TRADEMARKS FILING AND PROSECUTION Sudan
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Sudan IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Sudan IP Office. In Sudan, trademark protection is granted according to the provisions of Trade Marks Act, 1969 (Act No. 8 of 1969), Sudan.
Trademark in Sudan may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Registrar General of Intellectual Property Administration |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | YES |
| Multi class system | NO |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services, Simply signed Power of Attorney and Certified copy of the certificate of incorporation or an extract from the commercial register with Arabic or English translation, legalised by the Sudanese Consulate. If the applicant is a person, then a photocopy of the passport is required. |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 10 years from the date of application. |
| Renewal term | 10 years |
Trademark searches in Sudan
Under the “First to File” principle, if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Sudan can be conducted for word mark, numbers, images, etc. It is advisable to conduct comprehensive trademark clearance search in Sudan to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Sudan.
Filing trademark applications in Sudan
A person may file single class trademark application in Sudan.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Sudan
Ordinary trademark applications filed in Sudan are applications without claiming any priority.. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Sudan /Convention trademark applications Sudan:
A priority trademark application may be filed in Sudan. A priority trademark application should be filed in Sudan within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Sudan within six months after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Sudan follows the nice classification of classes. Intellectual property office of Sudan uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defined list of terms and cover all the goods and services.
Trademark Examination in Sudan
Once the application for the registration is submitted it goes through the examination process which consists of examination on the basis of Absolute and relative grounds (conflicts with an earlier, pre-existing right) of refusal.
- The following cannot be validly registered as trade marks:
- Marks which consist of shape or forms impose by the inherent nature of the goods or by their industrial function.
- Marks which consist exclusively of a sign or indication which may serve, in the course of trade to designate any particularity, such as quality, quantity, purpose, value and place of origin.
- Marks, which have become, in the current language or in the bona fide and established practices of the trade of the country, a customary designation of the goods concerned.
- Marks which are contrary to morality or public order and which, in particular, are calculated to deceive or confuse trade circles or the public as to the nature, the source, the manufacturing process, the characteristics or the suitability for their purpose, of the goods concern.
- Marks which reproduce or imitate armorial bearings, flags and other emblems, initials, names or abbreviations of names of any state or of any intergovernmental international organization or any organization created by an international convention, unless authorized by the competent authority of that state or international organization.
- Marks which reproduce or imitate official signs or Hall marks adopted by a State, unless authorized by the competent authority of that State.
- Marks identical with or similar to emblems of exclusively religious, sectarian or tribal organization.
- Marks which resemble or depict the portrait of a religious or tribal leader or of any sectarian significance.
- Except with the consent of the interested third party the following marks are not registerable:
- Marks which resemble, in such a way as to be likely to mislead the public, a mark already validly filed or registered by a person validly claiming priority, in respect of the same goods, or of other goods in connection with which use of such marks might be likely to mislead public.
- Marks which constitute a reproduction, in whole or in part, an imitation, a translation, or a transcription, likely to mislead the public, a mark which is well known in the country and belongs to a third party.
- Marks which infringe other third party rights or are contrary to the rules for the prevention of unfair competition.
Trademark Opposition in Sudan
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
Trademark registration in Sudan
The mark will be registered for a period of 10 years from date of application, and the registration certificate is issued.
Trademark Renewal in Sudan
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.