Well-known international businesses such as Nike, Coca-Cola, and Facebook\u2014or even local ones like Narantuul, the major wholesale and retail market in Ulaanbaatar\u2014enjoy in Mongolia trademark-law protection without first requiring domestic registration. Unfortunately, the level of trademark protection in Mongolia does not reach the minimum standards set by the international law. That needs to change.<\/p>\n\n\n\n
Current Mongolian Law<\/strong><\/p>\n\n\n\n Mongolia\u2019s current Trademark Law<\/a> stipulates that a trademark shall not be registered if it is identical or similar to a well-known trademark in a way that it could cause confusion amongst consumers (see Art. 3.1.13 & Art. 5.2.8). Moreover, the owner of a well-known trademark may request the invalidation of another trademark that is in conflict with his\/her own trademark (Art. 32.1.2). Such an invalidation request is accepted in Mongolia if it was filed within one year from the date on which the registration of the conflicting trademark was published by the Intellectual Property Office (Art. 32.3). However, Art. 5.5 states that well-known trademarks should be registered and Art. 32.1.4 grants the so-called Dispute Resolution Committee (DRC) with the authority to decide whether or not a trademark is \u201cwell-known\u201d.[1]<\/sup><\/a><\/p>\n\n\n\n Harmonising with International Law<\/strong><\/p>\n\n\n\n Mongolia is a signatory of both the Trade-Related Aspects of Intellectual Property Rights<\/a> (TRIPS Agreement) and the Paris Convention for the Protection of Industrial Property<\/a> (Paris Convention). But major reforms are needed in Mongolia in order for the current Trademark Law to comply with international law, three of which are outlined below.<\/p>\n\n\n\n Firstly,<\/strong> the Paris Convention and TRIPS Agreement stipulate that well-known marks should enjoy protection based on their reputation without requiring a prior registration or use in Mongolia (Art.6 bis I Paris Convention and Art. 16 II TRIPS Agreement). Since Mongolia\u2019s current Trademark Law provides for recognition of a mark as \u201cwell-known\u201d based on a decision by the DRC, the law needs to clarify that official domestic recognition is not a precondition for protection of a well-known mark. The DRC should not have to issue an initial \u201cwell-known\u201d ruling on behalf of Nike\u2019s trademarks before Nike can enjoy trademark protection within Mongolia. Furthermore, the filing of a trademark opposition or invalidation request to the DRC, or the submission of an injunction and damage claim to civil court by the owner of a well-known mark, should not be rejected on the grounds that the mark was not first recognised officially as \u201cwell-known\u201d by the DRC.<\/p>\n\n\n\n Secondly,<\/strong> the owner of a well-known mark should be entitled to request the invalidation of a registration of a mark which is in conflict with the well-known mark. And the right to file an invalidation request should be granted to the owner of a well-known mark for at least five years<\/em> from the date on which the fact of registration of the conflicting mark was published by the Intellectual Property Office of Mongolia (Art. 6bis<\/sup> II Paris Convention). A one-year limit is just too short.<\/p>\n\n\n\n Thirdly,<\/strong> the right to request the invalidation of the conflicting mark and the civil law remedies of injunction and damages should be granted to the owner of a well-known mark without any time limit if the conflicting mark was registered or used in bad faith (Art. 6bis <\/sup>III Paris Convention). As it stands now, the Trademark Law of Mongolia does not provide for invalidation of registration of a mark in bad faith (The Defacto Gazette No. 7 (96)<\/a>). Introducing provisions and procedures for prevention and cancellation of trademark registration in bad faith is additionally required in order to harmonise the Mongolian law with the international law.<\/p>\n\n\n\n Actually, there is protection … but not for everyone<\/strong><\/p>\n\n\n\n In case of a dispute, foreign owners of well-known marks will not be left empty-handed in Mongolia, since the international law of Mongolia is part of our domestic law and thus the provisions of the Paris Convention and TRIPS Agreement should be considered as directly applicable.