RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/115
12 November 1998
(98-4488)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Replies from Mongolia to questions from the European Communities
and their Member States1 and Japan 2
The following communication, dated 2 November 1998, has been received from the
Permanent Mission of Mongolia.
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I. REPLIES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND
THEIR MEMBER STATES
A. COPYRIGHT AND RELATED RIGHTS
1. Please explain whether and how Mongolia provides full retroactive protection to works,
phonograms and performances from other WTO Members as required by Articles 9.1, 14.6 and 70.2
of the TRIPS Agreement, each of which incorporate by reference or rely upon Article 18 of the Berne
Convention.  Please give the date to which such protection extends back with respect to each category
of subject-matter.
The existing legislation of Mongolia does not provide retroactive implementation.  However
we think that the Copyright Law may be amended to provide retroactive protection to works,
phonograms and performances.
2. Please clarify whether and how compilations of data are protected under Mongolian
copyright legislation (Article 10 of the TRIPS Agreement).
The existing Copyright Law does not provide protection to compilation of data.  The draft law
on Amendments to the Copyright Law that was submitted by the Government to the Parliament
provides protection of compilation of data.
3. Article 6 of the Copyright Law attributes certain competences to the Intellectual Property
Office e.g. "receiving applications in respect of c opyright in works" and "make determinations on
them or granting certificates in respect of works".  Please describe in more detail the responsibilities
of this Office, in particular against the background that the enjoyment and the exercise of copyright
shall not be subject to any formality (Article  9 of the TRIPS Agreement in conjunction with
Article 5(2) of the Berne Convention).
                                                     
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The new draft law provides no formality for copyright protection.
4. Please clarify whether and how Article 11 of the TRIPS Agreement (rental rights with respect
to computer programs and cinematographic works) is implemented in Mongolian legislation .
As computer programs and cinematographic works are protected by copyright, the provision
of Article 9 (3) provides right to rental.
5. Article 13 of the Copyright Law provides for the requisition of a work in cases of "immediate
public interest".  Please clarify how "immediate public interest" is interpreted.  Furthermore, please
describe any cases where Article 13 was applied.
Under Article 13 of the Copyright Law, "immediate public interest" means public health, food
supply, defence that ensures the interest of the population.  For instance, there was no case relating to
the implementation of Article 13.
6. Article 20 of the Copyright Law provides for the protection of derivative works for a term of
protection of 25 years.  Article 9 of the TRIPS Agreement in conjunction with Article 2(3) of the Berne
Convention states that derivative works i.e., translations, adaptations, arrangements of music and
other alterations of a literary or artistic work shall be protected as original works (i.e. term of
protection 50 years) without prejudice to the copyright in the original work.  Against this background,
please explain in more detail how the term "deriv ative works" is interpreted and how such works are
protected.  Please also explain how such works relate to the original work under Mongolian
Copyright Law.
Although Article 20 (2) of the Copyright Law provides the term of protection for derivative
works for 25 years, derivative works, under Article 3 (12), are protected as original works.  Thisdifference shall be amended by the draft law on amendments submitted to the Parliament.
7. Article 21.2 of the Copyright Law provides that sound and visual recordings may be used for
a non-commercial purpose without the consent of the right holder.  Please clarify the scope of "non-
commercial purpose" and give some examples.
The reply to this question will be provided later.
8. Article 21.4 of the Copyright Law seems to provide for a term of protection of only 25 years
for producers of sound and visual recordings.  However, the TRIPS Agreement foresees in Article 12
a general term of protection of 50 years and more specifically, for producers of sound recordings in
Article 14.5, a term of protection also of 50 years.  Please explain.
According to the draft law, this term is amended up to 50 years.
9. Please explain how the term "public benefit" in  Article 23 of the Copyright Law is interpreted
and applied.
Under Article 23 of the Copyright Law, "public benefit" means to meet the requirements of
public interest.IP/C/W/115
Page 3
B. TRADEMARKS , GEOGRAPHICAL INDICATIONS AND INDUSTRIAL DESIGNS
1. Trademarks
1. Article 3 ("Definition") of the Trademark La w does not mention combinations of colours as
possible trademarks.  Please explain how this complies with Article 15 of the TRIPS Agreement,
which expressly includes such types of trademarks in the scope of protection.
