Trade Mark Reservations in South Sudan

The Republic of South Sudan, commonly known as South Sudan, gained independence from the Republic of Sudan on 09 July 2011. South Sudan is a relatively new country and is in the process of developing and passing most of its legislations. For example, the country does not have any enacted legislation governing the protection of trade marks, but it has a Trade Marks Bill of 2013 (‘the Bill’) that is before Parliament waiting to be passed into law. This Bill, once enacted, will, amongst others, govern the whole process of filing, prosecuting and registering a trade mark.

In 2014, the Ministry of Justice in South Sudan started accepting trade mark applications under the Sudanese Trade Mark Law No.8 of 1969 (“the Sudanese Act”), but this has since been stopped by the Deputy Registrar of the Ministry, and at the moment, trade marks are not registrable in South Sudan. All trade marks that were obtained prior to the country gaining its independence are invalid in South Sudan, and trade mark applications or registrations that were filed or obtained in South Sudan under the Sudanese Act have been suspended pending the passing of the Bill into law. However, it is possible to reserve a trade mark in South Sudan as the Ministry of Justice is now accepting applications for the reservation of trade marks. The Ministry does not prescribe formalities for filing a reservation application, so it is not clear, at least for now, what documentary requirements must be fulfilled or how much filing fees, if any, must be paid when filing a reservation application. We are keeping our eyes open for any new developments in this regard.

The effect of a reservation registration is that it will debar third parties from filing and registering a similar or identical mark to the reserved mark when South Sudan reopens its trade mark applications again. The expectation is that trade marks will become registrable in South Sudan when the Bill is passed into law, unless the Ministry of Justice issues directives accepting application before the Bill is enacted. Since the Bill has been before parliament for quite some time, it is difficult to predict when exactly it will be passed into law. It is important to note that a reserved mark will have to be refiled once the Bill becomes law, and that the filing date of the reserved application will not be treated as the priority date for the new application.

Although the procedure to reserve a mark is not clear, we believe this to be a good step in the right direction as it provides some protection to proprietors who wish to protect their marks in South Sudan as soon as the Bill is enacted.

If you have any questions, please feel free to contact us.