TRADEMARKS FILING AND PROSECUTION MONGOLIA
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Mongolia IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Mongolia IP Office. In Mongolia, trademark protection is granted according to the provisions of LAW OF MONGOLIA TRADEMARKS, TRADE NAMES.
Trademark in Mongolia may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Intellectual Property Office Of Mongolia |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | YES |
| Multi class system | YES |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services and Simply signed Power of Attorney. |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademark searches in Mongolia
Under the “First to File” principle, if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Mongolia can be conducted for word mark, numbers, images, etc. The official website of Mongolia IP Office allows you to conduct a similar mark search on their online database to ensure that there is no similar trademark existing on the register which is identical or similar to applicant’s trademark.
It is advisable to conduct comprehensive trademark clearance search in Mongolia to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Mongolia.
Filing trademark applications in Mongolia
A person may file multi-class or single class trademark application in Mongolia.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Mongolia
Ordinary trademark applications filed in Mongolia are applications without claiming any priority. Multi class trademark applications may also be filed in Mongolia. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Mongolia/Convention trademark applications Mongolia:
A priority trademark application may be filed in Mongolia. A priority trademark application should be filed in Mongolia within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Mongolia within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Mongolia follows the nice classification of classes. Intellectual property office of Mongolia uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Trademark Examination in Mongolia
Once the application is filed in Mongolia it goes through the Examination stage and are subject to formal and substantive examination. The trademarks are examined on the below mentioned grounds in Mongolia
- trademarks, identical with, or similar to the national emblem, flag, a whole or an abreviated name of mass and international organisations, official badges of Mongolia, or other foreign countries;
- whole and abbreviated name, portrait, picture, signiture of a famous person used without his, or heir’s authorisation;
- names, pseudonyms, portraits, pictures, or names of their imagination of historical persons of Mongolia used without authorisation of competent authority;
- a word, figurative elements protected by copyright, industrial design patent of Mongolia, used without authorisation of the author, or owner of the rights;
- a trademark similar to a trademark used for goods, service, which is registered, or submitted for registration;
- a trademark similar to common trademarks of Mongolia;
- a trademark, the content of which is prejudicial to public order, morality;
Trademark Opposition in Mongolia
If the Mongolia IP Office does find any grounds for refusal in the first examination, the application will be published in the monthly Trademark Journal. Any interested third party may file oppositions within 3 months time limit following the publication date of the Bulletin. If there are no oppositions filed within the abovementioned time limit, the application will be registered in the Trademark Register.
Trademark registration in Mongolia
After the examination, opposition process is completed and the mark is accepted for registration, the mark will be registered for a period of 10 years from date of application and the registration certificate is issued.
Trademark Renewal in Mongolia
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.