[2]<\/sup><\/a> However, the international law is primarily applicable to foreign businesses: for example, Mark Zuckerberg and his Facebook Inc. may assert their rights in Mongolia if a local webpage or social network with the name \u201c\u043d\u04af\u04af\u0440\u043d\u043e\u043c\u201d[3]<\/sup><\/a> was in operation, even though the Mongolian word \u201c\u043d\u04af\u04af\u0440\u043d\u043e\u043c\u201d is not a registered trademark.<\/p>\n\n\n\n Unfortunately, domestic firms are not as lucky. Mongolia\u2019s own Narantuul LLC, having established a well-known brand name through hard work and diligence, might face difficulties appealing against a trademark registration that intends to free-ride on the reputation of it\u2019s brand name \u201cNarantuul\u201d, especially if the Trademark Law\u2019s one-year deadline to submit an invalidation request was missed.<\/p>\n\n\n\n The Paris Convention and TRIPS Agreement are drafted for the protection of international parties with the expectation that no national legislature would allow the disadvantage of its citizens and businesses against foreigners within its territory. There should be harmonisation of protection coverage between international and domestic law. As things stand now, Mongolian voters would likely be displeased to learn that within Mongolia Mr. Zuckerberg actually has more trademark rights than a homegrown Mongolian business, especially one that contributes to the national economy by employing its people and paying taxes here. Mongolia\u2019s lawmakers would do well to begin that harmonisation process now.<\/p>\n\n\n\n June 2019<\/strong><\/p>\n\n\n\n Dr. Uyanga Delger, attorney-at-law<\/em><\/p>\n\n\n\n [1] Draft amendments<\/a> to the Trademark Law have proposed adding fees to such ruling requests.<\/em><\/p>\n\n\n\n [2] The Supreme Court of Mongolia ruled that the international law is directly applicable if the national law does not comply with it (Order No. 9 of 2008<\/a>); Bodenhausen, Guide to the application of the Paris Convention<\/a>, p. 89 and 90.<\/em><\/p>\n\n\n\n [3] Literally \u201cfacebook\u201d: \u043d\u04af\u04af\u0440 (face) + \u043d\u043e\u043c (book)<\/em><\/p>\n","protected":false},"excerpt":{"rendered":" Well-known international businesses such as Nike, Coca-Cola, and Facebook\u2014or even local ones like Narantuul, the major wholesale and retail market in Ulaanbaatar\u2014enjoy in Mongolia trademark-law protection without first requiring domestic registration. Unfortunately, the level of trademark protection in Mongolia does not reach the minimum standards set by the international law. That needs to change. Current […]<\/p>\n","protected":false},"author":19,"featured_media":10441,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[191],"tags":[],"ppma_author":[288],"class_list":{"0":"post-11105","1":"post","2":"type-post","3":"status-publish","4":"format-standard","5":"has-post-thumbnail","7":"category-article-2"},"authors":[{"term_id":288,"user_id":19,"is_guest":0,"slug":"u-delger","display_name":"Uyanga Delger","avatar_url":{"url":"https:\/\/jargaldefacto.com\/wp-content\/uploads\/2024\/04\/uyanga.jpeg","url2x":"https:\/\/jargaldefacto.com\/wp-content\/uploads\/2024\/04\/uyanga.jpeg"},"author_category":"","first_name":"Uyanga","last_name":"Delger","user_url":"","job_title":"","description":""}],"_links":{"self":[{"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=\/wp\/v2\/posts\/11105","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=\/wp\/v2\/users\/19"}],"replies":[{"embeddable":true,"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=11105"}],"version-history":[{"count":2,"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=\/wp\/v2\/posts\/11105\/revisions"}],"predecessor-version":[{"id":33211,"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=\/wp\/v2\/posts\/11105\/revisions\/33211"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=\/wp\/v2\/media\/10441"}],"wp:attachment":[{"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=11105"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=11105"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=11105"},{"taxonomy":"author","embeddable":true,"href":"https:\/\/jargaldefacto.com\/index.php?rest_route=%2Fwp%2Fv2%2Fppma_author&post=11105"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}