Section 55 of the Trade Marks Act (Chapter 385) opens with the words “Notwithstanding anything in this Act”. What follows is a complete answer to an infringement claim.
Section 55(1)(a) — your own name
The use in good faith by a person of his own name or the name of his place of business, or the name, or the name of the place of business, of any of his predecessors in business, does not constitute an infringement.
Two limits define the defence. It protects your own name, not an adopted trading style; and the use must be in good faith — which will not be so where the name is presented in a way calculated to resemble the registered mark, or where a business is deliberately named to exploit an existing brand.
This defence is the counterpart of section 15(1)(d)(ii), which excludes surnames in their ordinary meaning from Part A registrability. The Act declines both to grant a monopoly over surnames and to let a registration stop an honest namesake.
Section 55(1)(b) — describing your goods
The use in good faith by a person of a description of the character or quality of his goods does not constitute an infringement.
Section 15(1)(d)(i) keeps words having a direct reference to the character or quality of the goods out of Part A. Section 23 lets the Registrar require a disclaimer of matter that is common to the trade or otherwise not distinctive. And section 55(1)(b) makes honest descriptive use non-infringing. The Act consistently refuses to let one trader monopolise the ordinary language of the market.
The line is between describing and branding. Using a word to say what your goods are is protected; using it as the badge under which they are sold is not.
Section 55(1)(c) — continuous prior use
The use by a person of a trade mark in relation to goods in relation to which that person has, by himself or his predecessors in business, continuously used the trade mark from a date before:
(i) the use of the registered trade mark by the registered proprietor, his predecessors in business or a registered user; or
(ii) the registration of the trade mark,
whichever is the earlier, does not constitute an infringement.
The defence requires use from a date before the earlier of the proprietor’s first use and the date of registration — which under section 45 is the date the application was lodged — and it requires that use to have been continuous. Dated invoices, advertisements, packaging and photographs, kept year by year, are what prove it. A gap in the record is a gap in the defence.
The same facts also support an application to register your own mark: under section 26(2), the Registrar shall not refuse to register a continuously used prior mark by reason of the later registration.
Section 55(1)(d) — parts and accessories
The use of a mark in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the mark has been used without infringement, or might for the time being be so used, does not infringe if:
• the use is reasonably necessary in order to indicate that the goods are so adapted; and
• neither the purpose nor the effect of the use is to indicate, otherwise than in accordance with the facts, a connexion in the course of trade between any person and the goods.
This is what allows a maker of filters, batteries, blades, cartridges or replacement parts to say which product its goods fit. The conditions are strict: the use must be reasonably necessary, and it must not suggest a trade connexion that does not exist. Prominence gives the game away — a compatibility statement in ordinary text is within the defence; the brand splashed across the front of the packet is not.
Section 55(1)(e) — using your own registration
The use of a trade mark, being one of two or more registered trade marks which are substantially identical, in exercise of the right to the use of that mark given by registration as provided by the Act, does not constitute an infringement.
Read with section 49(3), under which co-proprietors of substantially identical or deceptively similar registered marks acquire no rights of exclusive use as against each other except so far as their rights have been defined by the Registrar or a court. This is the position after an honest concurrent use registration under section 26(1) — and it is why the conditions and limitations imposed at that point are the whole of the bargain between the two proprietors.
Section 55(2) — outside the registration
Where a trade mark is registered subject to conditions or limitations, it is not infringed by use in any manner in relation to goods to be sold or otherwise traded in a place, in relation to goods to be exported to a market, or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend.
“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, and use in relation to goods to be exported. This is the reason a defendant’s first step should always be to obtain a certified extract and read the conditions, limitations and disclaimers on the entry — a registration is often narrower than the demand letter suggests.
Other answers outside section 55
| Answer | Provision |
|---|---|
| The goods are not within the specification — section 53(1) reaches only the registered goods | s 53(1) |
| The mark is not substantially identical or deceptively similar | ss 1(3), 53(1) |
| Not in the course of trade | s 53(1) |
| Defendant is a registered user using by way of permitted use | ss 1, 53(1), 69 |
| Part B mark: use is not likely to deceive or cause confusion | s 53(2) |
| Genuine goods lawfully acquired — resale is not an infringement by reason only of a later assignment | s 73(6) |
| The word has become the name of the article — rights deemed to have ceased | s 47(5) |
| The registration is invalid, or should be removed for non-use or rectified | ss 13, 14, 50–52 |
| Counter-claim for groundless threats | s 90 |
The section addresses infringement of a registered mark. A defendant within section 55 may still be liable in passing off if their conduct amounts to a misrepresentation causing damage — though good faith, which sections 55(1)(a) to (c) each require, will usually tell against that too.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 13, 14, 15, 23, 26, 45, 47, 49–55, 69, 73, 90
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.