regulatory body or trade association possesses competent legal standing to file opposition proceedings in Nepal to safeguard the reputation and authenticity of an established geographical indication. Because Nepal is a contracting member of the WTO and the Paris Convention for the Protection of Industrial Property**, Articles 10 and 10(bis) of the Paris Convention** grant interested entities the legal right to challenge false indications of source and unfair competition. Under Section 18(1) of the PDTA, any interested person or organization is legally entitled to lodge an opposition once a trademark is published, specifically where a proposed mark is likely to impair the goodwill or reputation of an entity or deceive the public.
To reinforce this finding, the Bench took persuasive support from the decision of the High Court of Madhya Pradesh in The Scotch Whisky Association v. J.K. Enterprises (2023), observing that a body tasked with regulating and promoting a geographical indication is an independent legal entity capable of pursuing legal remedies directly, without the mandatory joinder of local authorized users.
Domestic Absence of GI Legislation and Mandatory Treaty Enforcement
The Court held that the absence of an enacted, sui generis domestic GI statute cannot serve as a valid legal ground to bypass international treaty obligations. The Bench analyzed Article 25 of the Constitution of Nepal, observing that the constitutional concept of “property” expressly encompasses intellectual property, which includes geographical indications alongside patents, designs, trademarks, and copyrights.
The Court held that following Nepal’s accession to WIPO in 1997, the Paris Convention in 2001, and the WTO/TRIPS Agreement in 2004, the provisions of these treaties create binding legal duties for the state. Pursuant to Sec. 9(1) of the Nepal Treaty Act, 2047 (1990), whenever a domestic statute conflicts with an international treaty ratified or acceded to by Nepal, the treaty provision shall apply as domestic law. Applying the customary international law doctrine of pacta sunt servanda, the Bench held that the enforcement of Articles 22 and 23 of TRIPS is a mandatory duty rather than an optional administrative discretion, meaning that established foreign geographical indications such as “Scotch Whisky” or “Champagne” must be protected under existing statutory mechanisms.
Strict Protection for Spirits and the Prohibition of Evocation
The Court held that Article 23 of TRIPS accords an absolute standard of protection to wines and spirits, prohibiting the unauthorized adoption of a geographical indication even where the true origin of the beverage is indicated, or where the term is used in translation or accompanied by qualifiers like “kind,” “type,” “style,” or “imitation”.
The Bench relied upon the decision of the Delhi High Court in The Scotch Whisky Association & Anr. v. Golden Bottling Ltd. (2006), observing that geographical names carry distinct commercial goodwill that domestic blenders and manufacturers cannot dilute or misappropriate to gain an unearned advantage. Furthermore, citing the decision of the Bombay High Court in The Scotch Whisky Association v. Pravara Sahakar Shakar Karkhana Ltd. (1991), the Bench held that intellectual property law prohibits indirect evocation, subtle allusions, and evocative phrases such as “Finest Rare Scotch Whisky” on domestic liquor labels lacking Scottish provenance. The Court held that such practices deceive consumers as to the origin of the product, thereby attracting the statutory bar under the proviso to Section 18(1) of the PDTA.
Reciprocity and Protection of Domestic Geographical Assets
The Court held that the protection of geographical indications operates upon the foundational international principle of reciprocity. The Bench held that if Nepal refuses to extend legal protection to recognized foreign geographical indications within its domestic jurisdiction, Nepalese producers cannot legitimately expect reciprocal protection for native, origin-linked products such as Ilam Tea, Mustang Apple, Palpali Dhaka, Jumla Beans, or Bhaktapur Juju Dhau in overseas export markets.
The Bench also took judicial notice of the Industrial Property Bill, 2082 (registered in the House of Representatives on 2082/02/23 B.S.), noting that Chapter 6 of the proposed legislation will establish a formal domestic framework for registering and managing GIs. The Court held that applying international standards to exclude foreign geographical terms from domestic trademarks prevents the proliferation of bad-faith disputes and prepares the legal groundwork for protecting Nepal’s own indigenous assets.
Conclusion
This judgment provides vital legal certainty regarding the enforceability of international intellectual property treaties in Nepal, confirming that administrative gaps cannot be exploited to register deceptive foreign geographical indications. It establishes that domestic liquor manufacturers cannot free-ride on the goodwill of recognized foreign regions, and validates the Department of Industry’s proactive administrative screening to curb misleading trademark filings at the threshold. While the decision firmly protects foreign right-holders, it also underscores the urgent practical necessity for Nepal to enact the pending Industrial Property Bill, 2082, ensuring that indigenous products like Ilam Tea and Mustang Apple receive reciprocal statutory protection abroad.
Niti Partners has also examined recent Supreme Court jurisprudence concerning deceptive similarity and trademark protection in Nepal.