Tag Archives: Intellectual Property

Importance of Conducting a Preliminary Trademark Search



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The process of securing intellectual property rights for a brand name or logo often takes more time than anticipated. Receiving a preliminary decision to reject your trademark registration 6-9 months after filing is not the outcome you desire. Such a situation can lead to complications, including having to change your product or service’s brand name, logo, packaging, or advertising content.

Why are trademark applications rejected?

If you intend to register your trademark with the Intellectual Property Office to secure exclusive rights, it’s important to comply with not only international agreements and conventions but also the requirements outlined in Article 5 of the Law on Trademarks and Geographical Indications.

What are the requirements?

A trademark may be rejected if it:

· Directly describes the goods or services;

· Indicates the characteristics of the goods or services;

· Specifies the origin or place of manufacture of the goods or services;

· Is identical or similar to a previously filed or registered trademark.

Therefore,

Before filing your brand name or logo, the face of your business, with the Intellectual Property Office, it is advisable to conduct a preliminary search to ensure it complies with legal requirements and does not closely resemble existing trademarks.

Important note!

If your brand name is expressed in a foreign language, it is necessary to conduct searches not only using the primary word but also translations, transliterations, and phonetically similar variations. Additionally, check whether translations might inadvertently include inappropriate or offensive term.

Benefits of a preliminary search

· Prevents receiving a preliminary decision to reject your trademark application due to the reasons mentioned above.

· Avoids the risk of unintentionally infringing someone else’s exclusive rights, thereby protecting you from unforeseen legal liabilities and costs.

By conducting a preliminary trademark search, you can mitigate risks and ensure compliance with regulations. Our law firm, with experienced intellectual property lawyers, is ready to assist you in carrying out professional trademark searches tailored to your needs.

Protecting New Varieties of Plants in Mongolia



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Should you be interested in registering a plant variety created and cultivated by your organization and obtaining the rights for the creator in Mongolia, here is a brief introduction to the relevant regulations and possibilities available.

As a member of the International Plant Protection Convention, Mongolia handles plant variety registrations through the Ministry of Food, Agriculture, and Light Industry. This authority oversees the registration process as per the Law on Seeds and Varieties of Cultivated Plants.

The rights for the creator or registration of the plant variety can be obtained for various purposes, including but not limited to conducting scientific research with the Mongolian Institute of Plant Variety, commercial or trade purposes, analysis, experiments, or re-export purposes.

The Law on Seeds and Varieties of Cultivated Plants regulates the relationship between the rights and duties of competent entities, the registration of plant variety names, granting of rights to variety creators, and the importation of seeds for testing purposes. This law works in conjunction with other related laws, such as the Law on Plant Protection, the Law on Customs, and international agreements of Mongolia.

To register a plant, it must not already be registered in Mongolia. The new plant variety’s name should uniquely identify the variety, respect the rights of others, not be represented by a single number, and not be misleading or misrepresentative of the plant’s characteristics, value, uniqueness, or the creator’s identity.

The creator must obtain a permit to use propagation material of the protected variety for production, reproduction (breeding), creating breeding conditions, offering for sale, selling and marketing, exporting, importing, and creating reserves for any of the above purposes. The request for the creator’s rights should be submitted to the Ministry of Food, Agriculture, and Light Industry of Mongolia. The variety must be determined as new, distinct, uniform, and stable, as described below:

  • New Variety: The propagation and yield material of the variety has not been sold or distributed by the creator, either personally or with their consent, within one year in Mongolia, or within four years in other countries (six years for trees and shrubs).
  • Distinct Variety: The variety is clearly different from existing, well-known varieties at the time of the request.
  • Uniform Variety: The basic characteristics of the variety are sufficiently consistent during changes that may occur depending on the propagation.
  • Stable Variety: The main characteristics of the variety do not change after repeated propagation or at the end of each propagation cycle.

