October 01, 2021

Amendments to the Trademark and Geographical Indications Law of Mongolia

Several amendments to the Mongolian Trademark & Geographical Indications Law have been recently introduced and are now in force.

The alterations to the legislation span multiple areas concerning the registration and maintenance procedures and requirements for the protection of trademarks. One of the most significant changes, for example, is the introduction of a requirement for a registered trademark to be in use for 5 consecutive years. As such, if a mark is not in use consecutively throughout the 5-year period, said non-use may be utilised by a third party as a ground for the cancellation of the registered trademark in question, unless a justifiable reason can be attributed to the non-use of a mark.

Provisions have been added to provide clarification of circumstances which will result in a mark being refused by the office, such as if the mark is confusingly similar to another registered geographical indication or mark, or filed with the intent of being used for unfair competition.

New provisions have also been implemented to establish a two phase opposition process. As such, the first stage of the opposition procedure applies after the publication of a trademark application online. Thereafter, the second phase of the opposition process comes after the completion of the substantive examination of the trademark application upon the monthly publication.

Furthermore, it has been clarified that the entire process of obtaining trademark protection from first filing to registration is expected to take approximately 9 months, although the fast track registration of a mark may be requested by the applicant when accompanied by an additional payment of the corresponding fee. This fast track option is estimated to expedite the process by between 1 and 3 months. The trademark examiner may also request an extension of the typical 9 month period by an additional 6 months if applicable, however, most trademarks are expected to be published at the second stage after 9 months in the official monthly publication.

Further, it was also added that oppositions against international trademark applications should be filed within 5 months from the date of publication.

Additionally, an extension period has been introduced in relation to responses to refusal notices, submission of documents such as priority documents, Power of Attorney, assignment deeds and notices of opposition, among others. Such extension of time will require the payment of an additional fee.

The amendments and additions to the Trademark and Geographical Indications Law of Mongolia strengthens applicants' rights by providing more options and terms for various actions, as well as adding detail and clarity on the registration procedure for trademarks and GIs. Furthermore, the changes represent an ongoing endeavour to ensure the IP system of Mongolia is more lucrative, with the amendments following an increase in IP fees in July of this year.

Author: Danielle Carvey