Mongolia and the Madrid Protocol

Overview

Mongolia has been a member of the Madrid System since 1985, having acceded to both the Madrid Agreement and the Madrid Protocol, as defined in Articles 3.1.20 and 3.1.21 of the Law of Mongolia on Trademarks and Geographical Indications (Trademark Law). International trademark applications filed through the World Intellectual Property Organization (WIPO) may designate Mongolia, extending the protection of an international registration to the Mongolian territory.

For foreign law firms managing multi-jurisdiction trademark portfolios, the Madrid route is the most efficient way to obtain trademark protection in Mongolia alongside other designated territories. However, the Mongolian designation has specific procedural requirements and risks that differ from other Madrid System members — and that require careful management by experienced local counsel.

How the Madrid Route Works for Mongolia

When Mongolia is designated in an international trademark application, WIPO notifies the Intellectual Property Office of Mongolia (IPOM) of the designation. The IPOM then examines the designation in accordance with Mongolian trademark law — applying the same substantive examination criteria as it applies to direct national applications (Art. 11.1, Trademark Law).

If the IPOM finds grounds for refusal — whether absolute or relative — it issues a provisional refusal and notifies WIPO, which transmits the refusal to the holder or their representative. If no provisional refusal is issued within the applicable refusal period, protection is deemed granted in Mongolia for the designated goods and services.

The Provisional Refusal — What Happens Next

Receiving a provisional refusal from the IPOM is not the end of the matter. In many cases, a well-prepared response will overcome the refusal and secure full protection in Mongolia. However, the procedural framework is strict and the consequences of inaction are severe.

Response deadline

The deadline for responding to a provisional refusal is stated in the refusal notification itself. In our experience, the IPOM typically allows three months from the date of notification by WIPO. This deadline is strict — no extension is available for refusal responses under the Trademark Law.

Failure to respond within the deadline results in the refusal becoming final. Mongolia is then excluded from the scope of the international registration for the affected goods and services. There is no mechanism to restore protection after a missed deadline.

Local representation is required

All responses to provisional refusals must be filed directly with the IPOM through a licensed Intellectual Property Agent in Mongolia. WIPO does not handle the response on the holder's behalf. Foreign counsel cannot file directly — local representation is mandatory (Art. 6.2, 8.12, Trademark Law).

If the response is unsuccessful

If the IPOM does not accept the response and maintains the refusal, the refusal becomes final. There is no further appeal available within the IPOM framework. The holder retains the option to pursue other remedies — such as invalidity proceedings against a conflicting earlier mark — but these are separate actions and do not restore the refused designation.

Opposition to Madrid Designations

Under Article 11.9 of the Trademark Law, added by the 2021 amendments, third parties may file an opposition against a Mongolian designation of an international application within five months of the date of international publication.

This five-month opposition period for Madrid designations is different from the three-month period that applies to national applications (Art. 8.10, Trademark Law). Foreign counsel managing Madrid portfolios should note this distinction carefully.

The opposition period for Madrid designations may not be extended. Oppositions must be filed through a licensed Mongolian IP agent (Art. 8.12, 11.12, Trademark Law).

Grounds for Provisional Refusal

Absolute grounds

Absolute grounds are set out in Article 5.1 and 5.2 of the Trademark Law and include: lack of distinctive character; signs that are descriptive of the goods or services; deceptive marks; marks contrary to public policy or accepted principles of morality; and signs that have become customary in the trade.

Relative grounds

Relative grounds arise where the applied-for mark conflicts with an earlier right, most commonly an earlier registered Mongolian trademark covering identical or similar goods and services. Article 5.2.6 covers identical marks on identical goods and services. Article 5.2.7 covers similar marks on similar goods and services where confusion may result. The IPOM assesses likelihood of confusion by reference to the visual, phonetic, and conceptual similarity of the marks and the similarity of the goods and services.

How We Handle Provisional Refusals

Alimaa IP Law regularly acts as local Mongolian correspondent for foreign law firms and in-house legal teams in connection with Madrid designations. Our approach for each matter involves four stages.

Assessment

On receipt of instructions, we review the provisional refusal in full, assess the strength of the grounds raised, and advise on prospects for response and the recommended strategy. Where a relative grounds refusal cites an earlier registered mark, we investigate that mark — including its status, scope, and actual use in Mongolia.

Strategy

Where the cited earlier mark appears vulnerable to a non-use cancellation action — for example, because it has not been put to genuine commercial use within the five-year period specified in Article 33.1.3 of the Trademark Law — we advise on pursuing cancellation proceedings in parallel with the refusal response. Coordinating these proceedings can maximise the prospects of securing full protection.

Response preparation

We prepare a detailed written response in Mongolian, addressing each ground raised by the IPOM. For absolute grounds refusals, we set out legal arguments on the distinctiveness of the mark and, where relevant, its acquired distinctiveness through use and its established reputation in Mongolia and internationally. For relative grounds refusals, we conduct a comparative analysis of the marks and articulate the material differences in overall commercial impression, visual appearance, phonetic sound, and conceptual meaning.

Filing and follow-up

We file the response with the IPOM within the deadline and keep the instructing firm informed of all developments throughout the prosecution process. Where the IPOM requests further submissions, we manage all correspondence.

Common Pitfalls for Foreign Counsel

Based on our experience handling Mongolian Madrid designations, the following issues arise most frequently.

Missing the deadline

The refusal response deadline is the most common source of difficulty. Instructions received late — or not received at all where the holder's WIPO contact details are not current — can result in a missed deadline and a final refusal. We recommend instructing local Mongolian counsel immediately on receipt of the WIPO notification.

Narrow specifications

Applicants sometimes file Mongolian designations with a restricted specification of goods or services to reduce costs, then discover that the specification does not cover the full range of their commercial activities in Mongolia. Broadening a specification after filing is not straightforward. We advise clients on appropriate specification scope at the filing stage.

Overlooking the first-to-file risk

Some brand owners designate Mongolia through Madrid only after a problem has arisen — typically after discovering that a third party has already filed for an identical or similar mark. By the time a provisional refusal is received citing that earlier mark, the options are more limited and more expensive than they would have been with an earlier filing.

Assuming extensions are available

Unlike some other Madrid System members, Mongolia does not permit extensions of the refusal response deadline. This is distinct from the opposition period, which — for national applications — may be extended by up to two months on request with a service fee (Art. 8.11, Trademark Law). Foreign counsel should note this distinction carefully.

Practical Tips for Foreign Counsel

• Instruct local Mongolian counsel immediately on receipt of the WIPO notification — do not wait until the deadline approaches
• Verify WIPO contact details for the holder are current so that provisional refusal notifications are received promptly
• Include Mongolia in filing programmes early — do not wait until market entry to seek protection
• Consider a clearance search before filing the Mongolian designation to identify potential conflicts in advance
• If a relative grounds refusal cites an earlier mark, ask Mongolian counsel to investigate that mark's actual use and its vulnerability to non-use cancellation before formulating the response strategy
• Note that the opposition period for Madrid designations — five months from international publication (Art. 11.9, Trademark Law) — differs from the three-month period for national applications (Art. 8.10, Trademark Law)