Three sections of Part XI of the Trade Marks Act (Chapter 385) deal with counterfeit goods that cross the border, and with what happens to the goods once an offence is proved.
Section 77 — importing goods with false marks
A person who knowingly imports into the country goods to which a forgery of a registered trade mark is applied, or to which a registered trade mark is falsely applied, is guilty of an offence. Penalty: a fine not exceeding K500.00.
Section 77 differs from sections 75 and 76 in its mental element. Those sections give the defendant a defence of acting without intent to defraud, which he must prove. Section 77 instead requires the prosecution to establish that the importation was knowing.
What that means for an importer is that due diligence is the answer: buy from identifiable suppliers, keep the invoices and correspondence, obtain written authority where branded goods are involved, and inspect the goods on arrival. An importer who ignores obvious warning signs — a price far below the market, no documentation, a brand from an unauthorised source — will have difficulty resisting an inference of knowledge.
The terms used are defined for the whole Part. Under section 80(1), a mark is forged where it, or a mark substantially identical with it, is made without the assent of the registered proprietor or a registered user, or where a registered mark is falsified by alteration, addition, effacement or otherwise. Under section 81(4), a mark is falsely applied where it, or a substantially identical mark, is applied to goods without that assent. Section 81(3) sets out the wide range of ways a mark is applied — including on a covering, label, reel or thing with which the goods are sold, and in a catalogue, invoice or price list where goods are then delivered on an order made by reference to it.
Section 78 — forfeiture of the goods
A person convicted of an offence against section 75, 76 or 77 is liable, in addition to the punishment provided by those sections, to forfeit to the State all goods by means of which, or in relation to which, the offence was committed.
The fines are modest — K2,000.00 under section 75, K500.00 under sections 76, 77 and 79. Against a determined counterfeiter they are a cost of doing business. Forfeiture is different: it takes the stock, and under section 75 the dies, blocks, machines and instruments as well, since those are goods by means of which the offence was committed.
Compare the civil remedies under section 56 — an injunction and damages or an account. An injunction binds the defendant; forfeiture removes the goods.
Note that forfeiture follows conviction. It is not a standalone seizure power exercisable in advance of a prosecution, and the Act contains no notice-to-customs machinery of the kind found in some other jurisdictions. Border enforcement therefore proceeds through the general customs and prosecution framework — principally the Customs Act — with the trade mark offence supplying the underlying illegality.
Section 79 — aiding and abetting offences committed abroad
A person who aids, abets, counsels or procures, or is in any way, directly or indirectly, knowingly concerned in or party to the commission of an act outside Papua New Guinea which, if it were committed in Papua New Guinea, would be an offence against this Act, is guilty of an offence. Penalty: a fine not exceeding K500.00.
(2) Subsection (1) does not affect the operation of the Criminal Code.
This is the Act’s reach beyond the border. It does not make the foreign act itself an offence here; it makes it an offence to be knowingly concerned in or party to it. The target is the person in Papua New Guinea who commissions the counterfeiting — who sends the artwork abroad, places the order, arranges the packaging, or finances the production.
Section 79(2) preserves the Criminal Code Act (Chapter 262), whose fraud and false pretence provisions carry considerably heavier penalties, and whose parties provisions apply in their own terms.
Putting the routes together
| Route | What it achieves | Limits |
|---|---|---|
| Civil infringement (ss 53, 56) | Injunction; damages or an account of profits; reaches deceptively similar marks | Worth little against a defendant with no assets; you fund it |
| Part XI prosecution (ss 75–79) | Fine or imprisonment; forfeiture of the goods and the tools | Confined to forged or falsely applied marks, and to marks or marks substantially identical; not brought by you |
| Passing off | Reaches get-up, name and goods outside the specification | Requires reputation, misrepresentation and damage |
| Copyright under the Copyright and Neighbouring Rights Act 2000 | Protects the artwork of a copied label or logo, without registration | Protects the work, not the brand as such |
Practical steps for a brand owner
- Keep the registration current. Part XI applies to a registered trade mark. A mark removed for non-renewal loses this protection entirely.
- Hold a certified extract under section 9 — admissible without further proof under section 10(2) — ready to hand to investigators.
- Buy samples and document the chain: receipts, dates, places, photographs, and where possible the container and shipping marks.
- Identify the importer, not just the retailer. Section 77 is aimed at the importer, and section 79 at whoever commissioned the goods.
- Record your authorised sources. Since the burden of proving assent lies on the defendant under sections 80(2) and 81(5), a clear record of who is authorised strengthens every case.
- Ask for forfeiture under section 78 on any conviction — it is the remedy that clears the market.
- Run the civil claim in parallel where the defendant has assets, and remember that a registered user may sue under section 70(1) if the proprietor does not act within two months.
Sources
- Trade Marks Act (Chapter 385) — ss 9, 10, 53, 56, 70, 75–81
- Customs Act — PacLII 1986 Revised Edition
- Criminal Code Act (Chapter 262)
- Copyright and Neighbouring Rights Act 2000
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.