眾律國際法律事務所

MONGOLIA TRADEMARK LAW SYSTEM :

Introduction:

Langue: Mongol

Capital: Ulaanbaatar

Area: 1,566,000 km²

Population: 3,081,677

Currency: Tögrög (MNT)

Religion: Buddhism (53%), Irreligion (38.6%), Islam (3%), Shamanism (2.9%)

Geographical situation: Between China to the south and Russia to the north.

International treaty membership:

- Singapore Treaty on the Law of Trademarks

- Strasbourg Agreement Concerning the International Patent Classification

- Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks

- Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

- Madrid Agreement Concerning the International Registration of Marks

- Paris Convention for the Protection of Industrial Property

- Convention Establishing the World Intellectual Property Organization (WIPO)
 

Legislation:

First, Law of Mongolia on Trade Names and Trademarks enacted December 19, 1996, entry into force on February 1, 1997.

Then, the amended Law of Mongolia on Trademarks and Geographical Indications, which came into effect on July 25th, 2010.

Notifications :

Article 2. Trademark, trade name legislation

 Where an international treaty to which Mongolia is party, contains provisions differing from those specified in the legislation of Mongolia on trademarks, trade names, the provisions of the international treaty shall prevail.

Government Institutions :

Copyright Department 
General Authority for Intellectual Property and State Registration (GAIPSR)

Type of trademark :

Words, designs, symbols, 3D shapes, colors, Sounds, combinations.

Special: collective marks, certification marks.

Ground for refusal :

-  Trademark protected by priority rights.

-  Trademark that mislead the consumer.

-  No registration shall be allowed for trademarks consisting only of designations that are devoid of distinctive ability or indicate the nature and quality of the goods.

-  No registration shall be allowed for marks already protected or recognized as well known in Republic of Tajikistan or by virtue of an international treaty.

-  Any designations that use names or symbols related to states or institution. Such element can be incorporated as non protected elements under authorization.

-  Symbols and name which are contrary to public interests, principles of humanity and morals.

-  Family or given name, or any element attached to a person.

-  A title of a work of science, literature or art, known in the country at the date of filing of the application.

Application content:

-  A legal entity, a person willing trademarks, trade names to be registered, shall submit the application of trademarks, trade names to the Intellectual Property Office. -  The application of trademarks shall consist of an application, 10 copies of figurative element of trademark.

-  The application of trade name shall consist of an application, a magnified writing of the trade name, a copy of the state registration certificate of the economic entity.

-  In the application there should be indicated names, address, nationality of the applicant, or his attorney, date and number of application, kind of activities of the applicant, request for registration of trademarks, trade names, figurative elements of the trademarks, trade names.

-  If the applicant wishes a sign, a collective mark of form of volume, or of color to be registered, he shall notify about this in the application, and enclose to the application a copy of the rule of utilization of the mark.

-  If an applicant wishes the name of origin of goods to be registered, he shall notify in the application about it, and attach to the application the documents confirming the name of origin and his right to use it.

-  If trademarks, trade names are expressed in other sign than in Cyrillic, or Latin, the sign shall be transformed into Latin and sent together with the application.

-  The application of trademarks may be covered by one or more international classification of goods and service.

-  An applicant may, before state registration of trade name, ask whether the selected name coincides with a previously registered name.

-  If the selected trade name is different from the previously registered name of a legal entity by only marginal sign of type, number, letter, or word that show the form of the economic entity, the selected name is considered as coinciding and shall not obtain registration.

- Conditions of form.

Application process:

- Preliminary conditions:

The application is filed at the Intellectual Property Office (IPO).
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalized power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approximately from 6 to 9 months.

Step 1: Application to IPO
Step 2: IPO do legality review and notify

Step 3: IPO issued its decision after examination.

- Step 1 and 2: Transmission to Intellectual Property Office (IPO),

IPO, within 20 days, gives appreciation if there is nothing that would prevent application (refer to: not registrable part)

If there are elements which are likely illegal IPO will notify to applicant within 20 days from decision. Applicant will be able to make amendment within 2 months from reception of notification. If the applicant does not bring any amendment the Trademark application will be denied.

If the application concern element that are likely registrable the IPO will take 6 month to make a decision and issue a certificate (this 6 month delay may be extended to another 6 months).

- Step 3: IPO issued its decision:

        If the application is denied, IPO, within 30 days from decision, send its decision to the applicant who has 30 days from notification’s reception to apply in court and contest the decision.