Although Article 3 of the Trademark Law does not mention combinations of colours as
possible trademarks, Article 7 (5) stipulates that "If an applicant wishes to register a sign, a collective
mark of form of volume, or of colour, he or she shall address this in the application and shall attach a
copy of the procedure for use of the mark to the ap plication".  This means that combination of colours
may be registered as possible trademark.  Moreover, Article 2 (2) of the Trademark Law says that "If
an international treaty to which Mongolia is party is inconsistent with this law, then the provisions of
the international treaty shall prevail."  As Mongolia is member of the WTO and implements the
TRIPS Agreement, Mongolia shall register combinations of colours as a trademark.
2. In Article 4.2 (iv) of the Trademark Law it is stated that "a thing which may lead to wrong
way" is not considered as being a trademark.  Please clarify what is meant by this.
Under Article 4 (2) (iv) of the Trademark Law, the meaning of "a thing which may lead to
wrong way" is a mark which the consumers may confuse with other marks.
3. Please explain whether and how Mongolian le gislation implements Article 16.2 and 16.3 of
the TRIPS Agreement which provides for a specific (enhanced) protection of well-known marks
beyond what is covered by the Paris Convention.
Article 4 (3) (6) of the Trademark Law stipulates that trademarks similar to common
trademarks of Mongolia shall not be registered.  The criteria to determine the well-known marks maybe explained by the Supreme Court which has jurisdiction to make explanation to legislation.  The
above provision may be interpreted as implementing the provisions of Article 16.2 and 16.3 of the
TRIPS Agreement.
4. It appears that Article 11 of the Trademark Law provides for a term of protection of 20 years
(ten + ten) at the most.  Please explain how this complies with Article 18 of the TRIPS Agreement,
which states that "the registration of a trademark shall be renewable indefinitely".
Article 11 (2) of the Trademark Law stipulates that "the period of validity of a certificate of
trademark or trade name may be extended on the application of the owner for a period of ten years".
This means each time the extension is valid for ten years.
5. Please clarify whether, under Mongolian legislation, the owner of a registered mark has the
right to assign the mark with or without the transfer of the business to which it belongs (Article 21 of
the TRIPS Agreement).
Article 16 (1) of the Trademark Law stipulates that "An owner of a trademark may transfer, in
whole or in part, the right to own the trademark to others by way of inheritance or other means".  This
means that the owner of a trademark has the right to  assign the mark with or without the transfer of
the business to which it belongs.IP/C/W/115
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2. Geographical indications
6. Please explain in detail whether and how Part II, Section 3 of the TRIPS Agreement is
implemented in Mongolian legislation.
The Law on Trademarks and Trade Names says that "place of origin" means the name of the
country, city, village or place where goods are produced which have characteristics directly linked
with its geographical conditions and the customs of its people.  Article 4 (4) of the Law says that "the
name of the origin of goods shall be registered only by way of a collective mark."  However these
provisions do not comply with the requirements of Section 3 of the TRIPS Agreement and the
Government has started on a separate draft law on geographical indications.
3. Industrial designs
7. Please explain in detail whether and how Article 25.2 (protection of textile designs) of the
TRIPS Agreement is implemented in Mongolian legislation.
There is no special provision regarding textile designs.  However, in Mongolia the textile
design is protected as an industrial design under the Patent Law.
C. PATENTS , LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS AND PROTECTION OF
UNDISCLOSED INFORMATION
1. Patents
1. Article 3.1 of the Patent Law defines an "invention as an absolutely new solution that relates
to a product or process, that has been created for the first time, and the essence of which depends
upon the basis of a law of nature".  Against the background of this latter condition, please explain
how it is interpreted and how the term "invention" relates to "discovery ".
Under the Patent Law, discovery and invention relate to each other by that provision, we grant
patents only to industrially applicable solutions.
2. The Patent Law provides for the protection of inventions and innovations.  Please clarify how
the two relate to each other (on the basis of conc rete examples, if possible).  Furthermore, Article 4.1
of the Patent Law states that "a patent shall be gr anted to the author of an invention".  Article 17 of
the Patent Law describes the "rights of patent owners".  Nevertheless, Article 15 of the Patent Law
provides for the "rights of creators of inventions".  Article 19 of the Patent Law seems to distinguishas well between the exploitation of a patented invention and an invention (by concluding a licence
contract).  Against this background, please clarify and explain the relationship between a "patent"
and an "invention" including its legal consequences.
The draft law on amendments to the Patent Law provides protection of utility models instead
of innovations.  Patent means a legal document granted by competent authorities to determine the
solution as an invention.  Invention is a solution not legally protected.
