Section 103 of the Trade Marks Act (Chapter 385) polices the claims a trader makes about its own rights.
Section 103(2) — the offence
(a) with respect to a mark which is not a registered trade mark — that it is a registered trade mark; or
(b) with respect to a part of a registered trade mark not separately registered — that it is so registered; or
(c) that a registered trade mark is registered in respect of goods in respect of which it is not registered; or
(d) that the registration gives a right to the exclusive use of the mark in circumstances in which, having regard to conditions or limitations entered on the Register, it does not give that right,
is guilty of an offence. Penalty: a fine not exceeding K200.00.
| Paragraph | Typical example |
|---|---|
| (a) | Marking packaging “Registered Trade Mark” while the application is still pending, or after the registration has been removed for non-renewal |
| (b) | Claiming registration of the word alone when only the composite logo is registered — especially where the word has been disclaimed under section 23 |
| (c) | Using the registration notice across a whole product range when the registration covers only one class of goods (s 32(3)) |
| (d) | Asserting a nationwide exclusive right where the registration is limited as to area, mode of use, or export goods — for example after an honest concurrent use registration under section 26(1) |
Section 103(1) — what “registered” is taken to mean
The use in Papua New Guinea, in relation to a trade mark, of the word “registered”, or of some other word referring expressly or impliedly to registration, is deemed to import a reference to registration under this Act, except:
(a) where the word is used in physical association with other words delineated in characters at least as large, indicating that the reference is to registration under the law of a country outside Papua New Guinea, being a country under whose law that registration is in force; or
(b) where the word (being a word other than “registered”) is of itself such as to indicate that the reference is to such a foreign registration; or
(c) where the word is used in relation to a mark registered under the law of a country outside Papua New Guinea and in relation to goods to be exported to that country.
Exception (a) is not satisfied by a footnote. The qualifying words must be in physical association with the word “registered” and delineated in characters at least as large. A large “REGISTERED” followed by small print naming a foreign country does not comply — and the representation is then deemed to refer to registration under this Act.
Exception (c) is the exporter’s allowance: goods made here for export to a country where the mark is registered may carry that country’s registration notice. Read it with section 85, under which applying the mark here to goods for export is use of the mark for the Act’s purposes.
Where else this comes up
- Section 20(1)(a) — the Registrar may refuse an application for a mark containing the words “Patent”, “Patented”, “Registered”, “Registered Design”, “Copyright”, “To counterfeit this is a forgery”, or words or symbols to the like effect. Section 103 is the enforcement counterpart: the Act keeps such claims out of marks, and makes false claims about registration an offence.
- Section 90 — threatening infringement proceedings over a mark alleged by the threatener to be registered exposes the threatener to an action for a declaration, an injunction and damages. A demand letter overstating your rights can breach both sections at once.
- Section 19(a) and 19(b) — a mark whose use would be likely to deceive or would be contrary to law shall not be registered.
- Section 92 — in a pleading or proceeding a registered mark may be identified simply by its registered number, which is the accurate way to refer to it.
- The Commercial Advertisement (Protection of the Public) Act and the Criminal Code Act (Chapter 262) deal more broadly with misleading advertising and false pretences.
Marking your goods correctly
- Use the registration notice only for the mark that is registered — not for a variant, and not for a word inside a registered logo unless that word is itself registered.
- Use it only on the registered goods. If the registration is in one class and the range spans two, restrict the notice to the goods it covers, or file for the second class.
- Do not claim it while the application is pending. Nothing prevents identifying the mark as a trade mark, or stating that an application has been made — only the claim of registration is caught.
- Check the conditions and limitations on the entry before making any claim about exclusivity — paragraph (d) is directed exactly at that.
- For foreign registrations, comply with the size requirement in exception (a), or confine the notice to export goods under exception (c).
- Review the marking at each renewal — and immediately if a registration lapses or is removed for non-use.
The penalty under section 103 is small. The real risk is elsewhere: a false claim of registration undermines a demand letter, invites a section 90 counter-attack, and hands a defendant a point on credibility in any infringement proceeding. Accuracy about what you own costs nothing.
Sources
- Trade Marks Act (Chapter 385) — ss 19, 20, 23, 26, 32, 85, 90, 92, 103
- Commercial Advertisement (Protection of the Public) Act
- Criminal Code Act (Chapter 262)
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.