A trade mark is the sign that answers a customer’s question: who does this come from? The Trade Marks Act (Chapter 385) gives that idea a precise legal form.
The statutory definition
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.
Take the parts:
- “Used or proposed to be used” — you do not have to be trading yet. An intention to use is enough to apply.
- “In relation to goods” — and the Act defines “goods” to include services. Where goods are compared with services, “of the same description as” is read as “closely related to”.
- “A connexion in the course of trade” — this is the essential function. The mark must point to a trade source.
- “Whether with or without an indication of the identity of that person” — the customer does not need to know who the source is, only that there is a consistent one.
What counts as a “mark”
Section 1 defines “mark” to include a device, brand, heading, label, ticket, name, signature, word, letter or numeral, or any combination of them.
That is a wide and deliberately practical list. Logos, business names used as brands, product names, distinctive labels, signatures, and combinations of word and device are all within it.
Two Parts of the Register
Unlike more modern trade mark systems, the PNG Register is divided into Part A and Part B, and the tests differ.
| Part A (s 15) | Part B (s 16) | |
|---|---|---|
| Test | Contains or consists of one of the five listed categories | Distinctive, or not distinctive but capable of becoming distinctive |
| Bar | Higher | Lower |
| Use | Marks that are inherently strong | Marks growing into distinctiveness |
Section 15(1) — a trade mark is registrable in Part A if it contains or consists of:
- (a) the name of a person represented in a special or particular manner;
- (b) the signature of the applicant or of a predecessor in the business;
- (c) an invented word;
- (d) a word not having direct reference to the character or quality of the goods, and not being, in its ordinary meaning, a geographical name or a surname; or
- (e) any other distinctive mark.
A name, signature or word outside (a) to (d) is not registrable in Part A unless it is shown by evidence to be distinctive (s 15(2)).
Section 16(1) — a mark is registrable in Part B if it is distinctive, or is not distinctive but is capable of becoming distinctive, of the goods for which registration is sought and with which the applicant is or may be connected in the course of trade.
The same mark may be registered in both Parts, in the name of the same person, for the same or different goods (ss 15(3), 16(2)).
Section 17 — what “distinctive” means
A trade mark is not distinctive of a person’s goods unless it is adapted to distinguish goods with which that person is or may be connected in the course of trade from goods in respect of which no such connexion subsists — either generally, or, where the mark is registered subject to conditions or limitations, subject to those conditions or limitations.
In plain terms: can the mark actually do the job of telling your goods apart from everyone else’s? A word that merely describes the product usually cannot, at least not without evidence of use. See what can be registered.
Section 1(2) and (3) — two definitions that decide cases
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.
A trade mark is deemed to be deceptively similar to another if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion.
The words “or other relation” in section 1(2) carry the Act well beyond the label: use in advertising, on invoices, on packaging and in a service context all count — which matters for removal for non-use and for infringement. Section 1(3) supplies the test that then runs through registrability, opposition and infringement alike.
What a trade mark is not
- A company or business name. Registration under the Companies Act 1997 records who is trading. It confers no right to use that name as a mark, and is no answer to an infringement claim.
- A domain name. Holding one gives no rights under this Act.
- A description of the goods. Ordinary descriptive language is what every trader needs — and section 55(1)(b) makes its good faith use non-infringing.
- A mark that offends section 19. A mark likely to deceive or cause confusion, contrary to law, scandalous, or otherwise not entitled to protection in a court of justice cannot be registered at all.
Registered and unregistered marks
Registration gives the proprietor a statutory exclusive right to use the mark for the goods it is registered for, and an infringement action that turns largely on comparing the marks and the goods. An unregistered mark is not unprotected — the action of passing off remains available — but you must prove reputation, misrepresentation and damage, which is slower, harder and more expensive.
Trade marks are not the only right
- Copyright — the Copyright and Neighbouring Rights Act 2000 protects the expression of works, including artistic works such as a logo drawing.
- Patents and industrial designs — the Patents and Industrial Designs Act 2000.
- Company and business names — registering a company name under the Companies Act 1997 is not a trade mark registration and gives no trade mark rights.
- Trade descriptions — the Commerce (Trade Descriptions) Act (Chapter 284).
Sources
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.