The Ministry of Justice and Constitutional Affairs recently issued an important update on trade mark matters in South Sudan.
The Ministry has re-started the process to allow trade mark owners to ‘reserve’ their marks. The benefit of reservation appears to be that a third party will not be able to register a similar mark once the new law is in force.
We understand that applications for reservation can be filed immediately, although registration will only be completed when the Bill is enacted (see below). Furthermore, we understand that no documentation to confirm a ‘reservation’ will be issued, although the reserved mark will be entered into the Ministry’s database, and the application for reservation will be stamped with the Ministry’s official stamp.
The Intellectual Property Bill 2015 (the Bill) has still not been passed into law. Until the Bill is passed, it is not possible to renew any trade mark registrations filed since Independence in 2011, many of which have technically fallen due based on a 10 year renewal cycle. Existing trade mark registrations will, however, remain valid until such time as the Bill is enacted, when registrations will be able to be renewed.
Under the previous reservation/registration system, once a mark had been reserved, a further application for registration was required. At this time only reservation is possible.
If a mark was reserved or registered previously, no action is required at this time. However, clients may wish to take this opportunity to review their portfolio for any additional marks which they may wish to reserve.
In order to reserve a mark we will require the following information and documentation:
- Power of Attorney, notarised
- A clear copy of the trade mark if it is in a logo/stylised format
- The name and address of the applicant
- A list of the goods and/or services as per the 10th edition of the International Classification of goods and services
- Certified copy of the certificate of incorporation of the Applicant with a verified English translation (if applicable)
- Certified copy of a valid corresponding Home or Foreign Registration, with verified English translation (if applicable). The applicants name and address and class details indicated in the supporting registration must be identical to the proposed new filing
Prior to the suspension of the previous reservation system in 2017 we did see some challenges at the Registry when they first started to accept reservations and it is possible we will see some changes to the above as the system settles down.
We are monitoring the situation closely to see how things develop.
contact us for further information.