Section 32 of the Trade Marks Act (Chapter 385) is short, and every phrase in it matters.
Section 32 — the application
(1) A person who claims to be the proprietor of a trade mark may apply to the Registrar in the prescribed manner for its registration in Part A or Part B of the Register.
(2) An application shall specify the goods in respect of which registration is sought.
(3) An application shall not be made in respect of goods comprised in more than one class.
| Requirement | What it means in practice |
|---|---|
| Claims to be the proprietor | The first user of the mark as a mark, or the person who adopted it and intends to use it. A distributor is not the proprietor of the manufacturer’s mark. Rival claims go to the Court under section 25 |
| In the prescribed manner | The prescribed form, a representation of the mark, and the fee — under section 93(2)(c) a document is deemed not lodged until the fee is paid |
| Part A or Part B | A choice the applicant makes: see Part A and Part B compared |
| Specify the goods | The specification defines the registration and the reach of infringement; it also defines your exposure to removal for non-use |
| One class only | Separate applications for separate classes, each with its own fee and renewal |
You do not have to be using the mark yet
Nothing in section 32 requires actual use. Section 16 speaks of goods with which the applicant is or may be connected in the course of trade, and section 35 allows registration where the applicant does not use or propose to use the mark at all — in two defined cases:
- where a corporation is about to be constituted and the applicant intends to assign the mark to it for use on the goods; or
- where an application has been made to register a registered user, and the Registrar is satisfied the proprietor intends the mark to be used by that person and that they will be registered immediately after registration of the mark.
Under section 14(1)(a), a mark may be removed if it was registered without an intention in good faith that it be used on those goods and there has in fact been no use in good faith. And under section 35(2), where a mark is registered on an intention to assign to a corporation, the registration ceases to have effect unless the corporation is registered as proprietor within the prescribed period or such further period, not exceeding six months, as the Registrar allows.
Step 1 — before you file
- Search the Register. Under section 8 it is open to any person on payment of the prescribed fee. Search the class you need and any class covering goods of the same description.
- Search the market. An unregistered reputation can defeat you under section 19(a) and in passing off. Check business names, signage, advertising and online use.
- Test registrability against section 15, section 16, sections 19 and 20, and section 24.
- Get any consents — under section 21 for a living or recently deceased person’s name or image, and from any public body whose emblem appears.
- Decide the class and the specification. Where the class is doubtful, ask the Registry: under section 22(2) the Registrar’s decision on class cannot be appealed.
Step 2 — what goes in
- The prescribed form, signed by or for the applicant.
- A clear representation of the mark. Decide colour deliberately: under section 18(2), a mark registered without a colour limitation is deemed registered for all colours.
- The specification of goods, within one class.
- Whether registration is sought in Part A or Part B.
- An address for service in Papua New Guinea — section 97 requires one, and documents may be served there.
- Any evidence of distinctiveness relied on under section 15(2), and any consents.
- The fee.
Under section 5(4), the Registrar may refuse to receive or register a document that contains matter contrary to law, has not been duly completed, does not comply with the Act, or contains an error, alteration or erasure — and may require it to be amended, completed, re-submitted or replaced. A refused document is not lodged, and under section 45 the date of lodgement is the date of registration. Every day lost is priority lost.
Step 3 — what happens next
| Stage | Provision |
|---|---|
| Examination — accept without conditions, accept subject to conditions or limitations, require amendment, or refuse | s 33 |
| Possible treatment as a Part B application, with the applicant’s consent | s 33(5) |
| Division of the application, keeping the original date if the Registrar so directs | s 34 |
| Notice of acceptance, and advertisement by the applicant in the prescribed manner | s 37 |
| Opposition — within three months of advertisement, extendable | s 40(1) |
| Registration in the appropriate Part | s 44 |
| Date of registration — the date of lodgement; term 10 years | ss 45, 46 |
At any time before the mark is registered the applicant may withdraw the application (s 38), and if the Registrar refuses to accept it, written notice is given and — subject to any appeal — the application lapses (s 36).
Five things that go wrong
- Applying in the name of the wrong entity. The applicant must be the proprietor. A director applying personally for a company’s mark, or a local distributor applying for a foreign brand, invites a section 25 or section 19(d) objection.
- A specification copied from a competitor, covering goods you will never sell. It attracts citations under section 24 and partial removal under section 14.
- Filing after the launch. Priority runs from lodgement, so file before the mark is advertised.
- Registering only the business name. A name registered under the Companies Act 1997 confers no trade mark rights.
- Letting the address for service go stale. Sections 96 and 97 require the Registrar to be notified of changes — and a renewal notice or an opposition served at an old address is still served.
For help, see the law firms directory.
Sources
- Trade Marks Act (Chapter 385) — ss 5, 8, 14–16, 18–22, 24, 25, 32–38, 40, 44–46, 93, 96, 97
- Companies Act 1997
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.