Tag Archives: Intellectual Property

New Intellectual Property Law



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Mongolia has enacted several laws in order to implementing the policies to protect and promote intellectual property, namely Law on Patent, Law on Copyright and Related Rights, Law on Trademarks and Geographical Indications, Law on Innovation and Law on Technology Transfer.

There has been criticism that these laws mainly regulated the protection of intellectual property by the state, but they did not establish a framework for protection of intellectual property in an economic context allowing for the full range of business profit. For instance, intellectual property is protected by patent and trademark pursuant to relevant laws, but the ability of the rights holder to benefit from the intellectual property, by pledging and selling intellectual property rights to legal entities, assigning them to a third party is harmed due to weak economic value.

Therefore, Law on Intellectual Property was newly approved on January 23, 2020, with the aim of increasing the economic value of intellectual property in Mongolia. This law will come into force on December 1, 2020.

The law is expected to clarify the legal rights and authorities of government agencies at various levels in connection with active intellectual property protection and enforcement, including expanding on the rights and duties of Intellectual Property inspectors in charge of investigating alleged infringement.  

At the same time, the law provides greater detail as to role and responsibility of intellectual property agents and brokers which assist IP owners in registering and protecting their IP in Mongolia.

The new law will also expand on the economic rights of Intellectual Property owners, including evaluation and assessment of IP rights, and the extent of state support for economic uses of IP.

Finally, the law aims to reform structure and function of the national Intellectual Property registry, as well as the dispute resolution system for IP related disputes.

With the entry into force of this law, it is expected that it will be easier to put intellectual property into economic circulation; and the intellectual property valuation and mediation will be more reliable; and the activities of the intellectual property organization will be more stable and normal.

Patent Maintenance Fees



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A patent owner shall pay the following fees to Intellectual property office of Mongolia (IPOM) in order to maintain the validity of their patents:

  • 10000 MNT /~ 3.77 USD/ for the 1st three years;
  • 20000 MNT /~ 7.54 USD/ for the 4th-6th years;
  • 30000 MNT /~ 11.31 USD/ for the 7-10th years;
  • 40000 MNT /~ 15.09 USD/ for the 11th-15th years;
  • 50000 MNT /~ 18.86 USD/ for the 16th-20th years.

The payment for the patent validity of 1st three years shall be paid within 6 months after the decision on the issuance of patent, and the payment of further fees are to be paid 6 months prior to the commencement of the preceding fee payment. In case the patent owner failed to make the payment on time, the IPOM may grant an additional 6 months and in such case the patent owner shall pay additional fees equivalent to the non-paid duration fee.

The IPOM is entitled to invalidate the patent in case of non-payment of fees within the additional 6 months. However, if the patent was invalidated on the grounds of failed payment, the patent may be renewed upon the request of patent owner within the general valid term of the patent (20-50 years).

Well Known Trademarks in Mongolia



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In case of a dispute in connection to the unfair competition and conflict of interests of your trademark, the trademark owner is entitled to apply a request for declaration of your mark as well-known in Mongolia him/herself or through representation of an authorized intellectual property agent to the Dispute Settlement Committee of the Intellectual Property Office of Mongolia.

For this purpose, the trademark owner shall file an application only in relation to one trademark and such request shall include, aside from providing basic personal and business information on the applicant and/or the authorized intellectual property agent, following information:

  • Description of the trademark for the declaration as well-known mark;
  • The name list of the well-known trademark product and services;                    
  • The date of the trademark declaration as well-known;
  • The status of the intellectual property rights of that particular trademark in Mongolia;
  • The justification/reasons for declaration of trademark as well-known mark along with their proofs and evidences.

Furthermore, the Intellectual property office of Mongolia is responsible for the public distribution of the well-known marks, yet unfortunately according to the unofficial statement, no such applications for declaration of trademark as well-known have been submitted and hence there is no list of the well-known marks in Mongolia as of today.

Well-Known Trademarks in Mongolia



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The Paris Convention for the Protection of Industrial Property, to which Mongolia joined in 1985, provides that the countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods.

These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well–known mark or an imitation liable to create confusion therewith. Accordingly, Article 3.1.3 of the Law on Trademark and geographical indication defines the well-known mark as “the well-known trademark in the respective sector of Mongolia and the one, which does not require any IP registration. Within its duty for drafting and adoption of the Regulation concerning the IP-related matters, the Intellectual property office of Mongolia adopted a “Regulation concerning the IP-related matters, on the determination of the trademark as being well-known” on 08th April 2014.

It is important to note that the Regulation applies only within the territory of Mongolia and covers the trademarks /it may be both national and international ones/ that are well-known to the general public of Mongolia. Those companies interested in settling the question whether their trademark may be considered to belong to this category, they shall file a request to the Dispute settlement committee of the Intellectual property office of Mongolia.

Domain Names and the Legal Framework: Part I



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Due to its singular and inimitable feature, the assigned website names constitute an “online” name card for business operators and serves as an essential tool aimed at building and maintaining their position in the market. Such assigned names of websites are extended by the so-called domain name extensions/ top-level domains/ such as .com, .de, edu.com or gov.mn, which illustrate the country of operation or the type of operation.