The request, along with the introduction and materials, is subject to expert review and verification by the Mongolian Institute of Plant Variety under the Ministry. Once obtained, the right of the variety creator is valid for 20 years from the issuance date, and 25 years for trees and creepers, according to the Law on Seeds and Varieties of Cultivated Plants of Mongolia.

Protection of Newly Created Plant Varieties in Mongolia



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Following a process of technical consultations with the Food and Agriculture Organization of the United Nations and the International Union for the Protection of New Varieties of Plants, Mongolian Parliament enacted the Law on Seeds and Varieties of Plants on October 15, 2021 to regulate issues related to supporting the development of the sector of crop seeds, stimulating research and innovation in the seed sector, establishing fair trade of seeds, protection and sustainable use of plant genetic resources, creation of new plant varieties, protection of breeder’s rights and ensuring food safety.

In specifically, this law regulates the registration of a new plant varieties and the protection of the breeder’s rights. Any person who produces, sell, export and import a registered and protected plant varieties is required to obtain permission from a breeder. The protection of breeder’s right is valid for 20 years for plants and 25 years for trees and climber plants.

Ministry of Food, Agriculture and Light Industry is entitled to register a new variety plant in Mongolia and to protect breeder’s right. In determining whether or not the breeder is entitled to apply a new variety plant registration, the Minister of Food, Agriculture and Light Industry should identify that the plant is new, various, identical and stable by doing necessary field experiments and laboratory tests. These four requirements are described as below.

New – the seed and plants variety are considered new if it is not sold or distributed throughout a certain time prior to the request date:

  • 1 year ago, in the territory of Mongolia;
  • four years ago, in the territory of other countries and six years ago for trees and shrubs.

Various – if the newly created variety differs clearly from other popular varieties at the time of the request, it is considered to be different.

Identical – if the basic characteristics of the variety are sufficiently maintained during changes that may depend on the characteristics of the reproductive structure, then the seed is considered an identical variety.

Stable – After repeated reproductive cycles, if the basic characteristics of the seed do not change at the end of a specific cycle, the seed is considered a stable variety.

Therefore, it is significant to first clarify whether a plant variety can be considered as a new variety plant in Mongolia, whether breeder’s plant variety sold or distributed before in Mongolia and oversees during period mentioned above.

Invalidating a Mongolian Trademark



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In the past weeks the firm’s Mongolian lawyers have been approached with an inquiry regarding the possibilities to request trademark invalidation in Mongolia.

Registration of trademarks can be invalidated by a request filed with the Dispute Resolution Committee (DRC). There are several acceptable reasons for trademark invalidation.

Any interested person may submit to the DRC a request for invalidation of a trademark registration on the ground of followings:

  • Trademark is registered in violation of registration requirements;
  • The trademark is registered in the member country of Paris Convention under name of any representative of distributor without permission of rights owner of the given trademark;
  • A trademark owner hasn’t used the trademark for 5 years without any reasonable excuses.

Such an invalidation request is acceptable in Mongolia if it was submitted within one year from the date on which the registration of the conflicting trademark was published by the Intellectual Property Office. The DRC with the authority to decide whether or not a trademark is invalid within 6 months from the date of receipt and notify it to petitioner.

Although Mongolian Trademark law provides any interested person to dispute about trademark registration validity within specific reasons, a one-year limit for a request submission is too short. After this time frame has passed, it becomes more difficult to invalidate trademark registration based on a request of likelihood of confusion.

The Paris Convention for the Protection of Industrial Property (Paris Convention) which is ratified by Mongolia, provided longer time limit for filing a trademark invalidation request. For example, article 6bis of the Paris Convention entitles the owner of a well-known mark to file an invalidation request of conflicting trademark in 5 years from the date on which the registration of the conflicting trademark was published. Therefore, a period extension for invalidation request is required for the purpose of harmonizing Mongolian law with international treaty.

