Law on Trademarks and Geographical Indications now in force

The Law on Trademarks and Geographical Indications has come into force. The new law amends the Law of Mongolia on Trade Names and Trademarks and will offer additional protection to geographical indications (GIs) and collective marks.

Some of the major changes introduced by the new law are the following:

• A GI cannot be registered if it has become a generic name for the type of product to which it relates or is similar to a mark that is well known in Mongolia.
  
  
• Only GIs that relate to the specific characteristics of the relevant product can be registered. Furthermore a letter of confirmation from the governor of an aimag (the Mongolian name for 'state' or 'province') or a city must be submitted with the application for registration confirming the proof of production of the products or services in that area.
  
  
• If the Intellectual Property Office (IPO) refuses to register a GI, the applicant may appeal to the courts.
  
  
• GIs can only be used by the registered owner for its goods or services.
  
  
• Collective marks, namely marks registered by an association or organization, are now permitted.

The new law also allows international registration of trademarks. Citizens of Mongolia, permanent residents and natural or legal persons who offer goods or services in Mongolia can apply for registration through the World Intellectual Property Organization's International Bureau pursuant to the Madrid Agreement and Madrid Protocol.

It also updates the remedies and penalties available against infringers. In certain circumstances, IPO state inspectors can order fines of up to Tk50,000 against natural persons and Tk250,000 against corporate entities, while judges can order fines of between Tk100,000 to Tk500,000.

David Buxbaum, Anderson & Anderson LLP, Hong Kong