Pending the enactment of “the Bill”, the Ministry of Justice in South Sudan commenced accepting trade mark applications in 2014, operating under the Sudanese Trade Mark Law No. 8 of 1969 ("the Sudanese Act"). This practice was subsequently suspended by the Deputy Registrar of the Ministry until 2023, when the Ministry permitted MTN Group (mobile telecommunication company) to reserve a trade mark. Currently, the Ministry of Justice is accepting applications for trade mark reservations in South Sudan. Given the absence of enacted legislation, the Ministry has not established formal requirements for reservation applications. However, the Ministry retains the discretion to permit brand owners, on a case-by-case basis, to submit applications for trade mark reservation.
The reservation of a trade mark results in the recordation of the mark's details in the registry database. Upon the enactment of the Bill, this reservation will preclude third parties from filing and registering similar or identical trade marks. Reserved marks will become eligible for registration in South Sudan once the Bill is passed into law, unless the Ministry of Justice issues directives accepting trade mark applications prior to the Bill's enactment. It is imperative to note that reserved marks must be formally re-filed once the Bill becomes law, and the filing date of the reservation application will not constitute a priority date for the subsequent trade mark application.
The trade mark reservation process represents a positive step, affording a degree of legal protection to proprietors seeking to safeguard their trade marks in South Sudan pending the enactment of the Bill. Meanwhile, all trade marks obtained prior to South Sudan's founding are considered invalid. Furthermore, all trade mark applications and registrations filed or obtained in South Sudan under the Sudanese Act have been suspended, awaiting the passage of the Bill into law.
This article was first published on the JAH website