Almost every decision of the Registrar carries a right of appeal. Part XII of the Trade Marks Act (Chapter 385) sets out what the Court may do with it.
Where the right of appeal is given
| Provision | Decision |
|---|---|
| s 11(2) | Amending or altering the Register on the proprietor’s application |
| s 12(6) | Leave to alter a registered mark |
| s 28(3) | Requiring or dissolving an association of marks |
| s 33(7) | Acceptance subject to conditions or limitations, or refusal of an application |
| s 40(8) | Determination of an opposition |
| s 62(2) | Restoration of a removed mark |
| s 72 | Any decision under Part IX — registered users |
| s 74(2) | Registration of title on an assignment or transmission |
| s 100(5) | Adaptation of the classification of goods |
Under section 22(2), a question as to the class in which goods are comprised is decided by the Registrar, and that decision is not subject to appeal and shall not be called in question in an appeal or other proceedings under this Act. Note the contrast with section 100(5), which does allow an appeal against a decision on adapting the classification itself.
Section 82 — what the Court may do
(a) admit further evidence, orally, on affidavit or otherwise; and
(b) permit the examination and cross-examination of witnesses, including witnesses who gave evidence to the Registrar; and
(c) order an issue of fact to be tried in such manner as it directs; and
(d) affirm, reverse or modify the decision, determination or direction appealed from; and
(e) give such judgement, or make such order, as in all the circumstances it thinks fit, or refuse to make an order; and
(f) order a party to pay costs to another party.
Paragraphs (a) to (c) allow the Court to receive new evidence and to try facts afresh. That is a real advantage where the registry proceeding was decided on documents and the case turns on contested facts — first use, honesty of adoption, actual confusion, or the extent of a reputation.
It also means an appeal is a substantially bigger exercise than the registry hearing. Weigh it against the practical alternatives: accepting a limitation or a disclaimer, consenting to Part B under section 33(5), narrowing the goods, or filing afresh.
Sections 83 and 84
The Court may grant to the Registrar leave to intervene in an appeal.
The Court may state a case or reserve a question for the consideration of the Supreme Court, or may direct that a case or question be argued before the Supreme Court.
Elsewhere the Registrar’s participation is put more strongly: under section 33(8) he is entitled to appear and be heard on an appeal against acceptance on conditions or refusal, and shall appear if so directed by the Court; under section 13(5) the same applies on a rectification application. Section 84 is the route by which a point of general importance on the construction of the Act reaches the Supreme Court.
Costs, security and the Registrar
- Section 101 — where a person who appeals does not reside or carry on business in Papua New Guinea, the Court may require security for the costs of the appeal, and in default the appeal may be dismissed. Compare section 42, under which an opposition by a person in the same position lapses if security is not given.
- Section 95 — the Registrar’s costs are in the court’s discretion, but the Registrar shall not be ordered to pay the costs of any other party. Section 62(3) disapplies section 95 in relation to restoration decisions.
- Section 88 — costs awarded by the Registrar may, in default of payment, be recovered as a debt in a court of competent jurisdiction.
- Section 89 — a certificate of validity where validity was unsuccessfully disputed, entitling the proprietor to solicitor-and-client costs in a later validity dispute.
- Section 102 — a person in whose favour an order is made on appeal is not entitled to enforce it until an office copy has been served on the Registrar, who then makes the necessary entries.
Time, service and the parties
| Provision | Effect |
|---|---|
| s 94 | Where a time is specified by the Act, the Registrar may extend it, either before or after its expiration — unless otherwise expressly provided. Section 40(1) is such a case: an extension of the opposition period requires an application within the three months |
| s 93(2) | A document is deemed not lodged until the fee is paid; the Registrar shall not do an act until its fee is paid |
| s 96 | The address in the Register is deemed to be the address of the proprietor or registered user for all purposes; changes must be notified in writing |
| s 97 | An address for service in Papua New Guinea is required and entered on the Register; documents may be served there. An address in an application or notice of opposition is deemed the address for that matter |
| s 98 | Where a person is incapable by reason of infancy, lunacy or other disability, a guardian or committee — or a person appointed by a court with jurisdiction over the property of incapable persons — may act in his name and on his behalf |
| s 99 | Where a party to a proceeding before the Registrar dies, the Registrar may substitute the successor in interest on proof of transmission, or permit the proceeding to continue if the interest is sufficiently represented by the surviving parties |
| s 92 | A registered mark may be identified in a pleading by its registered number, without a copy or description |
Beyond appeal — judicial review
Where no appeal is given, or where the complaint is one of legal error, excess of jurisdiction or denial of natural justice, the National Court’s supervisory jurisdiction remains. Judicial review proceeds under Order 16 of the National Court Rules and section 155(4) of the Constitution, and the principles of natural justice under section 59 of the Constitution apply to proceedings before the Registrar.
Section 22(2) purports to exclude any challenge to a classification decision in an appeal or other proceedings under this Act. Its words do not reach the Court’s constitutional jurisdiction — but a court will give a classification decision made within jurisdiction very wide latitude, and the practical answer remains to settle the class with the Registry before filing.
Sources
- Trade Marks Act (Chapter 385) — ss 11, 12, 13, 22, 28, 33, 40, 42, 62, 72, 74, 82–84, 88, 89, 92–102
- Constitution — ss 59, 155(4)
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.