Representative Matters

Background

A global technology company filed a series of international trademark applications designating Mongolia through the Madrid System. The Intellectual Property Office of Mongolia issued provisional refusals against multiple designations on relative grounds, citing earlier registered Mongolian marks considered similar to the applied-for marks. Among the matters handled was a refusal citing an earlier mark on grounds of similarity to the applied-for mark in respect of technology goods and services.

Our Instruction

Alimaa IP Law was instructed by a leading international law firm to review each provisional refusal, advise on prospects, and prepare substantive responses within the applicable deadlines. The instruction covered multiple applications over the course of the engagement.

Our Approach

For each refusal, we conducted a detailed comparative analysis of the applied-for mark and the cited earlier mark under Mongolian trademark law, examining visual, phonetic, and conceptual similarities. We identified and articulated the material differences between the marks in each case, including differences in overall commercial impression, structure, and meaning. Our responses set out a clear legal basis for distinguishing the marks and addressed each ground of refusal raised by the Intellectual Property Office.

Outcome

All provisional refusals were successfully overcome. Each of the international designations proceeded to full protection in Mongolia. Alimaa IP Law acted for the client across multiple applications over a period of several years.

Background

A leading global online travel and accommodation platform filed an international trademark application designating Mongolia through the Madrid System. The Intellectual Property Office of Mongolia issued a provisional refusal on absolute grounds, taking the position that the applied-for mark lacked distinctive character and was too generic to be eligible for trademark protection in Mongolia in respect of the designated services.

Our Instruction

Alimaa IP Law was instructed to review the provisional refusal, advise on prospects for response, and prepare a substantive response within the applicable deadline.

Our Approach

We analysed the refusal and prepared a detailed written response challenging the Intellectual Property Office's assessment of the mark's distinctiveness. Our response addressed the absolute grounds raised, setting out legal arguments on the inherent and acquired distinctiveness of the mark, its long-standing international recognition, and its established reputation among Mongolian consumers as a distinctive identifier of the platform's services. We supported the response with arguments on how Mongolian trademark law should be applied to well-known marks of this nature.

Outcome

The Intellectual Property Office accepted the response and withdrew the provisional refusal. The international registration proceeded to full protection in Mongolia.

Background

A Mongolian publishing company launched a journal using a cover design that closely replicated the distinctive red border and typography of a leading international news magazine — one of the most recognised masthead designs in the world. The infringing design was sufficiently similar to the original as to create a clear risk of consumer confusion and to constitute unauthorised use of the protected trade dress and trademark of the international brand.

Our Instruction

Alimaa IP Law was instructed to investigate the infringing use, assess the legal position under Mongolian trademark law, and take enforcement action to bring the infringement to an end.

Our Approach

We conducted an investigation into the infringing publication, gathering evidence of the cover design, the masthead, and the typography used. We prepared and issued a cease and desist letter to the Mongolian publishing company setting out the legal basis for the claim — including trademark infringement and unfair competition grounds under Mongolian law — and requiring the company to cease use of the infringing design and redesign the publication cover.

Outcome

The Mongolian publishing company agreed to change the design of the magazine cover. The infringing red border and typography were removed and the publication was redesigned. The matter was resolved without the need for administrative or court proceedings.

Background

A Mongolian individual had registered the name of a well-known international television format in Mongolia in anticipation of the format's planned launch in the country. The Mongolian licensee of the international network — a local television broadcaster — received a cease and desist demand from the Mongolian registrant threatening to prevent the broadcast of the format. The international network instructed Alimaa IP Law directly to assess the legal position and advise on the available options.

Our Instruction

Alimaa IP Law was instructed by the international television network to review the Mongolian trademark registration, advise on its validity and enforceability, assess the threat made against the licensee, and recommend a strategy to protect the network's interests and enable the format to proceed in Mongolia.