The legislations of very few countries including Singapore allow granting of the registration and usage rights of their country’s domain name extensions only to those companies, that have been duly registered in these respective countries. However, the laws and regulations of Mongolia do not provide such restriction or prohibitions. In other words, Mongolia’s official domain extension name “.mn“ may be registered not only by local companies, but as well as by any foreign entity, who wish to promote their operations to Mongolian consumers and/or perhaps to protect their world-wide known brand in Mongolian market.

In Mongolia, the relations concerning the establishment of communications network, the operations and protection thereof and the proper furnishing with the high-quality communications and information technology products and work services to citizens and legal entities is regulated by the Law on Communications. The Amendments to this Law dated 30th May 2019 provide that the Communications Regulatory Commission composed by the Government of Mongolia shall be in charge for the adoption of the Procedure related to the registration and usage of domain names and the execution monitoring thereof.

According to the unofficial statement from the Communications Regulatory Commission, the working group responsible for drafting of these Procedures has been established. As a whole, the state policy and the legal framework with regard to communications, in particular internet and domain names, are vague and unsophisticated. On 05th June 2019, the Provisional committee for digital policy at the Mongolian Parliament adopted a Resolution on the Directives to the Government of Mongolia /GoM/ and pursuant to Article 12 of the Resolution, the GoM shall establish the legal environment concerning domain names and define the state policy in relation to this matter.

Registration of Trademark Abroad



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The product and services of a company is considered to be its image and furthermore can become the main capital source of it. Any business enterprises with a well-known trademark has an advantage of maintaining and enhancing its competitive position in the market.

The legally registered trademark is a source for the prevention of the usage of the same trademark by other parties and the protection of your legal rights and interests as a trademark owner. Although there is no legal requirement for the registration of company’s trademark, it constitutes an exclusive right that aimed at protecting the rights of the eligible trademark owner from any usage of similar or consumer-confusing trademarks by others.

In case you are interested in protecting your rights in relation to the trademark, that is the result of your precious time and effort, from any violations both in Mongolia and abroad, the registration of it will be of a crucial importance.  Particularly for those who wish to export or grant their trademark license of products in another country, the international registration is a must.

For that purpose, you may to submit the national application in that foreign country of your wish or file an international application.

The first option requires you to submit the request for trademark registration at the trademark office in accordance with the related procedures of that country and you will probably need services of the authorized agent for trademark of that country as well. The fees regarding the trademark registration overseas differs depending on the operation to be carried out in respective countries.

As for the second one, the international trademark registration application, you may to file the registration request for the trademark, that has already been registered or undergoing the registration process in Mongolia by means of the so-called Madrid the international trademark system. This Madrid system, in which Mongolia joined as a member, offers an opportunity for trademark owners to register their trademark on international level in up to 120 member countries by filing a single application at fixed rate and time in one language.

Should you require a detailed information about the Madrid international trademark system, visit this link https://www.wipo.int/madrid/en/ or contact us.

Pursuing Criminal Charges for Trademark Infringement



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In our previous blogs (here and here), we stated that the question whether the infringement of the trademark owner’s rights constitutes an infringement or criminal case will be determined by virtue of the damage amount arisen out of such action, and also that there are different sanctions to each scenario.

In order to determine whether this action is the crime of ‘Violation of the rights of trademark owner and geographical indication” stated in Article 18.16, the damage incurred out of the action of confusing consumers through production, storing, transportation, sales and crossing of the state frontier by using trademark or geographical indication shall be more than 300,000 MNT (115 USD)and above.

If it is proven that the damage amount equals or exceeds the amount stated in the Criminal procedure law of Mongolia, the following measures with regard to criminal case filing may be taken.

  • The owner of trademark or geographical indication shall file a complaint and information about the crime to the police inspector. For such purpose, there should be a sufficient proof that the activities of the infringers are indeed a crime with loss/damage with more than 300 000MNT (115USD). The police inspector may take the following inspection measures to determine if the case stated in the compliant and information contains the elements of a crime within  5 days upon the receipt of the complaint and information:
  • Examination
  • Lab inspection of  samples and finger prints
  • Take testimony from witness
  • Seizure of the crime-related transportation, money and products
  • Confiscation of properties and belongings
    • After the receipt of the complaint immediately or after the conduct of the inspection operations stated above the inspector shall make one of the decisions:
  • To initiate a criminal case
  • To submit a proposal to the prosecutor on the refusal to initiate a criminal case
  • To submit a proposal to the prosecutor to the transfer the case according to the jurisdiction of the case and the law does not provide the duration
  • In case the inspector decided to initiate the case, he/she shall immediately inform the prosecutor about the decision and register the case at the central registry of the prosecutor and introduce the resolution to the prosecutor within 72 hours after the registry of the case at the central registry of the prosecutor. This shall be deemed as justification for the conduct of the criminal procedure. The general time for the criminal case filing, i.e. operations starting from initiating the case until the prosecution of the accused shall be one month and may be extended for up to three months by the prosecutor. 

Also, we have to take into account that in case the prosecutor decides that the initiation of the criminal case by the inspector is not justified, he/she shall invalidate the case filing.

