The Trade Marks Act (Chapter 385) commenced on 18 October 1979 as regards section 104 and Part XIV, and on 8 May 1980 for the balance of the Act. Part XIV bridged the gap between the pre-Independence position and the new Register.
Why a transitional Part was needed
Before Independence, trade mark protection in the Territory ran through the Australian system. Independence came on 16 September 1975, but the domestic Act did not commence until nearly five years later. Part XIV answers the question that gap creates: what became of the rights of proprietors whose marks were on the Australian Register when the country became independent?
Section 105 — “an applicant to whom this Part applies”
The proprietor of a trade mark who:
(a) applies to the Registrar for registration of that mark within a period of 12 months from the commencement date; and
(b) shows to the Registrar’s satisfaction that he was, on the relevant date, the registered proprietor — or, on or after the relevant date and before the commencement date, the successor in title of the registered proprietor — of that mark in and for Papua New Guinea, in respect of the same goods to which his application relates, by virtue of the registration in Part A or Part B of the Australian Register at that date.
Section 105(1) also defines “the Australian Act” as the Trade Marks Act 1955 of Australia, “the Australian Register” as the Register kept under it, and “the relevant date” as 15 September 1975 — the day before Independence.
| Provision | Rule |
|---|---|
| s 105(2) | A person is deemed not to have been registered at the relevant date if the registration was not entered in the Australian Register at that date — notwithstanding that the Australian Act might deem him registered from that date by virtue of an entry made later. What mattered was the actual state of the Register on 15 September 1975 |
| s 105(3) | Where a firm or partnership was registered in Part A or Part B of the Australian Register at the relevant date, all the persons who were then the proprietors of the firm or the members of the partnership are deemed to have been registered jointly as proprietors — a point that also engages section 27 on joint proprietorship |
Section 106(1) — priority and no advertisement
(a) where an application is made by an applicant to whom this Part applies, the Registrar shall give priority to the registration of that mark over that of any applicant for a substantially identical or deceptively similar mark for the same goods or goods of the same description who is not an applicant to whom this Part applies; and
(b) on acceptance, the Registrar may register the mark without advertisement of the acceptance, and the provisions of Part VI do not apply to the application.
Paragraph (b) disapplied Part VI — the whole opposition regime — and dispensed with the section 37 advertisement. A transitional application could therefore proceed straight to registration.
The justification is in section 106(2): paragraph (1) applies to an application only where the rights of the applicant would, as a consequence of registration, in no way extend beyond the rights held by the applicant in respect of that mark in Papua New Guinea on the relevant date. Nothing new was being granted — existing rights were being transcribed onto a domestic Register. Anyone whose interests were nevertheless affected retained section 13 rectification.
Section 106(3) — holding back other applicants
The Registrar could defer acceptance of an application by a person not within Part XIV until after the 12 months had expired; or accept it and determine any opposition within that period, but defer registration until afterwards. That preserved the priority in section 106(1)(a) in practice, by preventing a newcomer’s application from being registered ahead of a transitional applicant who had not yet come forward.
Sections 106(4) to (6) — backdated, but not retrospective
Subject to subsections (5) and (6), all trade marks registered under this section shall be deemed to have been registered from 16 September 1975.
Notwithstanding subsection (4), no action for infringement of, or passing off a trade mark registered under this section shall lie in respect of the period from 16 September 1975 to the day before the commencement date.
Subsection (5) does not derogate from or affect any common law rights.
Read together, the three subsections do something careful. The registration is backdated to Independence for every purpose that depends on the date of registration — priority under section 24, the three-year and ten-year periods in sections 51 and 52, the running of the 10-year term. But no liability is created for the intervening years. Nobody could be sued for conduct at a time when the Act was not in force and the mark was not on any domestic Register.
Section 106(6) then preserves what always existed independently: rights at common law. Anyone with a reputation in the market during those years could still sue in passing off, which does not depend on the Act at all.
Why Part XIV still matters
The 12-month window closed in October 1980, so no new transitional application can be made. But the Part continues to have practical significance:
- Very old registrations may carry a 1975 date. A mark registered under section 106 is deemed registered from 16 September 1975 — which is the date to work from for priority under section 24 and for validity under sections 51 and 52, not the date the application was actually lodged.
- Renewal dates run from the deemed date. Under sections 46 and 60, the 10-year cycles run from the deemed registration.
- Section 106(5) still bars any claim for the period from 16 September 1975 to 7 May 1980.
- Joint proprietorship under section 105(3) explains why some long-standing registrations stand in the names of several individuals rather than a firm.
- An Australian registration is not a Papua New Guinea registration. Rights are territorial. Since 1980 the only way to obtain protection here has been to apply under section 32, and the transitional shortcut is long gone.
For any mark with a long history, obtain a certified extract under section 9 and read the date of registration, the Part, the goods and any conditions or limitations from the Register itself. Under section 10 the Register is evidence of everything the Act requires to be entered in it.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 9, 10, 13, 24, 27, 32, 37, 45, 46, 51, 52, 60, 104–106; Part VI; Part XIV
- Constitution — Schedule 2.2 (adoption of the common law as underlying law)
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.