Most oppositions are decided by the Registrar under section 40(6). Sections 41 to 43 of the Trade Marks Act (Chapter 385) provide the alternatives.
Section 41(1) — referral to the Court
At any time after notice of opposition has been given to him, the Registrar may, and on the application of both the opponent and the applicant shall, refer the matter to the Court for determination.
Two distinct routes are packed into one sentence. The Registrar has his own discretion to refer; and where both parties apply, referral is mandatory. Neither party can force a referral alone.
The Registrar’s tribunal powers under section 5(1) are real but limited — summoning witnesses, evidence on oath, production of documents, costs. The National Court brings full civil procedure: discovery, subpoenas, interlocutory relief and a trial with cross-examination.
Referral is therefore worth seeking where the opposition turns on disputed questions of fact — who first used the mark, whether adoption was honest, whether there has been actual confusion — or where proprietorship is genuinely in issue, which is the very question section 25 sends to the Court. It is also efficient where the same parties are already litigating infringement or passing off over the same mark.
Sections 41(2) to (4) — what the Court may do
(a) that the mark may be registered without conditions or limitations; or
(b) that it may be registered subject to such conditions or limitations as it thinks fit; or
(c) that registration be refused.
These mirror the Registrar’s options under section 40(6). Section 41(2) also gives the Court the same latitude as section 40(7) gives the Registrar: in determining the opposition the Court may take into account a ground of objection whether relied on by the opponent or not.
Under section 41(4), an office copy of the order is served on the Registrar, who shall take such steps as are necessary to give effect to it. The same mechanism appears in sections 13(6), 14(5) and 67(4). Section 102 adds that where an order is made on appeal from such an order, the person in whose favour it is made is not entitled to enforce it until an office copy has been served on the Registrar.
Section 42 — security for costs
If a person giving notice of opposition does not reside in or carry on business in the country, the Court may order him to give security for costs within a specified time — and if the order is not complied with, the opposition shall lapse.
The consequence is automatic. There is no discretion to excuse non-compliance and no separate dismissal application: the opposition simply lapses, and the application proceeds under section 44.
| Provision | Applies to | Trigger | Consequence of default |
|---|---|---|---|
| s 42 | An opponent | Does not reside in or carry on business in the country | The opposition lapses |
| s 101 | A person who appeals to the Court under the Act | Does not reside or carry on business in Papua New Guinea | The appeal may be dismissed |
Overseas proprietors are among the most frequent opponents, and section 42 is aimed squarely at them. Two answers are available. The first is to be able to show that you carry on business in the country — through a branch, a subsidiary, or a registered user arrangement. The second is simply to be ready to provide the security promptly when ordered, because the time specified is not elastic.
Related requirements point the same way: section 97 requires an address for service in Papua New Guinea, and section 97(4) deems the address stated in a notice of opposition to be the opponent’s address for all documents in the opposition.
Section 43 — withdrawing the opposition
Opposition to the registration of a trade mark may be withdrawn by the opponent at any time before the opposition is determined by the Registrar or by the Court.
This is the vehicle for settlement, and most oppositions end this way. Common settlement terms include:
- the applicant narrows the specification of goods to exclude the opponent’s field;
- the applicant accepts a limitation as to mode of use, colour, or area within the country, or a disclaimer of a common element;
- the parties agree a coexistence arrangement, which the Registrar may give effect to through conditions under section 26(1);
- the opponent grants a consent, and the applicant grants a reciprocal consent for the opponent’s marks; or
- the applicant becomes a registered user of the opponent’s mark instead, under Part IX.
Under section 44(1) the mark is registered where notice of opposition has been withdrawn — but registration remains subject to section 33(6), under which acceptance may be withdrawn if the application was accepted in error or, in the special circumstances of the case, the mark should not be registered or should carry different conditions.
So a private settlement cannot register an unregistrable mark. Where the agreed outcome requires conditions or limitations on the registration, they must be put to the Registrar, not merely recorded between the parties.
Costs of an opposition
- The Registrar may award costs against a party under section 5(1)(d); in default of payment they are recoverable as a debt under section 88.
- On a referral or appeal, the Court may order a party to pay another party’s costs (s 82(f)).
- Under section 95, in all court proceedings under the Act the Registrar’s costs are in the discretion of the court, but the Registrar shall not be ordered to pay another party’s costs.
- Under section 89, where the validity of a registration is unsuccessfully disputed the Court may certify that validity came in question — entitling the proprietor, in a later dispute about validity, to full costs as between solicitor and client.
Sources
- Trade Marks Act (Chapter 385) — ss 5, 13, 14, 25, 26, 33, 40–44, 67, 82, 88, 89, 95, 97, 101, 102
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.