Section 33 of the Trade Marks Act (Chapter 385) is where an application either survives or does not.
Section 33(1) — what the Registrar must be satisfied of
(a) the application complies with the requirements of this Act; and
(b) the trade mark is capable of registration under this Act; and
(c) there is no other lawful ground of objection to the application,
may accept the application either without conditions or limitations or subject to such conditions or limitations as he sees fit.
| Limb | What is checked |
|---|---|
| (a) Compliance | Prescribed form and manner (s 32(1)); goods specified (s 32(2)); one class only (s 32(3)); the class (s 22); address for service (s 97); the fee (s 93) |
| (b) Capable of registration | Section 15 for Part A or section 16 for Part B; distinctiveness under s 17; the absolute bar in s 19; the discretionary list in s 20; consent under s 21; conflict with earlier marks under s 24 |
| (c) No other lawful ground | The catch-all — including rival claims to proprietorship under s 25, and any objection arising outside the Act |
Section 33(2) — if he is not satisfied
(a) refuse to accept the application altogether; or
(b) require the application to be amended to his satisfaction so as to remove the grounds of objection, within such time as he allows.
Under section 33(4), if the amendment is not made within the time allowed, the Registrar may refuse to accept the application. Section 94 allows the Registrar to extend a time specified by the Act, either before or after its expiration, unless otherwise expressly provided — but do not rely on it as a matter of course.
An application shall not be amended in such a manner that the amendment would substantially affect the identity of the trade mark before amendment.
The same limit appears in section 5(3) for amendments generally, and in section 12 for altering a mark already registered. What can be amended is the specification of goods, the applicant’s details, and clerical matters. What cannot is the mark itself, in any way that makes it a different mark.
Accepting subject to conditions or limitations
“Limitations” is defined in section 1 as limitations of the exclusive right, including as to mode of use, use within a particular area within Papua New Guinea, or use in relation to goods to be exported. Typical outcomes of examination include:
- a disclaimer under section 23 of a descriptive element or matter common to the trade;
- a colour limitation under section 18, where colour supplies the distinctiveness;
- a geographic or mode-of-use limitation, often reflecting honest concurrent use under section 26;
- an association with the applicant’s other marks under section 28; or
- a narrowed specification of goods.
Section 49(2) then makes the rights subject to those conditions or limitations, and section 55(2) confirms that use in circumstances to which the registration does not extend is not an infringement.
Section 33(5) — the offer of Part B
In the case of an application for Part A, the Registrar may, with the consent of the applicant, instead of refusing to accept the application, treat it as an application for registration in Part B and deal with it accordingly.
The application keeps its lodgement date, and a Part B registration still gives the exclusive right under section 49(1) and still blocks later applicants under section 24. Refusing consent means refusal under section 33(2)(a) and lapse under section 36 — and a fresh application later takes a later date, behind anyone who filed in the meantime.
Nothing prevents a further Part A application once the mark has become distinctive: sections 15(3) and 16(2) allow the same person to hold the mark in both Parts.
Section 33(6) — acceptance can be withdrawn
Where, after acceptance but before registration, the Registrar is satisfied that (a) the application was accepted in error, or (b) that in the special circumstances of the case the mark should not be registered, or should be registered subject to conditions or limitations, or additional or different ones, he may withdraw the acceptance and proceed as if the application had not been accepted.
Section 44 expressly makes registration subject to section 33(6), both where there was no opposition and where an opposition has been decided in the applicant’s favour. So an accepted application is not safe until it is registered — which matters most where a third party writes to the Registrar during the advertisement period instead of filing a formal notice of opposition.
Sections 33(7) and (8) — appeal
An applicant aggrieved by a decision (a) to accept subject to conditions and limitations under section 33(1), or (b) to refuse under section 33(2)(a), may appeal to the National Court. The Registrar is entitled to appear and be heard, and shall appear if so directed by the Court.
On appeal the Court’s powers under section 82 are wide: it may admit further evidence, permit examination and cross-examination of witnesses including those who gave evidence to the Registrar, order an issue of fact to be tried, and affirm, reverse or modify the decision or make any order it thinks fit.
An appeal is often slower and dearer than accepting a limitation, narrowing the goods, taking the Part B option, or filing afresh with a modified mark. Appeal where the objection is wrong in principle or the citation is misconceived — not where the practical outcome can be negotiated at the registry. Note too that under section 101 the Court may require an appellant who does not reside or carry on business in the country to give security for costs, and may dismiss the appeal in default.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 5, 12, 15–26, 32–36, 44, 49, 55, 82, 93, 94, 97, 101
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.