Trademark Infringement Investigations and Penalties



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The Investigation procedures for handling trademark infringement in Mongolia are governed by the Law of Intellectual Property, the Infringement Procedure Law and the State Inspection Law. The penalty for trademark infringement is specified by the Infringement law or the Criminal code depending on the extent of the harm and loss actually caused, which means both civil and criminal fines may be imposed. Although, it is common practice in Mongolia to violate trademark, most violations are investigated as trademark infringement under the Law, not as criminal offenses. Therefore, with today’s blog, we will focus on trademark infringement investigation and civil penalties.

Pursuant to Article 12.3 of the Law on Trademarks and Geographical Indications of Mongolia, a trademark owner is entitled to exclusive ownership, usage rights, and legal right to demand discontinuance of unauthorized use, along with monetary damage in compensation for infringing use.

The state officer for intellectual property shall be responsible for matters related to the intellectual property, in particular trademark infringement. The authorized inspector shall carry out the inquiry into the alleged the infringement case upon the receipt of the complaint and information about the trademark infringement. Upon receiving a complaint, the inspector shall decide whether to initiate the infringement case based on the claims and evidence provided. After the investigation is complete, the authorized official shall make the decision on whether to terminate the case without penalty, or to impose penalties.

According to the Infringement law of Mongolia, authorized official shall impose following penalties for trademark infringement:

  • Seizure of property and profits related to the infringement;
  • Cessation of unauthorized use;
  • Compensation of damages to the trademark owner;
  • Individuals involved in the infringement may be fined up to 300,000 MNT while companies may be fined up to 3,000,000 MNT.

The trademark infringement decision will be enforceable in the territory of Mongolia.

Domain Name Dispute Settlement in Mongolia



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Recently, one of our clients had been seeking our advice on Mongolian communications law, particularly on the domain name registration and dispute settlement issue. Meanwhile providing legal analysis to our client’s inquiry, we have decided to provide the post in concern with background of the domain name monitor in Mongolia.

Communications Regulatory Commission of Mongolia (CRC) is the government authority that is responsible to monitor the implementation for registration and usage of domain name. Only one company, a Datacom LLC, has the authority from the CRC to register domain name in Mongolia. Datacom LLC’s website has a WHOIS owner database.

One of the powers of the CRC is resolving disputes between a domain name registrant (domain name holder) and a third party. In 2020 CRC adopted a “Regulation on registration and use of domain names”. This Regulation specifically provides for that “CRC will follow laws and regulations of Mongolia when processing requests and complaints. When dealing with issues not specified in laws of Mongolia and this Regulation, CRC may follow relevant parts of the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (UDRP)”.

Pursuant to Regulation on registration and use of domain names, after the third party (other than domain name registrar and domain name registrant) submits a request or complaint, provided that all required documents are submitted along with request or complaint, CRC shall notify domain name registrar, domain name registrant and other relevant parties and obtain relevant response from them within 14 days from the date of submission of request or complaint. CRC will resolve the request or complaint within 21 days from the date of receipt of relevant responses. Depending on the content of request or complaint CRC may appoint a panel consisting of 3 experts with the purpose of carrying out an expert opinion on the matter. In such case the time to process a request or complaint against domain name will be longer. Pursuant to this Regulation, if CRC deems necessary, complaining party and domain name registrant may participate in the dispute resolution hearing.

Amendments to Law on Trademarks and Geographical Indications



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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:

  1. 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),
  2. 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.
  3. 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.
  4. 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.
  5. New ground for cancellation of a trademark is added: if a trademark was not used for 5 years without any good reason.
  6. 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.
  7. 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.

Intellectual Property Law Reform in Mongolia



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Over the past decade or so due to rapid development of technologies more new types of works and creations are starting to be protected by intellectual property rights. Hence the relations and transactions related to intellectual property rights are becoming more complex and multifaceted. Naturally, reform of intellectual property legislation becomes necessary. So, new Law on Intellectual property was adopted on January 23, 2020 and came into force on December 1, 2020. Law on Intellectual property establishes general regulations related to intellectual property rights, legal status of intellectual property authorities and institutions. In one of our previous blogs, we have covered highlights of this law. And matters related to specific types of intellectual property are regulated by separate relevant laws.