3. Article 4.5(5) of the Patent Law excludes from patentability the "prophylaxis of human and
animal diseases".  Please explain how this is interpreted and applied (on the basis of concrete cases,if possible).
The method of diagnoses and treatment of human beings and animals is excluded from
patentability.IP/C/W/115
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4. Article 4.5(6) of the Patent Law excludes from patentability "plant varieties".  Article 27.3(b)
of the TRIPS Agreement states that "Members shall provide for the protection of plant varieties either
by patents or by an effective sui generis system or by any combination thereof".  Please explain
whether and how plant varieties are protected under Mongolian legislation.
The draft law provides protection to plant varieties.
5. Article 20 of the Patent Law sets out certain criteria for the granting of compulsory licences.
However, Article 31 of the TRIPS Agreement does not seem to be implemented in its totality.  Please
explain.
Article 20 of the Patent Law does comply with Article 31 of the TRIPS Agreement, however
there is a discussion to improve the provision of that Article.
6. Please explain whether and how Article 34 (reversal of the burden of proof in case of process
patents) of the TRIPS Agreement is implemented in Mongolian legislation.
It is possible to reflect the provisions of Article 34 of the TRIPS Agreement in the Patent
Law.  The defendant is responsible to determine the difference in process patents according to the law
on civil proceedings.
2. Layout-designs (topographies) of integrated circuits
7. Please explain whether and how Part II, Secti on 6 of the TRIPS Agreem ent is implemented in
Mongolian legislation.
There is no provision regarding layout-designs of integrated circuits and protection of
undisclosed information.
3. Protection of undisclosed information
8. Please explain whether and how Part II, Secti on 7 of the TRIPS Agreem ent is implemented in
Mongolian legislation.
See the response to question 7.
II. REPLIES TO QUESTIONS POSED BY JAPAN
1. Article 21.1 of the Trademarks, Trade Names Law (1997) provides that profit gained from
sale of goods shall be transferred to state ownership, while it is stipulated that the profits gained from
the unlawful use of trademarks or trade names are attributable to the holder of the trademarks or
trade names.  Does the above-mentioned provision comply with Article 45 of the TRIPS Agreement,where the provision of Article 21.1 of the Trademarks, Trade Names Law (1997) in fact denies, to the
owner of trademarks or trade names, the opportunity to compensate the damage caused by the
unlawful use of trademarks or trade names?
The Civil Code of Mongolia regulates compensation of damages caused by infringement of
intellectual property rights.  The provision of Article 21 (1) of the Trademarks, Trade Names Law
determines one of the penalties for the person who in fringes the rights of the owner of trademarks and
trade names.IP/C/W/115
Page 6
2. With regard to Article 21.2 of the Trademarks, Trade Names Law (1997), please explain
specifically what kinds of penalties are imposed on a person who has infringed other's trademark or
trade name.
The penalties referred to in Article 21 (2) of the Trademarks, Trade Names Law are the
penalties imposed on a person who has infringed others' trademark and trade names, which are
reflected in Article 150 of the Criminal Code and Civil Code (see the reply to question 12 below).
3. With regard to Article 28.2 of the Patent Law (1993), please explain specifically what kinds of
penalties are imposed on a person who has infringed other's patent.
With regard to Article 28 (2), a person who has infringed intellectual property rights shall,
according to the provisions of Article 150 of the Criminal Code, be subject to a fine of up to 250 000
Tugriks3 or corrective labour for up to one and a half years.
4. With regard to Article 28.3 of the Patent Law (1993), please indicate the criteria for deciding
the amount of compensation which is paid to a patentee who has suffered from the infringement of hispatent.
With regard to Article 28 (3), the criteria for deciding the amount of compensation which is
paid to a patentee who has suffered from the infringement of his patent is regulated by regulations
stipulated in the Civil Code of Mongolia.  This means the decision on the amount of compensation isup to the judge.
5. Please explain if Mongolia provides:
(i) judicial procedures for civil remedy for the infringement of intellectual property
rights; and
(ii) border measures against goods infringing intellectual property rights.The infringement of intellectual property rights is solved like civil cases under the regulation
stipulated in the law of judicial procedures for civil remedy based on the law of intellectual property
or Civil Code.  Custom authorities may suspend the importation of suspected goods.  However, thereis no provision and regulation concerning seizure of infringing goods.  The Government is now
preparing a draft related to border measures and provisional measures in connection with intellectual
property rights protection.