        If application is accepted, IPO publish its decision and a certificate is issued. The trademark will be protected for 10 years from the date of issue.

- For the extension:

Renewal of the protection can be done from 1 year before the expiry date to 6 months after expiry date.

For the extension of the term of validity of the certificate, the list of trademarks, trade names, names of goods, service shall not be amended.

In case of changing name or address of the owner, this changing must be notify in written form to IPO within 6 months.

After registration, the trademark is published on the website of the IPO.

Refusal:

For Step 2, If there are elements likely illegal IPO will notify to applicant within 20 days from decision. Applicant will be able to make amendment within 2 months from reception of notification. If the applicant does not bring any amendment the Trademark application will be denied.

For Step 3, If the application is denied, IPO, within 30 days from decision, send its decision to the applicant who has 30 days from notification's reception to apply in court and contest the decision.

Rights of exploitation and related delay :

From the approval's decision, the trademark or trade name is protected for 10 years.

The owner of these rights can:

- Exploit registered trademarks, trade names for his goods, service;

- Own his registered trademarks, trade names / own, exploit, expend/;

- Let others to exploit registered trademarks, trade names under license contract;

- Transfer trademarks to others;

- Get references, confirmation from the Intellectual Property Office on registered trademarks, trade names;

- In the case if his registered trademarks, trade names are exploited unlawfully by others, to demand to stop it and protection against infringement of his rights,

- Demand to stop exploitation of similar trademarks, trade names to previously registered trademarks, trade names, and compensation for occurred damages.

Transfer and conditions:

- Trademark: The owner of trademarks may in whole, or partly, the rights to own trademarks to others by means of inheritance, or other means.

- Trade name: Transfer of exclusive rights to exploit trade names is forbidden in other cases than a legal entity is restructured, transferred completely to others’ ownership.

-  The rights to own trademarks may be transferred on the base of a contract. The contract shall be made in written form, and legalized with signature of both parts, and may be witnessed by notary if so wish.

-  The contract of transfer of trademarks shall be registered in the Intellectual Property Office.

-  The rights to own trademarks shall not be transferred in case if the type, origin, quality, purpose of goods, service, name of place and means of manufacture are misleading the consumers.

The rights to own trademarks terminate by following reasons:

-  To transfer completely to others by law, or contract;

-  To lose the rights to own by reason indicated in law;

-  The owner is dead, announced dead;

-  Legal entity is dismantled;

-  Other reasons indicated in Law.

Certification:

- If the Intellectual Property Office makes a decision to register trademarks, trade names, these trademarks, trade names shall be registered in the State record, and issued a certificate of trademarks, trade names, and the application be stored in the state fund of trademarks, trade names. The application for trademarks, trade names registered by the Intellectual Property Office shall be stored for the period of 10 years from the expiry date of certificate.

- In the certificate of trademarks, name, address, type of activity of the owner of trademarks, main characteristics of trademarks, No and date of decision to issue a certificate, the filing date of application, term of validity of certificate shall be indicated and a member of the Government competent to the matters shall sign and put stamp.

- In the certificate of trade names, name of the economic entity, peculiarity of activity, decision of the issuing authority of certificate, filing date, term of validity of the certificate shall be indicated and a member of the Government competent to the matters shall sign and put stamp.

Withdrawal and cancellation:

- Withdrawal:

An applicant may, during the examination, withdraw the application. In that case, the applicant loses the right to make again application for trademarks, trade names he made.  

- Cancellation:

An interested person may, if he considers that trademarks or trade names are registered breaking the provisions of the law, make a request to the court to cancel these trademarks, trade names within 5 years from the registration of trademark trade name.

Customs:

Custom law of Mongolia entry in force since 2008 July 1^st.

In case goods, crossing Mongolia's border, infringe Trademark law the goods shall be sent back immediately. If it's impossible they will be store for up to 3 days, if the owner fail to withdraw the goods, custom will destroy it.

Sources:

-Custom law of Mongolia entry in force since 2008 July 1^st. (Art8)

-Law of Mongolia on Trade Names and Trademarks enacted December 19, 1996, entry into force on February 1, 1997.

-The amended Law of Mongolia on Trademarks and Geographical Indications, which came into effect on July 25th, 2010.

-http://www.wipo.int/portal/en/index.html

Vincent Lagier