Pursuant to the separation of South Sudan from Sudan in 2011, the Ministry of Justice is now admitting trademark applications under the provisions of the trademarks act of 1969 that is currently in force in the neighboring Sudan. There is a draft Trade Marks Bill in existence which is currently before Parliament, and until this is passed, the provisions of the old Sudanese Trade Marks Act are being followed, and it is now possible to file applications with the Ministry of Justice.

However, kindly note that any trademarks filed now will be enforceable when the new law comes into force in which the original filing date will be preserved.

Trademark registration: Procedure

The application process includes a reservation application whereby the examiner will check for prior trademarks. If approved, the mark will proceed to registration. No provision for the opposition is applicable. The relative registration certificate will be issued for the mark containing the following particulars:

Registration Number

Description of the mark

Applicant’s name

Registration date

If the mark is approved, the authorized applicant or his agent shall pay the registration fees at Buffolo Bank, South Sudan, Juba and return the document to the Ministry to Issue a Certificate of registration. If the mark is rejected for registration by the deputy chief registrar the applicant has the right to appeal and wait for the final decision which will be either a final approval or rejection. According to the current practice of the Trademarks Registrar no deadline is set out for appealing the rejection decision; however, it should be filed in short period of time to show that the applicant is serious in obtaining protection of the mark.

As per the practice of Trademarks Section registration certificates do not reveal the class/es in respect of which the mark is registered; therefore the certificate will only reflect the mark text and the applicant particulars. However, records of the trademarks section contain each mark registered in a separate file containing the mark details along with the class/es applied for.

Filing requirement:

Applicant’s name and address, class and description of goods, logo of the mark.

A power of attorney (notarised). Attached is a suitable form.

A copy of the home registration certificate of the mark.

A certified copy of the certificate of incorporation or extract from the commercial register of the applicant company.

A letter addressed to the Ministry of Justice requesting reservation and registration of the trademark, signed and sealed by the applicant company or his agent which is normally prepared by the agent of the applicant company n the special format set out for this purpose.

It is worth noting that if the applicant is the manufacturer of the products, they should confirm their ownership in the said letter. Whereas, if the applicant is not the manufacturer of the products, then an additional letter of authorization is required from the manufacturers to the applicant as sole agent.

Document no. 3 is currently accepted as a simple copy without certification as the Trademarks Registrar is not strict in applying the certification condition as stipulated by South Sudan Law.

In South Sudan, an application can be filed with multi-class of goods or services; however, a separate sum of official fees is to be paid for each class.

It takes two to three months time from filing till the issuance of registration certificate.

The validity of trademark registration is stated to be for ten years from the date of issuance of registration certificate. Thereafter, a trademark registration is renewable for further consecutive periods of ten years each.

Classification:
The International Classification of Goods and Services (9th Edition) is followed – in accordance with the trademark act of 1969.

Examination:
Examination is performed on formal, absolute and relative grounds and as to existence of prior rights.

Opposition:
No provision of opposition is applicable at the time of publication.

Extension of Time:
Extension of time is not possible.

Protection Term:
Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 6 months for late renewals with payment of a surcharge.

Documents required for renewal: Power of attorney, notarized.

Use Requirements:
Use of a trademark is not required for registration or renewal of a mark. However, a trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 5 consecutive years after registration date.

Search:
An official search can be conducted for word marks and devices. A separate application is required for search in each class. The search report discloses similar and identical trademark registrations as well as applications.

Assignment requirements:
Deed of assignment, legalized by the Sudanese Consulate
Legal forms Nos. T. M. 11 and T. M. 12, legalized by the Sudanese Consulate

Certified extract from the Commercial Register OR certificate of incorporation of the assignee (with certified Arabic or English translation), legalized by the Sudanese Consulate

Power of attorney on behalf of the assignor, notarized
Power of attorney on behalf of the assignee, notarized

Change of Name/Address:
A change of name/address may be recorded for trademark applications and registrations.

Documents required: Power of attorney, notarized and certificate of change of name, legalized.

Licensing:
License recordal is not compulsory but advisable in order to be effective against third parties.
Documents required: Power of attorney from the licensor, notarized; power of attorney from the licensee, notarized; license agreement, legalized; and certificate of incorporation of licensee, legalized.

Merger:
A merger may be recorded for trademark applications and registrations.

Documents required: Power of attorney, notarized; certificate of merger, legalized.

Marking:
Marking is not compulsory.

Three Dimensional Trademark Applications

Inadmissible.