How to Mongolia protect a trademark

Located adjacent to two major economies, China and Russia, Mongolia has access to a large market of more than 1.5 billion people, facilitating the export of goods and attracting foreign investment. As an important connectivity point in the Belt and Road Initiative (BRI), Mongolia has the potential to become a regional trade and logistics hub. Mongolia is a country rich in abundant natural resources, dubbed a “mineral treasure” with abundant reserves of precious minerals such as coal, copper, iron ore, gold, molybdenum, etc. High demand from major economies such as China and Japan for these raw materials opens up tremendous export opportunities for Mongolia. Mongolia’s land area is mostly large, fertile pastures, suitable for cattle breeding, making an important contribution to the agricultural industry – Mongolia’s traditional strength. The tourism industry in Mongolia is a potential industry for economic development due to the pristine and majestic nature and unique culture of the Mongolian people attracting international visitors to visit and experience. Therefore, more and more businesses are expanding their business scope here, in order to be able to distinguish their trademarks from other competitors, businesses need to pay attention to trademark registration procedures. Viet An Law would like to guide customers through the preliminary procedures for trademark registration in Mongolia through the article below.

Legal basis

• Trademark Law and Geographical Indications

Definition of “trademark” in Mongolia

According to Mongolia’s Law on Trademarks and Geographical Indications, a trademark is defined as  a characteristic expression used by an individual or legal entity to distinguish their goods or services from those of others. Concrete:

• Characteristic expressions: are recognizable, easy-to-remember signs that are clearly distinguishable from other brands. Characteristic expressions can include logos, images, writing, sounds, colors, or combinations of elements.
• Individual or legal entity: is the owner of the trademark. Individuals may be Mongolian citizens or foreigners with legal status under Mongolian law. Legal entities can be businesses, non-profit organizations, or other organizations recognized by law.
• Goods or services: are objects that a trademark is used to distinguish. A trademark may be used for one or more types of goods or services.

Types of trademarks that can be registered in Mongolia

Letter marks: This is the most common type, consisting of words, letters, or numbers. (Note: If your trademark uses characters other than Cyrillic or Latin letters, or a foreign language, you’ll need to provide a Mongolian translation to register.)

Visual branding: Includes a logo, design, symbol, or any two-dimensional image that represents a business’s trademark.

Trademarks that incorporate text and images: Combine elements of both text and image marks. However, exclusive rights are limited to specific configurations or ways of registration.

Holographic logo brand: This is a special type of trademark that uses holographic images to enhance security and brand recognition.

Motion Mark:  This is a relatively new option, allowing businesses to register trademarks that include motion. Businesses will need written descriptions and video recordings to file this type.

Color trademarks and color combinations: Businesses can register specific colors or color combinations as trademarks if they are distinctive enough to identify the business’s trademark.

Conditions for trademark registration in Mongolia

Uniqueness: The trademark must be inherently unique. It must be able to clearly distinguish the goods or services of the applicant from those of others. Generic terms, descriptive phrases, or common symbols generally do not qualify.

Availability: A trademark must not be identical or confusing to an existing registered trademark in Mongolia for similar goods or services. The applicant may perform a preliminary search prior to filing to assess potential conflicts.

Legality: A trademark must not deceive, violate public order or morals, or infringe on the rights of others. For example, a trademark containing offensive language or symbols cannot be registered.

Trademark registration dossier in Mongolia

To register a trademark in Mongolia, the applicant needs to prepare a dossier (package of documents) and submit it to the Mongolian Intellectual Property Office (IPOM). Here are details of the main documents:

Application Form: Download the official trademark application form from IPOM’s website (https://www.ipom.gov.mn/en.php). Complete and accurately the information on the application form, including:

• Applicant information (name/company name, address, nationality)
• Authorization information (if the applicant applies through a representative organization)
• Trademark details (brand type, description, class of goods/services)
• Right-of-way request information (if applicable, request priority from documents filed in another country)

Trademark representation:

• Depending on the type of trademark the applicant is applying for, the applicant should provide clear representation:
  • Trademark lettering: Submit the actual document the applicant wants to register. If using non-Cyrillic/Latin characters or a foreign language, include a Mongolian translation.
  • Image branding: Provide an image file (e.g. JPG, PNG) that describes the logo, design, or icon.
  • Combined branding: A clear visual representation showing a combination of text and visual elements.
  • Three-dimensional/motion logo branding: Prepare a detailed written description of three-dimensional or moving elements, along with a video recording introducing the brand.
  • Color/Color Combination: Submit a clear visual representation of the specific color or color combination the applicant wants to register.
• Power of Attorney (Optional):
  • Although not required, the applicant should include a Power of Attorney (POA) authorizing the Mongolian lawyer or intellectual property representative to handle the application process on the applicant’s behalf.
  • Applicants can obtain POA forms from IPOM signed and notarized.
• Fees: The applicant needs to pay official government fees to file a trademark application. Currently, the fee for filing a trademark application in Mongolia is 120,000 MNT. Other procedures such as publication and certification will also incur additional costs.

Trademark registration in Mongolia through the Madrid System

The Madrid system is a convenient and cost-effective Mongolian league for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• Mongolia joined the Madrid Accords on 21 April 1985.
• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Mongolia accessed the Madrid Protocol on 16 June 2001.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Singles include the Madrid Singles of Vietnamese origin and the Madrid Singles with Mongolian designations.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or Mongolian;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of classes of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

If you need to apply for trademark registration, patent registration, industrial design registration or other IP assets protection, please contact Viet An Law Firm for the most effective support.

Update: 8/2024