The Register is meant to record marks in use, not marks held in reserve. Section 14 of the Trade Marks Act (Chapter 385) is how it is cleared.
Section 14(1) — the grounds
(a) that the mark was registered without an intention in good faith on the part of the applicant for registration that it should be used on those goods by him — or, if it was registered under section 35(1), by the corporation or registered user concerned — and that there has in fact been no use in good faith of the mark on those goods by the registered proprietor or a registered user earlier than one month before the application; or
(b) that, up to one month before the application, a continuous period of not less than three years had elapsed during which the mark was a registered trade mark and during which there was no use in good faith of it on those goods by the registered proprietor or a registered user for the time being.
| Ground (a) | Ground (b) | |
|---|---|---|
| Directed at | The intention at the time of registration | The fact of non-use over time |
| Period | No fixed period — but no use at all up to one month before the application | Three years continuous, ending one month before the application |
| Available when | Any time after registration | Only once three years of registration have elapsed |
| Answer | Evidence of the good faith intention — and any use | Any use in good faith in the period; or s 14(4) special circumstances |
Both grounds stop the clock one month before the application. Use begun inside that final month does not defeat the application — the Act deliberately prevents a proprietor from manufacturing token use after being put on notice.
Which is also a warning to an applicant: do not send a warning letter first. A demand that the mark be surrendered gives the proprietor more than a month to start using it.
“A person aggrieved”, and to which forum
Unlike opposition under section 40, which is open to any person, section 14 requires an applicant to be aggrieved — in practice a trader whose own application has been blocked by the mark under section 24, who has been threatened with infringement, or who is otherwise hindered in the same trade.
The application is to the Court — the National Court under the section 1 definition — not to the Registrar. Under section 14(5) an office copy of the order is served on the Registrar, who shall take such steps as are necessary to give effect to it. Remember also section 50: the original registration is deemed valid unless the contrary is shown.
Section 14(2) — the same-description answer
Except where an applicant has been permitted under section 26 to register a substantially identical or deceptively similar mark for the goods concerned, or the Court is of the opinion that the applicant can properly be permitted to register such a mark, the Court may refuse the application if there has been, before the relevant date or during the relevant period, use in good faith by the registered proprietor or a registered user in relation to goods of the same description, being goods for which the mark is registered.
So a proprietor who has used the mark on related goods within the same registration may resist removal of the unused goods. The subsection is qualified, though: it does not assist against an applicant who has been, or could properly be, permitted to register a similar mark under section 26.
Section 14(3) — place and export limitations
Non-use can be shown by reference to a particular place in Papua New Guinea (otherwise than for export) or a particular export market. Where that is shown, and the applicant has been — or might properly be — permitted under section 26 to register a substantially identical or deceptively similar mark extending to that place or market, the Court may direct that the registration be subject to conditions or limitations ensuring that it ceases to extend to use in relation to goods to be sold or traded in that place, or exported to that market.
Section 14(3) allows an outcome short of removal: the registration survives, but is cut back geographically or by market, leaving room for the applicant. Read with section 55(2), use outside the reach of the limited registration is then not an infringement.
Section 14(4) — special circumstances in the trade
An applicant is not entitled to rely, for the purposes of subsection (1)(b) or (3), on failure to use a trade mark if the failure is shown to have been due to special circumstances in the trade and not to an intention not to use or to abandon the mark in relation to the goods concerned.
The words are “special circumstances in the trade” — circumstances affecting the trade generally rather than the proprietor’s own commercial choices. Import restrictions, supply failures, regulatory prohibition, or the closure of a market are the kind of matters contemplated. A decision to concentrate on other products is not.
The second limb matters as much as the first: the failure must not be due to an intention not to use, or to abandon the mark. A proprietor who simply shelved the brand cannot rely on subsection (4) however difficult the market was.
Defending a non-use application
- Produce the use. Dated invoices, packaging, labels, advertisements, price lists and photographs, covering the whole three-year period and the registered goods.
- Rely on a registered user. Under section 69(1), permitted use is deemed to be use by the registered proprietor expressly for the purposes of section 14 — and under section 69(2) earlier use by a person now registered as a user may count as permitted use.
- Rely on section 30. The Court may accept use of an associated registered mark, or use of the mark with additions or alterations not substantially affecting its identity; and use of the whole mark is use of any registered part of it in the same name.
- Rely on section 85. Applying the mark in Papua New Guinea to goods to be exported, and anything else done here that would be use if the goods were sold locally, is use.
- Rely on section 14(2) — use on goods of the same description within the registration.
- Plead special circumstances under section 14(4), with evidence about the trade, not merely about your own plans.
- Consider narrowing the specification yourself under section 11(1)(d), which permits amendment that does not extend the rights — conceding the unused goods may protect the rest.
Keep a use file from the day of registration: a dated sample of packaging, one representative invoice and one advertisement, filed each year for each class. It takes minutes annually and answers a section 14 application years later, when the underlying records may be long gone.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 11, 14, 24, 26, 30, 35, 40, 50, 55, 69, 85
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.