6. Please explain whether the following subject matters are patentable: (1) plants and animals,
and (2) plant and animal varieties.
Under the provision of Article 4 (5) (6) of the Patent Law of Mongolia, plants and animals,
and plant and animal varieties are excluded from patentability.  This provision does not comply with
Article 27.3 of the TRIPS Agreement; the Government of Mongolia has submitted a draft to theParliament to correct this situation.
7. Please explain how the obligation under Article 34.1 and 34.2 of the TRIPS Agreement
regarding the shift of the burden of proof in civil proceedings for patent infringement related to a
process patent is implemented.
                                                     
3 1 US$ = 850 Tugriks.IP/C/W/115
Page 7
Article 377 of the Civil Code of Mongolia says "If a tortfeasor proves that such damage did
not occur due to its own fault, it shall not be li able for such damage in other cases except those
provided by the Law".  In this connection, the defendant shall prove his innocence.  A person who
uses a process similar to a patented process shall have a right to a patent after the proof of difference.
8. Please explain the remedies which the judicial authorities order regarding the infringement
of copyright and related rights, patents, industrial designs, trademarks and layout-designs
(topographies) of integrated circuits, including injunctions, damages, destruction or disposal of
infringing goods, materials or implements for their production.
The infringement of intellectual property is solved under the provisions of Article 28 (1) of
the Patent Law, Article 21 (1) of the Trademarks, Trade Names Law, Article 24 (1), (2) of theCopyright Law.  In criminal cases, the infringement is solved by fine or imprisonment, for civil cases
it is solved by disposal and destruction of goods under judicial procedures for civil remedy law.
9. Please explain whether the amount of damages which judicial authorities order the person
who has infringed intellectual property rights to pay the right holder is adequate compensation for theinjury the right holder has suffered, and what criteria and the way for calculation are adopted in
order to decide the amount for compensation.
In order to decide the amount of compensation, the real damage and the income which will
have been gained shall be taken into consideration.  The calculation of the claimant or the owner ofthe right shall also be taken into consideration.  Afterwards, the examiner shall work on the estimation
and shall make the report.  This is regulated by the Judicial Procedures for Civil Remedy Law.
10. Please explain whether the amount of damages which judicial authorities order the person
who has infringed intellectual property rights to pay the right holder includes investigation expensesand appropriate attorney's fees.
Under Articles 50 and 51 of the Judicial Procedures for Civil Remedy Law, the expenses of
the court shall be paid from the state budget and the following costs shall be paid by the parties:
(a) expenses relating to transport, lodging, boarding of examiner, interpreter, and
expenses for work, which was charged by the court out of his or her job;
(b) expenses relating to transportation and food, lodging, salary and wages of witnesses;
(c) investigation fee;
(d) cost for storing evidence.
Attorney's fees must be borne by the complainant.
11. Please describe to what extent the amount of damages has been estimated by courts since
1 January 1996.  Please also explain whether the amount of damages was adequate compensation for
the injury the right holder had suffered, and how such civil procedures were consistent with Article 45
of the TRIPS Agreement.
There is no difference in deciding the amount for compensation since 1 January 1996.  The
court has the right to decide to pay the full amount for compensation.  That is consistent with
Article 45 of the TRIPS Agreement.IP/C/W/115
Page 8
12. Please explain the kinds and amounts of penaltie s (imprisonment or fines) in criminal cases.
Please also explain whether these penalties are consistent with Article 61 of the TRIPS Agreement
which requires provisions for a sufficient deterrent, consistently with the level of penalties applied for
crimes of a corresponding gravity.
Article 150 of the Criminal Code stipulates that a fine of 50 000 – 150 000 Tugriks4 or a
corrective labour for up to one and a half years shall be imposed for infringement of copyright of
scientific, literary and artistic works, illegal reproduction and publication, distribution, sale, enforcing
for acquiring co-authorship.  It also stipulates that a fine of 60 000 – 250 000 Tugriks or a corrective
labour for up to one and a half years shall be imposed for advanced distribution of copyrighted works,
invention without their consent, for infringement of inventors' rights, enforcing for acquiring co-
authorship.
Article 169 (1) of the Criminal Code stipulates that a fine of 50 000 – 150 000 Tugriks or
imprisonment for up to three years shall be imposed for the forgery of label, address, type, quality of
products, illegal use or delivery of marks, label of product of local or foreign origin.
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4 1 US$ = Tugriks