Part B of the Register exists for marks that are on their way to distinctiveness rather than already there. Section 16 of the Trade Marks Act (Chapter 385) sets the test.
Section 16(1)
it is distinctive, or is not distinctive but is capable of becoming distinctive, of the goods in respect of which registration is sought, and with which the applicant is or may be connected in the course of trade.
Three elements, each doing work:
- Distinctive, or capable of becoming distinctive. The second limb is the whole point of Part B. The Registrar is asked to make a prediction — not whether the mark distinguishes today, but whether use could make it distinguish.
- Of the goods in respect of which registration is sought. Capability is judged against the specified goods, not in the abstract. A word may be hopeless for one class of goods and perfectly capable for another.
- Is or may be connected in the course of trade. Note “may be”. The applicant need not already be trading. Read with section 35, a mark can be registered where the applicant intends to assign it to a corporation about to be constituted, or where a registered user will use it.
What “capable of becoming distinctive” means
The touchstone remains section 17: a mark is distinctive if it is adapted to distinguish the applicant’s goods from goods with which no such connexion subsists, and in judging that, regard may be had to how far the mark is inherently adapted to distinguish and how far, by reason of use or other circumstances, it does distinguish.
| Type of mark | Realistic route |
|---|---|
| Invented word | Part A — s 15(1)(c) |
| Signature of the applicant | Part A — s 15(1)(b) |
| Name in a special or particular manner | Part A — s 15(1)(a) |
| Ordinary word, unrelated to the goods, not a surname or place | Part A — s 15(1)(d) |
| Word suggestive of the goods, short of direct description | Part B, or Part A on evidence |
| Surname, in ordinary block lettering | Part B, or Part A on s 15(2) evidence |
| Geographical name | Part B, or Part A on s 15(2) evidence |
| Letters or numerals alone | Part B, usually |
| Word directly describing the character or quality of the goods | Neither, without substantial evidence of acquired distinctiveness |
| Matter common to the trade | Neither — and a disclaimer may be required for it in a composite mark |
The rights a Part B registration gives
Section 49(1) makes no distinction: registration in Part A or Part B, if valid, gives the proprietor the right to the exclusive use of the mark for the registered goods and to obtain relief for infringement. Section 50 presumes validity for both. Both last 10 years and are renewable. Both may be assigned and licensed. Both are exposed to removal for non-use.
In an action for infringement of a Part B mark — other than infringement by breach of restrictions under section 54 — an injunction or other relief shall not be granted if the defendant establishes that his use is not likely to deceive or cause confusion, or to be taken as indicating a connexion in the course of trade between the registered goods and a person entitled to use the mark.
In substance, a Part B proprietor must be prepared for the defendant to run the passing-off-style question of confusion, and to lose everything if the defendant wins it. A Part A proprietor faces no such defence.
The second difference is durability. Sections 51 and 52 — the three-year limitation on removal, and conclusive validity after ten years — apply only to Part A. A Part B registration remains open to challenge on registrability indefinitely.
Using Part B deliberately
- File now rather than later. Under section 45 the date of registration is the date of lodgement. A Part B registration secured today outranks a competitor’s Part A application filed tomorrow for the same goods, and blocks it under section 24.
- Consent to the downgrade. Under section 33(5), rather than refusing a Part A application the Registrar may, with the applicant’s consent, treat it as a Part B application. Refusing consent means refusal and, under section 36, lapse — and a new application later takes a later date.
- Build the evidence from day one. Dated invoices, advertisements, packaging, price lists, sales figures by year and region. That file is what converts a Part B mark into a Part A registration later.
- Then file for Part A. There is no promotion procedure; the route is a fresh application relying on section 15(2) and the accumulated evidence. Section 16(2) expressly permits the same person to hold the mark in both Parts for the same or different goods, so the Part B registration need not be surrendered.
- Watch for demotion. Under section 13(3), the Court’s power to rectify includes power to order the removal of a registration from Part A to Part B — a middle course a challenger may seek instead of outright cancellation.
Conditions and limitations
Under section 33(1) the Registrar may accept an application subject to such conditions or limitations as he sees fit, and section 49(2) provides that the rights acquired are subject to any conditions or limitations to which the registration is subject. “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.
Conditions are common on Part B registrations — a limitation to a colour under section 18, a disclaimer under section 23, or a geographic limitation reflecting honest concurrent use under section 26. Section 55(2) then confirms the corollary: where a mark is registered subject to conditions or limitations, it is not infringed by use in circumstances to which, having regard to those conditions or limitations, the registration does not extend.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 13, 15–18, 23, 24, 26, 33, 35, 36, 45, 46, 49–55, 60, 64
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.