The Trade Marks Act (Chapter 385) is the statute that creates and protects registered trade marks in Papua New Guinea. Section 2 provides that it binds the State.
The structure of the Act
| Part | Subject |
|---|---|
| I | Preliminary — definitions, and application to the State |
| II | Administration — the Office of Registrar, the seal, and the Registrar’s powers |
| III | The Register — inspection, certificates, evidence, alteration, rectification, and non-use |
| IV | Registrable trade marks — Part A and Part B, distinctiveness, prohibited marks, disclaimers, identical and similar marks, concurrent use, associated marks, series |
| V | Applications — acceptance or refusal, division, advertisement, withdrawal |
| VI | Opposition — notice, referral to the Court, security for costs |
| VII | Registration and its effect — rights given, evidence of validity, infringement, defences, remedies, passing off |
| VIII | Renewal — procedure on expiry, restoration, status of an un-renewed mark |
| IX | Registered users — the licensing regime |
| X | Assignment and transmission |
| XI | Protection — forgery, false marks, importation, forfeiture, aiding and abetting |
| XII | Appeals — the Court’s powers, intervention by the Registrar, special cases |
| XIII | Miscellaneous — export use, groundless threats, fees, extension of time, address for service, classification |
| XIV | Transitional |
Section 1 — what a trade mark is
A mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and a person who has the right, either as proprietor or as registered user, to use the mark — whether with or without an indication of the identity of that person.
Includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral, or any combination of them.
The definition of “goods” in section 1(1) includes services — and where goods are to be compared with services, or vice versa, the expression “of the same description as” is construed as “closely related to”.
So a service mark is registrable and protected in the same way as a mark for physical products, and the comparison exercise in section 24 and in infringement works across the two.
Definitions that decide cases
- “Deceptively similar” — section 1(3): a trade mark is deemed deceptively similar to another if it so nearly resembles that other mark as to be likely to deceive or cause confusion. This is the test that runs through registrability, opposition and infringement.
- “Limitations” — limitations of the right to exclusive use, including as to mode of use, use within a particular area within Papua New Guinea, or use in relation to goods to be exported.
- “Permitted use” — use by a registered user in relation to goods with which he is connected in the course of trade, for which the mark remains registered and he is registered, and complying with the conditions of his registration.
- “Assignment” — assignment by act of the parties; “transmission” — transmission by operation of law, devolution on a personal representative, and any other mode of transfer that is not assignment.
- “The Court” — the National Court.
- “Word” includes an abbreviation of a word.
References to use of a mark are references to use of a printed or other visual representation of it; and references to use in relation to goods are references to use on, or in physical or other relation to, goods.
“Or other relation to” is what allows use in advertising, on invoices, on packaging and in a service context to count — which matters for non-use removal and for infringement.
Two Parts of the Register
The Register is divided into Part A and Part B — see the difference between them. In short:
- Part A (s 15) requires one of the six listed essential particulars, including a mark that is distinctive;
- Part B (s 16) requires only that the mark is capable of becoming distinctive through use; and
- the practical difference appears in section 49 on the rights given, and in section 52, under which a Part A registration becomes conclusive after 10 years in the circumstances there stated.
Unregistered marks are not unprotected
The Act does not abolish the common law action of passing off, which continues to apply in Papua New Guinea as part of the underlying law. It is available for an unregistered mark — but it requires proof of reputation, misrepresentation and damage, which is harder and far more expensive than proving a registration. See registered and unregistered marks compared.
In an action for passing off arising out of the defendant’s use of a registered trade mark of which he is the registered proprietor or a registered user, damages shall not be awarded if he satisfies the court —
(a) that when he commenced to use the mark he was unaware, and had no reasonable means of ascertaining, that the plaintiff’s trade mark was in use; and
(b) that when he became aware of it he immediately ceased to use the mark on goods in relation to which the plaintiff used it.
Note what section 59 does not do: it does not bar the action, and it does not bar an injunction — only damages, and only where both conditions are met. An earlier user with a reputation can still stop a later registered proprietor.
Related legislation
- Copyright and Neighbouring Rights Act 2000 — for artistic works, including logos.
- Criminal Code Act (Chapter 262) — for fraud and related offences beyond Part XI.
- Companies Act 1997 — company and business name registration is not trade mark registration, and confers no trade mark rights.
- Interpretation Act (Chapter 2) — for the construction of the Act generally.
Registering a company or business name records who is trading. It does not give the exclusive right to use that name as a mark for goods or services, and it is no answer to an infringement claim. The two systems are separate, and a name may be available at the companies registry while being unregistrable, or already registered, as a trade mark.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 2, 6, 15, 16, 24, 49, 52, 59, 64; Parts I to XIV
- Copyright and Neighbouring Rights Act 2000
- Companies Act 1997
- 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.