Registration is voluntary. Nothing in the Trade Marks Act (Chapter 385) compels a trader to register a mark, and an unregistered mark is not without protection. But the two positions are very different in practice.
What registration gives you
Registration of a trade mark in Part A or Part B of the Register, if valid, gives the registered proprietor the right to the exclusive use of the trade mark in relation to the goods in respect of which it is registered, and to obtain relief in respect of infringement in the manner provided by the Act.
Four consequences follow, and they are what registration is for.
- A statutory monopoly. The right is to exclusive use for the registered goods — not merely a right to stop confusion.
- An easier cause of action. Under section 53, infringement is made out by use of a substantially identical or deceptively similar mark in the course of trade in relation to the registered goods. You do not have to prove that you have a reputation, or that anyone was actually deceived.
- Documentary proof. Under section 10 a certified extract is admissible without further proof; under section 50 the original registration is deemed valid unless the contrary is shown; under section 52 a Part A registration becomes conclusively valid after 10 years, subject only to fraud, section 19, and loss of distinctiveness.
- An asset you can deal with. A registered mark can be assigned under section 73, and licensed through the registered user system in Part IX. It can be valued, secured against, and sold.
What you have without registration
An unregistered mark is protected by the common law action of passing off, which applies in Papua New Guinea as part of the underlying law. The plaintiff must establish three things:
Reputation or goodwill attaching to the mark, get-up or name in the minds of the purchasing public; a misrepresentation by the defendant leading or likely to lead the public to believe the goods or services are the plaintiff’s; and damage, or the likelihood of damage, resulting from it.
Reputation normally requires evidence of sales volumes, advertising spend, market presence and duration of use — often trade evidence as well. Misrepresentation requires evidence about how the market actually reacts. Damage requires financial evidence.
All of that is expensive, slow and uncertain. A registration replaces almost all of it with a certified extract.
Registered and unregistered compared
| Registered mark | Unregistered mark | |
|---|---|---|
| Source of the right | Section 49 of the Act | Common law, as underlying law |
| Must prove reputation? | No | Yes — and it is the hardest element |
| Test | Substantially identical or deceptively similar, in relation to the registered goods | Misrepresentation likely to deceive, causing damage |
| Geographic scope | All of Papua New Guinea, subject to any registered limitations | Only where the reputation is actually established |
| Proof of title | Certified extract, admissible without further proof (s 10) | Evidence of use, built case by case |
| Presumption of validity | Yes (ss 50–52) | None |
| Remedies | Injunction, and at the plaintiff’s option damages or an account of profits (s 56) | Injunction, damages or account, at general law |
| Licensing | Registered user system, Part IX | Contract only |
| Assignment | Section 73, registrable under section 74 | In practice, only with the goodwill of the business |
| Criminal protection | Part XI offences apply | Not directly |
| Deters copying | Publicly searchable, so competitors find it | Invisible until you sue |
| Cost | Prescribed fees, renewable every 10 years | Nothing up front; a great deal at trial |
The real risk of leaving it
Under section 32, a person who claims to be the proprietor may apply. Under section 45, the date of registration is the date the application was lodged. If a competitor files first, you are then arguing about proprietorship rather than simply relying on a registration.
Two provisions soften this, but neither is a substitute for filing:
- Section 26(2) — where a person has, by himself or his predecessors in business, continuously used a mark before the use or the registration of another registered mark, whichever is earlier, the Registrar shall not refuse to register the first mark by reason of that other registration. That protects a genuine prior user — if the use can be proved from a date early enough.
- Section 55(1)(c) — continuous use from before the registered proprietor’s use or registration, whichever is earlier, is not an infringement. Again, a defence resting entirely on your records.
Both depend on documentary proof of use going back years. Dated invoices, advertisements, packaging and photographs are the evidence that matters — and they must be kept from the beginning, because they cannot be created later.
You can rely on both at once
Registration and passing off are cumulative. A proprietor whose registration is under attack may still succeed in passing off; a proprietor whose reputation is thin may still succeed on the registration. Section 59 places one limit on the combination: in a passing off action against a defendant who is himself the registered proprietor or a registered user of a mark substantially identical with or deceptively similar to the plaintiff’s, damages shall not be awarded where he satisfies the court that he was unaware and had no reasonable means of ascertaining the plaintiff’s use, and that he immediately ceased once he learnt of it. An injunction is unaffected.
A logo is also an artistic work under the Copyright and Neighbouring Rights Act 2000, which protects the artwork itself without registration. A company or business name registered under the Companies Act 1997, by contrast, gives no trade mark rights at all.
If you decide to register
- Search the Register first — it is open to any person on payment of the fee under section 8.
- Check registrability against section 15, section 19 and section 24.
- Choose the class — one application, one class (s 32(3)).
- File, and then keep using the mark: three years of non-use exposes it to removal.
- Diary the renewal — every 10 years.
For advice, see the law firms directory.
Sources
- Trade Marks Act (Chapter 385) — ss 8, 10, 19, 24, 26, 32, 45, 46, 49–56, 59, 60, 64, 73, 74; Part XI
- Copyright and Neighbouring Rights Act 2000
- Companies Act 1997
- Constitution — Schedule 2.2
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.