The registration of trademarks in Sudan started with the enactment of the law of 1931, which is one of the oldest trademark laws in the Arab region.
The said law has been amended in 1969 by the law No. 8 which is the applicable law until now.
Sudan is not yet a member of the GATT Agreement.
Procedures for the registration of a Trade Mark
Once the application is filed, it will be examined as to the formalities, i.e. either presenting the documents required for filing, the payment of the application fees and the payment of a delay fine for presenting the documents.
After the application passes the formal examination, the Trade Mark Office will start the substance examination as to the inherent registrability of the mark and whether it conflicts with any prior rights. The Official decision will then be issued according to the findings of the examination report.
If the mark is accepted, it will be published in the Official Trade Mark Gazette, and after the lapse of the opposition period, the Certificate of registration will be due for issuance.
In case the mark is rejected, an appeal may be filed. The decision of the Trademark Office is administratively final, but can only be appealed before the Administrative Court
What can be registered as a Trade Mark?
Any visible sign used or proposed to be used upon in connection with or in relation to goods for the purpose of distinguishing the goods of a person from those of others. Provided its use is not admissible, a trademark may consist of any distinctive sign, including a word, name, pseudonym, device, brand, arbitrary or fictional designation, heading, label, ticket, signature, letter, numeral, slogan, package, emblem, container or any combination thereof.
“Service Mark” shall mean any visible sign used or proposed to be used to distinguish the services of a person from those of others.
Documents required for filing the application
1. A Power of Attorney signed and stamped by the applicant’s seal, or otherwise duly notarized.
2. A certified extract of the entry of the applicant company in the commercial register, or a certified copy of the certificate of incorporation legalized up to the Sudanese Consulate. If not in English or Arabic, a certified and legalized translation of the extract in either language should be provided, legalized up to the Sudanese Consulate.
3. Sixteen prints of the trademark for each class.
Priority of a Trade Mark
Since Sudan is a member in Paris Convention, claiming a priority is available.
Classification of goods and services
Although Sudan is not a member in NICE Agreement, the international classification of goods and services is followed.
Alcoholic drinks in class 33 cannot be registered.
Search before filing
The availability search is possible and advisable before filing the application.
The search takes a few days to be completed.
Is multi-class application acceptable?
According to Trade Marks law does provide for the possibility of filing a multi-class application.
Oppositions
The Trade Marks Act provides for the possibility of filing an opposition against the registration of a mark upon advertisement of same in the Trade Marks Gazette. The opposition should be filed within 6 months from the issuance of the relevant gazette.
The successful opposition should be based on a prior pplication/registration in Sudan.
Use requirements
Use is not a prerequisite for filing the application nor for renewal.
It is not administratively possible to cancel a registration for non-use as long as the renewal fees are timely paid.
A mark may be challenged on the basis of non-use if its owners have not made a serious use of same for any five consecutive years during the lifetime of the registration. Such application for cancellation should be filed with the competent Court of justice.
There is no time-limit for raising a court action for the cancellation of a mark which has been registered in bad faith.
Legal effect of a Trade Mark registration
Registration of the mark shall confer upon its owner the right to preclude third parties from the following acts: (a) any use of the mark, or of a sign resembling it in such a way as to be likely to mislead the public, for goods in respect of which the mark is registered or for other goods, in connection with which the use of the mark or sign is likely to mislead the public. (b) any other use of the mark, or of a sign or trade name resembling it, without just cause and in conditions likely to be prejudicial to the interest of the registered owner of the mark.
Well-know marks
Since Sudan is a member of Paris Convention, the well known mark receives a special protection.
Assignment recordals
The recordal of a assignment is compulsory in order to be valid against a third party as far as the use requirements are concerned. The use of the mark by a non recorded assignee will not protect the mark from being challenged by a third party on the basis of non use.
The documents required for the recordal of assignment are:
1. A Power of Attorney from the assignee and the assignor, both duly notarized.
2. A deed of assignment legalized up to the Sudanese Consulate (accompanied with its duly legalized English translation, if not in English).
3. The original certificate of registration of the subject trademark for endorsement purposes.
4. A certified extract of the entry of the assignee in the commercial register, or a certificate of incorporation of the assignee, together with its English translation, if not in English, duly legalized up to the Sudanese Consulate.
License recordals
The recordal of a license is compulsory in order to be valid against a third party as far as the use requirements are concerned. The use of the mark by a non recorded licensee will not protect the mark from being challenged by a third party on the basis of non use.
The documents required for the recordal of the License are:
1. A Power of Attorney signed and stamped by the applicant’s seal, or otherwise duly notarized.
2. A certified copy of the license agreement legalized up to the Sudanese Consulate (accompanied with its duly legalized English translation, if not in English). 3. A certified copy of the certificate of incorporation of the licensee legalized up to the Sudanese Consulate (accompanied with its duly legalized English translation, if not in English). 4. Legal Form No.4 to be completed (duly legalized and notarized)
The license agreement should be filed within 6 months from the date of execution.
The use of the recorded licensee shall be deemed to have been made by the registered owners.
Requirements for the renewal of a Trade Mark
The protection period of a mark is 10 years starting from the date of filing the application.
The application for registration may be filed a year before the due date without shortening the period of protection.
Use of the mark is not a requirement for the renewal of the mark, but an interested party may challenge the mark which has not been used within 5 years, by filing a cancellation action to the competent court.
Penalties for Trade Mark Infringement
There are two remedies available in case of infringement:
1. The civil proceedings which are summarized in filing an application before the Court of urgent matters to obtain a court order for the attachment of the infringing products, to be followed by raising a civil action to discuss the merits of the case.
2. Criminal proceedings by way of reporting the infringement to the Police and following up the matter until it is referred to the criminal court .
International Agreements to which Sudan acceded
Sudan is a country member in the following agreements/conventions:
• Paris convention for the protection of industrial property
• Madrid Agreement concerning the International registration of Trade Marks
• Patent Cooperation Treaty
• Berne Convention for the protection of literary and artistic works
• Patent Law Treaty
Source: Abdeldadi Intellectual Property