As part of said reform several key laws were renewed and amended on May 6, 2021, particularly, Law on Patents, Law on Copyrights, and Law on Trademarks and Geographical indications.

Revised version of Law on Patents was adopted and it implements several new significant regulations. Here are highlights of these new regulations:

  • new law provides to grant patents for utility models, whereas previously certificates were granted for utility models;
  • patentability criteria of inventions, utility models and industrial designs are redefined, in the sense that they are more clarified;
  • patent application filing procedures have become more detailed, particularly, formal examination of application is split into two stages: composition check of application documents and examination of application documents;
  • due to the fact that terms in the Patent Cooperation Treaty (PCT), to which Mongolia is a party, are long and the need to bring the law into line with PCT, patent application filing terms and prior art search and substantive examination terms have been extended. Also, other relevant regulations have been brought into line with international treaties, to which Mongolia is a party;
  • regulation of electronic filing of patent applications have been updated, while previous regulations were very vague;
  • more clarified regulation is added concerning third-party observations (third-party objections);
  • regulation on international patent application filing procedures, and licensing agreement regulations have become more detailed.

Overall, the new law has implemented more detailed regulations and precise terms of patent application filing, application examination and patent granting procedures, and has eliminated any previously existing inconsistencies and overlaps of regulations.

In our following blogs we shall discuss about new regulations established in Law on Trademarks and Geographical indications and Law on Copyrights.

Seizure of Infringing Product by Mongolia Customs



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We have written previously about the legal mechanisms for registration of intellectual property rights in the Mongolia Customs database for preventing the intellectual property infringement in Mongolia. In this post we will go more in-depth regarding processes for seizure and detention of suspected counterfeit products by Customs at import or export, which has proven to be effective to fight against the infringement of intellectual property rights in the country.

In general, a holder of intellectual property rights is able to submit an application to Mongolia Customs authorities to take measures to prevent infringing & counterfeit goods from entering into Mongolia when there is evidence known or suspected illegal or counterfeit products are in transit through Customs. An application must contain information about the IP holder, the relevant intellectual property itself; and detailed information about the products requested to be seized.

Upon identifying target goods transiting Customs, authorities may require a cash deposit by the IP rights holder equal to the total value of the seized products (or MNT 1,500,000 if the total value is not possible to determine in advance). Alternatively, the IP rights holder may provide a bank guarantee to cover the deposit value.

This deposit serve as guarantee that the applicant will not cause any undue harm to the exporter or importer of the goods, and if any damage is caused due to false information, the deposit will be used to pay for damages.

The Customs authority will make a decision within 30 working days after receiving the application in accordance with the relevant laws and regulations. If the relevant customs authority decides to detain goods related to intellectual property rights pursuant to an application, it shall notify the Intellectual Property Office and the applicant.

Registering Your IP with Mongolia Customs



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Holders of Intellectual Property rights (IP) registered in Mongolia have the option to register these rights with Customs. This registration allows an IP holder an important tool to prevent import or export of counterfeit products into or out of Mongolia.

In order to be included in the customs database, an IP rights holder must submit a request to the General Customs Administration to include the holder’s IP rights in the Customs database. Such request shall contain the details of the goods related to the intellectual property rights, information of the holder, documents confirming the intellectual property rights, along with a list of goods to be registered and protected. There is no official fee for this registration.

The decision to register goods related to intellectual property rights in the Customs database is finalized by the head of the department in charge of control and risk of the Central Customs Administration. Information registered with the central database is shared with regional Customs offices around the country.

IP holders should take care to report to Customs and request updated registration with Customs when any important information regarding the IP rights is changed, including duration of protection, name of the rights holder, or others.

The Central Customs Administration may publish the list of goods registered in the Customs database and changes thereto in the official customs edition and some other information on the customs website with the permission of the rights holder.