What are the substantive grounds for trademark opposition?
Opposition proceedings provide an opportunity for interested parties to oppose the registration of a mark or the opportunity for its cancellation after registration. In the event the trademark office reaches a conclusion that the trademark can be registered it will publish the trade mark in the Official Gazette of the Office with an indication of the time limit within which an opposition may be filed. Accordingly, an opposition can be launched, in the event an application is advertised as accepted, by any interested person whether resident in the Sudan or outside the Sudan within six months or eight months respectively from the date of such advertisement. An opposition must contend at least one of the following substantive grounds of objections:
- That the trade mark is not entitled to registration under the provisions of the Trade Marks Act. This may include that the applicant is not the first user in the Sudan and the opponent may be able to rely upon the priority which is conferred by Article 4 of the Paris Convention that the period of priority which binds the other countries of the Union is for a period of six months.
- That the mark has been obtained by fraud.
- That at the date of application there was no bona fide intention to use the mark or that the applicant has effectively abandoned his mark.
- The opposition shall be supported by evidence normally in the form of affidavit; however the Registrar may as he deems fit request oral evidence in addition to the affidavit. The Registrar shall send a copy of the notice of opposition to the applicant, and the applicant is bound within the prescribed time to submit a counter-statement of the grounds on which he relies for his registration. In case the applicant fails to respond, his application shall be deemed to have been abandoned. However, in the event a counter-statement has been furnished by the applicant, the Registrar shall send a copy to the person having given notice of opposition. The decision of the Registrar either at ex parte or inter parte shall be subject to appeal to the Commercial Court. The Registrar decision may include permission of registration subject to amendments, modifications or limitations (if any). In the event of rival claims as regards identical marks, the registrar may refer the issue to the commercial court. In determining the rights of the parties; the court shall have regard to the date of registration in the country of origin and the priority of user of the mark in the Sudan. After final decision of the court granting registration, the Registrar shall subject to any conditions proceed to register the mark and shall issue a certificate of registration. The mark when registered shall be registered as on the date of application and such date shall be deemed to be the date of registration.