Application for the registration of a trade/service mark:

Five prints of the mark

A certified copy of the certificate of incorporation/extract from the commercial register of the owner of the mark with an English/Arabic translation if not in one of these 2 languages – the same have to be legalized up to the Sudanese Consulate. Not required if already filed with the Registrar with a previous application – just a mention of the number of the said application will suffice.

A power of attorney duly signed and stamped by the corporate seal of the applicant company; or otherwise notarized by Notary Public. Legalization up to the Sudanese Consulate is not required.

A certified copy of the original application form or any certified priority document is required when demanding the priority of an earlier registration – no legalization required. The priority will be claimed only if the application is filed within 6 months from the date of the application in the country of origin.

The list of goods and services to be covered by the application. The same should not cover all the goods and services contained in that one class – one item must be excluded or 2 applications can be filed for the mark so as to cover all the goods in that class.

Arabic translation of the goods and filing particulars, namely: name and address of the owners.

The nationality declaration, under oath, for the issuance of the registration certificate of the mark should be filed with the Registrar after publication in the Gazette and just before the end of the period of objection – a specimen attached.

The Trademarks Registrar issued on 8 July 2012 internal circular to the staff of the Trademark Office to receive applications only when the notarized Power of Attorney and the legalized Certificate of Incorporation are submitted along with the application.

Time frame from filing a trade mark application up to registration, on average, in the case that no office action or oppositions are issued or lodged:

Filing up to Examination : 4 months

Examination up to Publication : 4 months

Opposition Period : 8 months from the publication date

End of Opposition Period up to Issuance of Registration Certificate : 2-4 months

Total Estimated Time Frame : 18-20 months

Search applications:

4 prints of the mark

The class in which the search is to be conducted

Renewal of a trademark / service mark registrations:-

The mark registration number and class of goods.

A power of attorney duly signed and stamped by the corporate seal of the applicant company and notarized by Notary Public. Legalization up to the Sudanese Consulate is not required.

The expiry date of the trademark registration – date of renewal.

The power of attorney should be filed with the renewal application, if not the Registrar may sometimes accept the payment of the renewal fees if we file with the application a copy of the renewal instruction letter, but he may also refuse the same. The renewal certificate will not be issued until the power of attorney is filed with him.

As per Article 19(1) of the Sudanese Trade Marks Act, 1969, which states:-

“The period of duration of the registration of a trademark shall be ten years from the date of registration. At any time within six months before the expiration of such term or any subsequent term of ten years, the registration may be renewed upon the filing of an application therefore in the prescribed form and upon payment of the prescribed fee.” Application for renewal of a trademark registration should be filed within six months before expiry of registration term with a grace period of six months after expiry date for late renewal with penalty. The Registrar has allowed six months from 8 July 2012 for renewal of trademarks that have already expired and not renewed on time, otherwise the registrations will be considered lapsed.

Estimated Time Frame for filing up to Issuance of Renewal Certificate: 4-8 months

Recordation of a change of name and address:

A power of attorney in the new name and/or address duly signed and stamped by the corporate seal of the applicant’s official seal and duly notarized up to a Notary Public.

A certified copy of the change of name and or address certificate in the home country duly legalized up to the Sudanese Consulate. If not in Arabic or English, a sworn translation in either language of the document should be provided duly legalized up to the Sudanese Consulate.

All the above documents have to be filed together with the application for the recordation of the change of name/address.

Estimated Time Frame for filing up to Issuance of Renewal Certificate: 4-8 months

Recordation of an assignment:-

A deed of assignment and its English/Arabic translation (if applicable) to be recorded within 6 months from its date of conclusion. The same have to be duly legalized up to the Sudanese Consulate.

Forms Nos. TM 11 and TM 12 duly completed and signed by both the assignor and assignee – to be notarized. Specimens are attached.

2 valid powers of attorney from both the assignor and the assignee simply signed and stamped by the corporate seal of the both of them – no legalization required.

The above documents have to be filed together with the application for the recordal of the assignment.

A legalized copy of the certificate of incorporation/extract from the commercial register of the assignee and its English/Arabic translation (if any) – if it has already been filed with the Registrar then it can be dispensed with – just a reference of the trademark number with which it was filed will suffice – can be filed at a later stage.

Estimated Time Frame for filing up to Issuance of Renewal Certificate: 4-8 months

Recordation of merger:

A deed of merger and its English/Arabic translation (if any) duly legalized up to the Sudanese Consulate. The same has to be recorded within 6 months from its date of conclusion.

