Tag Archives: Trademarks

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.

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.

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.

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.