Sudan (SD)
07-17-2012 (Newsletter Issue 11/12)New Trademark CircularThe Registrar of Trademarks in Sudan has issued Trademark Circular No. 1 on 18 June 2012. It was adressed to all IP Agents and Trademarks Owners for the purpose of organization of work and procedures and came into effect on 8 July 2012:
1. Upon submission of the new trademark applications the Trademarks Registrar will request the applicant to complete or correct the application within one month if he finds out that the newly filed application is incomplete or incorrectly filled up; otherwise the application will be considered abandoned.
2. The applicant must pay the registration fees of a trademark and complete registration procedures and issuance of registration certificate within 2 months from the expiry of opposition term (maximum 8 months) in accordance of article no. 18 Law 1; otherwise the application will be considered abandoned.
3. It is a must to comply with the relevant provisions of article no. 19 (1) of the Sudanese Trademarks Law in the effect that 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 a 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.
4. The Power of Attorney stamped by the corporate seal of the company and notarized by Notary Public will be acceptable without legalization up to the Sudanese Consulate. However, the Extract from the Commercial Register and the Certificate of Incorporation are still required to be legalized up to the Sudanese Consulate in compliance with article no. 10 (1) of the Sudanese Trademarks Law of 1969.
According to the old practice adopted at the Sudanese Trademarks Office it was permitted to file trademark applications and obtain filing number and date as well as the official filing certificate without the complete required documents which can be submitted at a later stage after filing within a period of three months; whilst the Registrar now issued 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.
Source: JAH, Doha, Qatar 02-21-2012 (Newsletter Issue 3/12)ISO Code for South SudanThe country code "SS" has been assigned for South Sudan announced by the newsletter of the ISO 3166 Maintenance Agency. To access the notice, please click here
Source: www.iso.org 01-23-2012 (Newsletter Issue 1/12)
TM Registration in Southern Sudan
The Ministry of Justice in Southern Sudan has issued directives to officials at the Trademark Office that they adopt certain procedures known as “Reservation of a Trademark” until issuance of a trademark law. The said procedures could be summarized as follows:
1) A written application is submitted to the Registrar indicating the trademark sought to be protected, as well as prints of the mark in question.
2) The Registrar will conduct search in the data base of the Registry to ascertain whether the mark is registered or not.
3) If the mark is not registered, it will be “reserved” in applicant’s name, and no other person will be allowed to use the said mark.
Please note that no official fees have been fixed yet for such procedure.
Source: SMAS Intellectual Property, Sudan
11-08-2011 (Newsletter Issue 13/11)
Simply Signed PoA Now Accepted
The Sudanese Registrar has announced that with effect from the beginning of October 2011, a simply signed Power of Attorney is accepted instead of a legalized Power of Attorney for filing trademarks, designs, patents and renewals applications.
The deadline for filing the original documents is three months from the application date.
A legalized copy of the commercial register is, however, still required for new applications.
Source: NJQ & Associates
09-01-2011 (Newsletter Issue 10/11)
IP Protection in South Sudan
The new state South of Sudan which was extracted from the main land of the Republic of Sudan has been announced on July 9th, 2011,
Since there are no IP Laws in the new state, the Sudanese Laws will be applicable until the issuance of their own law. Any registrations at the Sudan office will be valid at the new state and enforceable as well till further notice.
Source: NJQ & Associates
Legal basis is the Trademark Act of 1969, in force since September 9th, 1969.
Sudan is a member of the Madrid Agreement, the Madrid Protocol and the ARIPO.
Trademark protection is obtained by registration.
Nice classification, 8th edition
Exception: Class 33 and alcoholic goods in class 32
Registrable as trademarks are words, devices and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed at the Intellectual Property Office (Trademark Department).
A separate application has to be filed for each class.
Foreign applicants need a local agent.
A simply signed Power of Attorney is accepted for filing trademarks, designs and renewals applications.
The deadline for filing the original documents is three months from the application date.
A legalized copy of the commercial register is still required for new applications.
Foreign applicants do not need a domestic registration.
Note: The Registrar in Sudan sometimes asks for a certified copy of the corresponding home registration of the trademark.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The time frame for completing the filing of a trademark is 1 to 3 months subject to fulfilling all the documentation. The whole registration process of a trademark takes 1 to 3 years.
Prior to registration, the trademark application is published in the official gazette.
National:
The opposition period is 6 months from the publication date of the application for interested persons who are resident in Sudan; 8 months from the publication date of the application for interested persons resident outside Sudan.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
6 months for Sudanese residents, 8 months for residents outside Sudan. The period is calculated from publication date in the WIPO Gazette. The periods are non-extendable.
A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months from the expiration date of the trademark.
If the trademark has not been used within 5 years from registration or has later not been used for 5 consecutive years, it may be subject to cancellation.
Filing a mark application up to registration is about USD 196.00 in one class (approx. EUR 140.00), covering filing, publication and final registration in normal course of action.
Trademark Licence Agreement
A licence has to be in writing. It is not permitted to license the use of unregistered marks. A proprietor can register a user in respect of only some of the goods or services covered by the trade-mark. It depends on the terms of the licence agreement, whether the sale of a registered trademark terminates the licence or not. There are no statutory provisions prescribing the terms of licensing.
Recordal
Licences may be approved by the Attorney General according to relevant provisions of Trademarks Law, and be recorded within six months of their execution. There is no prescribed form or content.
The following documents are required for the recordal of a licensee:
1. Powers of attorney from both the licensor and the licensee, duly notarised
2. A licence agreement and a certified copy of the licensee’s certificate of incorporation legalised up to the Sudanese Consulate. If not in English or Arabic, certified and legalised translations in either language should be provided.
3. The Legal Form No. 4, duly notarised and legalised up to the Sudanese Consulate
If the licensee is a Sudanese entity, the following additional documents are required:
1. A simple copy of the certificate of incorporation of the licensee’s company
2. Certificate of clearance to the licensee from the Sudanese Taxation Chamber
3. Certificate of clearance to the licensee from the Sudanese Zakat Chamber
4. Approval letter from the Sudanese Central Bank to the licensee
5. Approval letter from the Sudanese Ministry of Industries to the licensee
Effectiveness
The registration is valid from the date of application for a recordal and its duration shall not in any case exceed that of the mark itself. On failure of a recordal, the licence is deemed null and void. The licence is not required to be published.
Infringement Proceedings
There is no evidentiary presumption that use by a recorded licensee is permitted use. The licensee can join the proprietor in infringement proceedings. A registered user may call upon the trademark owner to institute infringement proceedings. Whether he can institute proceedings in his own name, and whether he must cite the proprietor as co-defendant in such proceedings, depends on the terms of the licence.
Remarks
The Minister may provide that licence agreements that involve the payment of royalties abroad, shall require his approval, taking into account the needs of the country and its economic development.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
340,00 € |
250,00 € |
| Word Mark Search (identical) |
310,00 € |
210,00 € |
| Extended Search (word mark, company name, domain) |
|
|
| Device Mark Search (availability) |
330,00 € |
230,00 € |
| Trademark Owner Search |
190,00 € |
|
| Company Name Search |
|
|
| Domain Name Search (extended) |
|
|
| i-Search (word mark availability + legal opinion) |
340,00 € |
320,00 € |
The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey
10-28-2010
Allied IP Attorneys, Dubai, United Arab Emirates
10-05-2010
Abu Ghazaleh Intellectual Property, Khartoum, Sudan
Dr. Adam & Associates Intellectual Property Group Attorneys At Law, Khartoum, Sudan
Licensing
12-15-2011
Abu Ghazaleh Intellectual Property, Khartoum, Sudan