Two provisions in Part XIII of the Trade Marks Act (Chapter 385) answer questions that arise constantly for exporters and for businesses whose structure has changed.
Section 85 — export use is use
The application in Papua New Guinea of a trade mark to goods to be exported from Papua New Guinea, and any other act done in Papua New Guinea in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded in within Papua New Guinea, would constitute use of a trade mark in Papua New Guinea, shall, for the purposes of this Act, be deemed to constitute use of the trade mark in relation to those goods.
Section 85(2) makes the provision retrospective: it is deemed to have had effect in relation to acts done before the commencement date as it has in relation to acts done after — though it does not affect a determination of a court made before that date, or the determination of an appeal from such a determination.
The point of section 85 is section 14. A registration is exposed to removal after three years of continuous non-use in relation to the registered goods. An exporter who manufactures and labels here but sells only overseas would, without section 85, have no use to point to at all.
Section 85 answers that: labelling, packaging, invoicing and advertising done in Papua New Guinea for goods destined for export is use of the mark for every purpose of the Act — non-use, distinctiveness, honest concurrent use, and the validity of an assignment without goodwill under section 73(2)(a), which turns on whether the mark was at any time in use in good faith in Papua New Guinea.
Export use, limitations and non-use
The Act treats the export trade as a distinct field in three other places, and they should be read together:
| Provision | Effect |
|---|---|
| s 1, “limitations” | A registration may be limited as to use in relation to goods to be exported to a market outside the country |
| s 55(2) | Where the registration is so limited, use in relation to goods to be exported to a market to which the registration does not extend is not an infringement |
| s 14(3) | Non-use may be shown by reference to a particular place within the country or a particular export market, and the Court may impose conditions or limitations so that a registration ceases to extend to that place or market |
| s 103(1)(c) | Using the word “registered” in relation to a mark registered abroad and goods to be exported to that country is not a false representation |
Because section 26(1) and section 33(1) both allow limitations to be imposed, an export-only limitation is a real settlement option in a conflict. Where a local trader and an exporter both want the same mark, a registration limited to goods to be exported can give the exporter what it needs without disturbing the domestic market.
Section 86 — a change of connexion is not deception
The use of a registered trade mark in relation to goods between which and the person using the mark a form of connexion in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the mark has been, or is, used in relation to goods between which and that person, or a predecessor in title, a different form of connexion in the course of trade subsisted or subsists.
The definition of a trade mark in section 1 requires the mark to indicate a connexion in the course of trade between the goods and a person entitled to use the mark. Section 86 makes clear that the kind of connexion may change without the mark becoming deceptive.
| From | To |
|---|---|
| Manufacturer of the goods | Importer or distributor of goods made abroad |
| Importer | Local manufacturer under licence |
| Trading in its own name | Licensing to a registered user who makes and sells |
| Retailer selling others’ goods | Owner of an own-brand range |
| The original proprietor | An assignee with a different role in the supply chain |
Section 86 answers one argument — that the change of connexion, by itself, makes the mark deceptive. It does not immunise a mark that is deceptive for some other reason. A mark that states or implies something specific and now untrue — that the goods are made in a particular place, or by a particular process — can still fall foul of section 19(a) or be attacked under section 13.
Why section 86 matters on a sale
Section 86 is the counterpart of section 73, which allows a registered mark to be assigned or transmitted with or without the goodwill of the business. Without section 86, every such assignment would invite the argument that the public associates the mark with the assignor’s kind of connexion to the goods, and that continued use is now deceptive.
Section 73 has its own controls for the real risk — section 73(2)(b) invalidates an assignment without goodwill where the assignor continues to use a substantially identical or deceptively similar mark on related goods in circumstances likely to deceive; and section 73(4) saves an assignment where the mark has come to denote a connexion with the assignee to the exclusion of all others. Section 86 removes the merely formal objection, and leaves the substantive ones intact.
Practical points
- Exporters: keep local evidence. Dated labelling runs, packaging orders, export invoices and shipping documents prepared in Papua New Guinea are your section 85 use record.
- Do not assume a foreign registration helps here. Rights are territorial; only a Papua New Guinea registration gives section 49 rights in Papua New Guinea.
- Consider an export limitation as a settlement tool in a conflict — but understand that section 55(2) then leaves the domestic field open to the other party.
- On restructuring, record the new arrangement: register the assignment under section 74, register the licensee as a registered user under section 64, and update the name and address under section 11(1)(b).
- Check the mark still tells the truth. Section 86 protects a change of role, not a change that makes the mark say something false.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 11, 13, 14, 19, 26, 33, 49, 55, 64, 73, 74, 85, 86, 103
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.