A valid power of attorney simply signed and stamped by the corporate seal of the merging company and duly notarized up to a Notary Public – no legalization required.

The above documents should be filed together with the application for the recordation of the merger.

Estimated Time Frame for filing up to Issuance of Renewal Certificate: 4-8 months

Recordation of a licence:

A certified copy of the licence agreement and its English/Arabic (if any) duly legalized up to the Sudanese Consulate. Registered user must be recorded within 6 months from the date of the licence contract.

A legalized (up to the Sudanese Consulate) copy of the certificate of incorporation/ extract from the commercial register of the licensee and its English/Arabic translation (if any) – if it has already been filed with the Registrar then it can be dispensed with – just a reference of the mark with which it was filed and its application/registration number will suffice.

2 valid powers of attorney from both the licensor and the licensee simply signed and stamped by the corporate seal of both of them and duly notarized up to a Notary Public – no legalization required.

10 prints of the mark.

Estimated Time Frame for filing up to Issuance of Renewal Certificate: 4-8 months

Important remarks:

Please be advised as follows:-

The registration certificate of the mark will be issued after elapse of the period of objection of 8 months from the date of the publication in the Gazette. After expiry of opposition term (maximum 8 months), the applicant must complete registration procedure and issuance of registration certificate within 2 months, otherwise the application will be considered abandoned.

The validity date of the power of attorney accepted by the Registrar should not be more than 5 years old.

The time frame for the complete normal course of procedures for the registration of a trademark / service mark is:

3 weeks, approximately, from date of filing to acceptance – subject to the filing of all the required documents.

1 to 4 months, approximately, from the date of payment of the publication fees to the actual publication in the Gazette. This depends on the date of printing the new Gazette edition – a Gazette is issued every 4 months.

8 months period of objection from the date of publication in the Gazette.

The registration certificate will be issued after payment of the issuance fees and after its revision and signature by the Registrar – normally from 1 to 3 weeks.

The Registrar may sometimes ask for a certified copy of the corresponding home (country of origin) registration certificate of the trademark.

Additional Time Frames:

Time frame required for preparing and filing an opposition or counterstatement with the Trademarks Office and follow up its proceedings till final settlement:

6-12 months

Time frame required for preparing and filing a lawsuit of any type such as infringement or cancellation action and follow up its proceedings till final settlement:.

1-2 years

Time frame required for filing an appeal with the trademarks registrar or court as applicable regarding an opposition action, counterstatement or rejection:

6-12 months (with the Trademark Register) 1-2 years (with the Court)

Filing Requirements
Power of attorney, legalized.
1 set of the specifications in English with Arabic translation of the Abstract.
1 set of formal drawings.
Certificate of incorporation, legalized, with English translation.
Copy of priority document, if priority is claimed, certified.
Items 2 and 3 must be submitted at the time of filing. Documents 1 and 4 may be submitted as soon as possible after filing date. Document 5 may be submitted within 3 months from filing date.

Filing with PCT

Filing Requirements
Power of Attorney, simply signed.
3 copies of the specifications in English with Arabic translation of the Abstract.
3 sets of formal drawings.
Certificate of Incorporation, legalized, with English translation.
Copy of PCT Request.
Copy of International Publication.
Copy of International Search Report.
Copy of International Preliminary Examination Report (if available).

Items 2, 3, 5, 6, 7, and 8 must be submitted at the time of filing. Documents 1 and 4 may be submitted as soon as possible after filing date.

A maintenance fee is due annually on the anniversary of the filing date and is payable before the granting of the patent. There is a 6-month grace period for late payment with a surcharge.

Filing Requirements
Power of attorney, legalized.
Drawings of the industrial design.
Copy of the specifications in English with Arabic translation of the Abstract.
Certificate of incorporation, legalized.
Copy of priority document, if priority is claimed, certified.

Documents 1-4 must be submitted at the time of filing. Document 5 may be submitted within 3 months from filing date.

The Industrial Designs Office examines the application in terms of novelty and makes sure that the filing requirements are fulfilled.

Protection of industrial designs shall be valid for 5 years from the date of the application, and may be renewed for two successive 5-year periods. Renewal fees should be paid within 12 months, with a grace period of 6 months allowed to pay the fees after the lapse of the legal period provided that a late renewal fee should be paid.

FILING REQUIREMENTS

1. Power of Attorney, simply signed.

2. Certified copy of corresponding home or foreign registration, legalized.

3. 2 copies of the work of art.

REGISTRATION

Both nationals and foreigners are also allowed to register for copy rights