Trade and Service Marks
– Trade Marks Act 1969, effective September 9, 1969.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since February 2, 1974.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 16, 1984.
– Madrid Agreement Concerning the International Registration of Marks, since April 16, 1984.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since February 16, 2010.
Filing and Protection
Applicant: the first user.
Examination: an official search is made by the Examiner as to whether the trademark has already been registered. Note: documents/changes requested by the Examiner must be provided within one month otherwise the application will be considered abandoned.
Beginning of protection: from the date of application.
Opposition: any person may oppose an application within eight months of publication of the acceptance notice in the Gazette.
Registration certificate: a notarized declaration by the applicant must be filed within two months after expiration of the opposition period.
Duration: ten years.
Renewal of a trademark: always renewable for periods of ten years. Applications for renewal should be filed within six months before expiry.
Renewal grace period: six months with penalty.
Assignment: together with or without the goodwill of the business.
License: recordal is not compulsory, but advisable in order to be effective against third parties.
Use of a trademark: not compulsory, however,any third party may ask the court for cancellation of a mark for non-use on the following grounds: if the mark has, without legitimate reason, not been used in the Republic of Sudan after registration, during five consecutive years preceding the allegation of non-use. The burden of proof regarding the allegation of non-use of the mark or the use of it shall be decided by the court according to the circumstances of the case.
Classification: the International Classification of Goods and Services (9th Edition). Alcoholic goods in classes 32 and 33 are not registrable.
Multi-class applications: not possible.
Filing requirements for an application (to be sent to resident agent):
1. Full particulars of applicant;
2. Legalized power of attorney;
3. 15 prints of the mark;
4. Certificate of Incorporation for companies (if necessary, with a legalized translation into English), legalized up to a Sudanese Consulate.
Electronic filing: not available.
Electronic signatures: are not accepted (only wet signatures). Scanned copies of documents are accepted, however, the original must be sent within ninety days from the application date.
In case of assignment:
1. A valid copy of the Certificate of Incorporation for the assignees or an extract of same from an Official Commercial Register (with a legalized translation into English for documents in other languages), legalized up to a Sudanese Consulate;
2. Forms TM11 and TM12 (available on request from local agents) for each trademark, to be jointly signed by the assignees and the assignors. Forms TM12 to be notarized;
3. A notarized deed of assignment, legalized up to a Sudanese Consulate; the deed is only valid for six months from date of execution;
4. Legalized power of attorney, to be signed by the assignees, and must be authenticated by a Sudanese Consulate.