TRADEMARK PROTECTION RIGHTS FOR MEMBERS
1.1 What can be registered as a trademark?
Generally, as a matter of Mongolian law, it is possible to register all distinctive and graphics signs including but not limited to words, shapes, names, abbreviations, letters, colours, shades of colours, 3D goods, goods, packages, and sounds as a trademark subject to the requirements under the Law of Mongolia on Trademark and Geographical Indications (2010) (Trademark Law).
In Mongolia, it is possible to file multiple-class trademark applications.
Mongolia also recognises 'well-known' marks under the 'Regulation on Determination of the Trademarks as Being Well Known' (2014) (Regulation). The Regulation applies to trademarks that are national and international and are known to the public of Mongolia.
1.2 Effective term and extension
Trademark registration in Mongolia is valid for a period of 10 years from the date of filing.
Furthermore, the trademark registration can be extended for an additional 10 years from time to time at the request of the trademark owner. The request for extension of the trademark registration can be submitted within 12 months before the expiration of the trademark or within 6 months following its expiration.
1.3 Protection by registration
A potential trademark owner does not have any protection over its trademark in Mongolia unless their trademark is registered in the trademark owner's name with the Intellectual Property Office of Mongolia (IPOM). IPOM is the main regulatory body in charge of intellectual property matters in the territory of Mongolia. Upon registration with IPOM, the trademark owner will be able to exercise its exclusive rights granted to them under the Trademark Law.
1.4 Exclusive rights of trademark owner
A registered trademark owner has the following exclusive rights to:
own the trademark;
allow for the trademark to be used by others on the basis of a license agreement;
transfer ownership rights of the trademark on the basis of an assignment agreement;
demand cessation of unauthorised use of the trademark by others;
demand cessation of trademark use which is similar to the owner's registered trademark if such use may confuse customers; and
demand persons who are guilty to compensate the owner for any damages incurred due to the infringement of the said exclusive rights mentioned in paragraph 1.4(a)(iv) and 1.4(a)(v) above.
As a matter of Mongolian law, the infringement of the trademark owner's right can be considered as either as a breach under the Breach Law of Mongolia (2017) or a crime under the Criminal Law of Mongolia (2015) depending on the extent of the damage suffered by the trademark owner as a consequence of such infringement.
1.5 'Well-known' trademark
A formal application together with the requisite documents must be submitted to IPOM to have a trademark determined as being 'well-known.'
Under the Regulation, the following marks can be recognised and/or determined as 'well-known' in the territory of Mongolia:
a trademark which is protected and registered within the state registry;
a trademark which is protected under international treaties; and
a trademark which is recognised by the public in the relevant sector despite protection not being made.
1.6 Opposition to trademark registration
It is possible for another party to file a request to invalidate a registered trademark on the basis of the following grounds:
the trademark is registered in breach of the trademark requirements provided in the Trademark Law (in particular Article 5); or
the trademark is registered in the name of a representative or distributor of persons and/or entities that have exclusive rights over the registered trademark in the territory of one of the member countries of the Paris Convention for the Protection of Industrial Property (1985) (Paris Convention).
The aforementioned request can be submitted to the Dispute Resolution Commission of IPOM within 1 year following the trademark being officially published by IPOM.
1.7 Trademark application process
An application for trademark registration which is completed in accordance with the approved form by IPOM must be filed with IPOM.
A registration officer of IPOM will check the completeness of the application documents within 10 business days following the submission of the trademark application. If the registration officer considers that the application documents are complete, such officer will determine the date of filing and transfer of the application documents to a trademark inspector of IPOM.
The trademark inspector will review and/or inspect whether the proposed trademark has satisfied the requirements for trademark registration specified under Article 5 of the Trademark Law (i.e. whether the proposed trademark is included in the list of items that are not considered as a trademark as stated in the law) within 9 months. The IPOM may extend such inspection and/or search period by a further 6 months.
If IPOM considered that the proposed trademark has satisfied the requirements under the Trademark Law, it will issue a decision to register the trademark with the state registry of trademarks held with IPOM.
Upon perfection of the trademark registration process IPOM will publish the trademark on its website.
1.8 Termination of trademark ownership rights
Trademark ownership rights can be terminated on the following grounds:
the effective period mentioned in paragraph 1.2(a) has expired and the trademark owner did not submit a request for extension in accordance with paragraph 1.2(b);
the trademark owner's entity has been liquidated and the trademark rights are not assigned to others;
the trademark owner has requested to cancel its trademark registration; and
other grounds stated in Mongolian laws.
In the event trademark ownership rights are terminated on the basis of the aforementioned grounds, IPOM will officially publish the details of such termination.
1.9 Laws governing intellectual property
In Mongolia, the primary laws that deal with intellectual property matters include:
(i) Trademark Law;
(ii) Law of Mongolia on Copyright and the Related Rights (2006); and
(iii) Law of Mongolia on Patent (2016).
Furthermore, Mongolia is also a member country of the following international treaties concerning intellectual property matters:
Convention Establishing the World Intellectual Property Organisation (1967);
Madrid Agreement Concerning the International Registration of Marks (1891);
Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989);
Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957);
(vi) Nairobi Treaty on the Protection of the Olympic Symbol (1981);
(vii) The Agreement on Trade-Related Aspects of Intellectual Property (1995); and
(viii) Singapore Treaty on the Law of Trademarks (2006).
Disclaimer: This is a publication of the Australian Chamber of Commerce Mongolia and is not intended to be construed as legal advice and is for discussion, education and literary purposes only.