Our Approach

We conducted a thorough review of the Mongolian registration and assessed the available grounds for challenge under Mongolian trademark law, including bad faith. We provided a comprehensive written advisory to the client setting out the legal position, the strength of the registrant's position, the risk and cost of formal proceedings, and the available strategic options — including challenge, negotiation, and an alternative commercial solution.

Outcome

On the basis of our legal advice, the international network made a commercial decision to proceed under a modified name for the Mongolian market, avoiding a protracted dispute with the local registrant. The licensee was able to broadcast the format in Mongolia without interference. The matter was resolved efficiently through legal advisory without the need for formal proceedings.

Background

A leading global technology company was preparing to launch a widely used mapping and location services platform in Mongolia. In advance of the launch, the company's international law firm instructed Alimaa IP Law to advise on intellectual property questions arising under Mongolian law in connection with the platform's operation in the territory.

Our Instruction

Alimaa IP Law was instructed to provide a legal advisory on intellectual property ownership questions specific to the Mongolian market, including the ownership of photographs and other user-generated content uploaded to the platform by Mongolian users, and the applicable legal framework under Mongolian intellectual property and copyright law.

Our Approach

We reviewed the relevant provisions of Mongolian intellectual property law, including copyright ownership rules applicable to photographs and other works created and uploaded by users. We assessed how Mongolian law applied to user-generated content in the context of a global platform and prepared a written advisory setting out the legal position, potential risks, and practical recommendations for the client's terms of service and content policies as they related to the Mongolian market.

Outcome

A comprehensive written advisory was delivered to the instructing law firm covering the intellectual property ownership framework applicable to user-generated content under Mongolian law. The advisory informed the client's approach to the platform launch in Mongolia.

Background

An international education group operating premium schools sought to establish a licensed presence in Mongolia. The group required trademark protection in Mongolia for a portfolio of names and logos associated with its schools, and a licence agreement to govern the rights of the Mongolian entity authorised to operate under the group's brand in the territory.

Our Instruction

Alimaa IP Law was instructed to handle the trademark registration of the group's names and logos in Mongolia and to advise on and draft the licensing arrangement between the international education group and the Mongolian licence holder.

Our Approach

We filed trademark applications in Mongolia for the relevant names and logos across the applicable classes, managing the prosecution of each application through to registration. We also advised on the structure of the licensing arrangement under Mongolian law and drafted the licence agreement governing the Mongolian entity's right to use the group's registered trademarks in connection with the operation of the licensed schools in Mongolia. We ensured the agreement addressed the key requirements of Mongolian trademark law, including the recordal of the licence with the Intellectual Property Office of Mongolia.

Outcome

All trademark applications were successfully registered in Mongolia. The licence agreement was concluded between the international education group and the Mongolian licence holder, providing a legally sound framework for the operation of the licensed schools in Mongolia under the group's brand.

Background

A major international aviation group underwent an internal corporate restructuring requiring the transfer of its Mongolian trademark portfolio from one group entity to another. The restructuring was subject to a tight timeline, and the trademark assignments in Mongolia formed part of a broader global transfer of intellectual property assets between group companies that needed to be completed within a defined period.

Our Instruction

Alimaa IP Law was instructed by the group's international law firm to manage the assignment of the client's Mongolian trademark registrations from the transferring entity to the receiving entity, ensuring all filings were completed accurately and within the deadline imposed by the restructuring timetable.

Our Approach

We conducted a full review of the group's Mongolian trademark portfolio, which comprised multiple registrations across a range of classes. We prepared the assignment documentation required by the Intellectual Property Office of Mongolia, coordinated the execution of the necessary powers of attorney, and filed the assignment recordal applications for the entire portfolio. Given the volume of marks involved and the tight deadline, we managed the filings in a structured sequence to ensure all assignments were processed within the required timeframe and that no registration lapsed or fell outside the restructuring window.

Outcome

All trademark assignments were successfully recorded with the Intellectual Property Office of Mongolia within the required deadline. The entire Mongolian trademark portfolio was transferred to the receiving group entity in time for the completion of the corporate restructuring. The instructing law firm received full confirmation of each assignment upon completion.