Response to provisional refusal in Mongolia

Deadline

The Trademark Law allows three months deadline for filing a response to a provisional refusal decision on MN designation of an international trademark registration. The three months` deadline is counted from the date of the WIPO notification. This deadline for response to office action can be extended to further three months if a deadline extension request is filed and the official fee is paid.

Documents

A scanned copy of a power of attorney on the form issued by the Intellectual Property Office is sufficient for filing a response to an office action. Notarisation or legalisation is not required.

Service

In Mongolia, both absolute and relative grounds are examined ex officio. Since 2012, we have been assisting clients in:

• obtaining a letter of consent
• drafting and filing of argumentative response
• maintaining the application and filing of non-use cancellation
• maintaining the application and filing of bad-faith cancellation request

Cases

• Absolute grounds on the basis of Art. 5.1.2 Trademark Law of Mongolia (descriptive elements and minimum degree of inherent distinctiveness; new type of marks, i.e. position mark)
• Relative grounds on the basis of Art. 5.2.7 Trademark Law of Mongolia (similarity of signs; identical descriptive elements; similarity of goods or services; scope of protection and impact of intensive use or well-known marks; shot signs; impact of descriptive elements on similarity of signs)
• Non-use cancellation to obtain registration
• Negotiation with owner of the cited mark