As promised, we will continue to discuss about intellectual property law reform in Mongolia. On May 6, 2021 lawmakers passed amendments to Law on Trademarks and Geographical indications. The revised version of this Law was adopted in 2010, and was previously amended only once in 2015. Since this Law was adopted some trademark-related relations have evolved and several new regulations were implemented. For example, IP office started to take trademark applications online. Due to these circumstances, it became necessary to make relevant amendments to the Law.
Let’s look at key points of new regulations implemented in new amendments to Law:
- Terms and definitions are redefined in accordance with international treaties, to which Mongolia is a party (such as TRIPS, the Paris convention, Singapore Treaty on the Law of Trademarks),
- New ground for refusal to register a trademark is added: if a mark (trademark) matches the name of a legal entity that is registered in state registration.
- In connection with above mentioned regulation, IP office (IP inspectors) is now authorized to access the state registration database for purposes of performing trademark examinations. This authority was not granted under previous regulation. Because of this there were occasions where a name of a legal entity is registered as different entity/person’s trademark.
- New stages of trademark examination are implemented. Now after formal examination of an application IP office determines the filing date and publishes bibliographic data of a mark in the official journal. This regulation was not provided previously. After such publication an interested party may submit an opposition to IP office. Meaning that now an interested party may submit an opposition before a trademark is registered (while IP office is performing a trademark examinations) and after a trademark is registered. Whereas under previous regulation, an interested party could submit an opposition only after a trademark is registered.
- New ground for cancellation of a trademark is added: if a trademark was not used for 5 years without any good reason.
- New regulations are introduced with regards to entity/person who was using in good faith a mark that is similar or identical to a registered trademark for the same goods or services prior to the latter’s priority date.
- Now trademark owners and holders of geographical indications are obliged to notify the IP office every time of their name change, address change and transfer of ownership, and apply to make relevant amendments to registration.
Overall same as new Law on Patents, the amendments to Law on Trademarks and Geographical indications have implemented more detailed and new regulations of trademark application filing, formal and substantive examinations, registration and publication of trademarks and geographical indications, and eliminated any existing inconsistencies and overlapped regulations.