LAWS
The
Transitional Constitution of the Republic of South Sudan, 2011 (Amendment) Act,
2013 (2013)
Transitional
Constitution of the Republic of South Sudan, 2011 (2011)
IP
LAWS
Registration
of Business Names Act, 2008 (2008)
Literary and Artistic
Works Act of 2001 (2001)
The Copyright
and Neighbouring Rights Protection Act 1996 (1996)
Seeds Act of
1990 (1990)
Industrial
Designs Law No. 18 of 1974 (1974)
Patent Law No.
58 of 1971 (1971)
Trademark Law
No.8 of 1969 (1969)
Due
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 filing Procedure:
The trademark
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:
1. Applicant’s
name and address, class and description of goods, specimen of the mark.
2. A Power
of attorney (notarized).
3. A
copy of the home registration certificate of the mark.
4. A
certified copy of the certificate of incorporation or extract from the
commercial register of the applicant company.
5. 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 in
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.
Time Frame:
The
expected time frame from filing up to registration is from 2 to 3-months from
filing till the issuance of registration certificate.
Examination procedures:
-
Examination is performed on formal, absolute
and relative grounds and as to existence of prior rights.
Validity:
-
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:
1- 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.
Recordal of Assignment:
-
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
Recordal of Change of Name/Address Requirements:
A
change of name/address may be recorded for trademark applications and
registrations.
- A Power of attorney, notarized and certificate of change of name, legalized.
Recordal of Licensing Requirements:
-
A Power of attorney from the licensor,
notarized;
-
A Power of attorney from the licensee,
notarized;
-
License agreement, legalized;
-
Certificate of incorporation of licensee,
legalized.
Recordal of Merger Requirements:
-
A Power of attorney, notarized;
- Certificate of merger, legalized.
A
merger may be recorded for trademark applications and registrations.