Procedures for Investigating Trademark Infringement



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The procedures for addressing trademark infringement in Mongolia are regulated by the Law on Infringement Procedure and by the Criminal Code of Mongolia. Detailed information on the legal measures to be taken in cases of infringement, their related dates and the practical challenges will be further addressed in the next article.

As mentioned in our previous blog, the penalty for infringement of a trademark is set out in the Law of Infringement or Criminal Code of Mongolia depending on the amount of the damage and loss actually caused. It is critical in any trademark infringement action to take steps to prove that the damage caused by the trademark violation exceeds 300,000 MNT (~$115), in order to initiate a criminal investigation by the police.

With today’s article, we will briefly introduce the Law on Infringement Procedure of Mongolia (the Law). The Law sets out rules and procedures for potential infringement investigation and penalty, starting from the initial inquiry of a potential infringement case. The Law also sets rules for the prosecutor’s supervision of the investigation process and results and procedures for dispute settlement at the court.

Pursuant to the Article 6.14 of the Law, 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

Prosecutor has an oversight role and may invalidate the decision to terminate the infringement case in instances where it is determined that the infringement case has an element of a crime or it is obvious that infringement has occurred. If the prosecutor decides that the matter has an element of crime, he/she shall prosecute the infringer as defendant.

Where infringement of a trademark is found, the infringer shall execute the imposed penalties within 15 days after the receipt of the decision. Should the infringer disagree with the decision and imposed penalties, there is an opportunity for appeal. 

Even though the violation of the intellectual property in Mongolia is a common practice, most violations are investigated as trademark “infringement” under the Law, and not as a crime. As the penalties for such infringement violations are relatively low and the investigation procedure is not reliable, the occurrence of such violations is not effectively deterred. Such persistent infringement causes challenge and burden both to the intellectual property owners and the respective authorities.

We will take a look at criminal investigation procedure next week.

Penalty for Trademark Infringement



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This article aims to give an overview concerning the trademark infringement in Mongolia and the difference between the infringement and the crime. 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 cessation of unauthorized use, along with monetary damages in compensation for infringing use.

In Mongolia, the violation of trademark ownership rights is addressed in both the Law of Infringement and the Criminal Code of Mongolia, meaning trademark infringement may carry both civil and criminal penalties. As described below, the sanctions set out in these laws differ and the infringement of the trademark owner rights is relatively low compared to the crime:

According to the Law on Infringement, violation of a trademark owners legal rights may result in seizure of property and profits related to the infringement, closure of the infringing operations, and compensation of damages to the trademark owner. Individual’s involved in the infringement may be fined up to 300,000 MNT (USD ~$115) while companies may be fined up to 3,000,000 MNT (~$1150)

If damages caused by infringement are found to be greater than $300,000 MNT (~$115) the matter may be investigated as a crime. Where infringement may be considered a crime, the penalty may include imprisonment for up to 1 year, mobility restrictions, community service requirements, or fines up to 5,400,000 MNT (~$2070). These penalties may be increased if it is found the infringement was coordinated by an “organized criminal group”.

The amount of the loss/damages for the breach of industrial property rights may be proven by means of following common methods:

  1. On the basis of the possible revenue amount that the eligible industrial property right owner could have made
  2. On the basis of the amount of the licensing contract, in case the trademark owner would have used the trademark upon the conclusion of a licensing contract with the trademark owner.

The procedure on addressing the trademark infringement in Mongolia is a subject of regulation by the Law on Infringement procedure and the Criminal Code of Mongolia. The detailed information on the legal measures to be taken, their related dates and the practical challenges will be further addressed in the next article.

Trademarks vs Trade Names: Key Distinctions



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In our previous article we mentioned that although trade names and trademarks sound similar, they have completely different legal implications. In this article we will discuss about legal implications of registering a trademark.

A trademark is a more significant step identified with establishing brand recognition in the marketplace. A trademark can be associated with, or part of, your trade name, and can be used to provide legal protection for the use of names, logos, symbols, words, phrases, slogans, or other designs that help customers identify your company.

A trademark requires separate registration from a trade name. You must register your trademark with the state authority in charge of intellectual property matters. The registration of a trademark guarantees a business the exclusive use of the trademark, establishes legally that the trademark was not already being used by any other business entity or person prior to your registration of it and provides official government protection from any other business subsequently infringing on your registered trademark. In other words, when you register your trademark, you hold several legal rights. You are the only one allowed to use, copy, profit from, distribute the registered trademark, and no other company or person can use that trademark. This process also establishes your ownership of the trademark as a unique and protected element of your business. Your trade name might also be included in the trademark that now has that legal protection. If any other person or company tries to use something similar, you have the right to take legal action. It also provides legal liability protection against someone subsequently claiming that you are infringing on a previously registered trademark.

In registering a trademark, you or your business can directly register the trademark, or you can choose to have a licensed intellectual property agent (IP agent) do it for you. Having an IP agent handle the registration provides an extra layer of insurance that the registration is done properly and completely, and that a thorough investigation has been conducted verifying that the trademark has not been previously registered by any other person or company.