Sections 25 and 26 of the Trade Marks Act (Chapter 385) deal with what happens when more than one trader has a genuine claim to the same or a similar mark.
Section 25 — rival claims to proprietorship
Where each of several persons claims to be the proprietor of a trade mark, the Registrar may refuse to accept an application for registration by any of them until their respective rights have been determined by the Court.
This is a different problem from section 24. Section 24 concerns two different marks that are too close. Section 25 concerns one mark that two or more people each say is theirs — typically after a partnership breaks up, a distributorship ends, a family business splits, or a company is deregistered and former officers each carry on trading under the name.
Under section 32(1) only a person who claims to be the proprietor may apply. Proprietorship is a question of general law — who first used the mark as a mark, on whose account, and under what agreement. That is a matter for the National Court, not for the registry, and section 25 lets the Registrar hold everything until it is resolved.
The practical consequence is delay for everyone. Where a business relationship is ending, settling ownership of the mark in the separation agreement is far cheaper than a section 25 stand-off.
Section 26(1) — honest concurrent use
In case of honest concurrent use, or of other special circumstances which in the opinion of the Registrar make it proper to do so, the Registrar may permit the registration of trade marks which are substantially identical or deceptively similar — or which, but for the honest concurrent use or special circumstances, would be deceptively similar — for the same or different goods, by more than one proprietor, subject to such conditions and limitations (if any) as the Registrar imposes.
The section recognises a commercial reality: in a country where markets have historically been regional, two traders can each adopt the same word in good faith, in different places, without either knowing of the other. Refusing both, or preferring the first to file, would destroy value honestly built.
| Factor | What is looked at |
|---|---|
| Honesty of adoption | Whether the applicant knew of the other mark when it adopted its own. Knowledge is usually fatal |
| Length of use | How long the applicant has used the mark, and continuously |
| Extent of use | Sales volumes, advertising, geographic spread across the country |
| Actual confusion | Whether any confusion has in fact occurred over the period of concurrent trading |
| Relative inconvenience | The hardship to the applicant if refused, against the risk to the earlier proprietor and the public |
| Consent | Whether the earlier proprietor consents — persuasive, though not binding |
Concurrent registration is rarely unconditional. “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. Typical outcomes are a geographic split by province or region, a requirement that the mark always be used with a distinguishing house name, or a narrowing of the goods.
Section 49(2) then makes the rights subject to those conditions or limitations, and section 55(2) confirms that use outside the reach of the registration is not an infringement of it.
Section 26(2) — the continuous prior user
Where a person has, by himself or his predecessors in business, continuously used a trade mark before the use, or before the date of registration, whichever is the earlier, of another registered trade mark by its registered proprietor, his predecessors in business or a registered user, the Registrar shall not refuse to register the first-mentioned trade mark by reason of the registration of that other trade mark.
Note the strength of the language: “shall not refuse”. Section 26(1) is a discretion; section 26(2) is a direction. A genuine prior user with continuous use is entitled to registration notwithstanding the later registration, and does not depend on the Registrar’s view of the equities.
The prior user must show use before the earlier of (i) the other proprietor’s first use and (ii) the date of registration of the other mark — which, under section 45, is the date the other application was lodged. Everything therefore turns on dated evidence of your own first use.
Section 26(2) has a defensive twin. Under section 55(1)(c), the use of a mark by a person who has, by himself or his predecessors in business, continuously used it from a date before the registered proprietor’s use or registration, whichever is earlier, is not an infringement. So the same facts both secure a registration and answer an infringement claim.
Proving continuous prior use
- First-use documents — the earliest dated invoice, receipt, order, delivery docket or advertisement bearing the mark.
- Continuity — a spread of dated documents across each year since. Gaps are the weak point, and section 26(2) requires the use to have been continuous.
- Use as a trade mark — on the goods, their packaging, labels, signage or advertising. Section 1(2) treats use in relation to goods as use on, or in physical or other relation to, them.
- Predecessors in business — if you rely on a predecessor’s use, the documents showing the succession to the business.
- Sworn evidence — the Registrar may receive evidence on oath and require the production of documents under section 5(1).
Living with two concurrent registrations
Section 49(3) governs the relationship. Where two or more persons are proprietors of registered marks that are substantially identical or deceptively similar, whether for the same or different goods, neither acquires rights of exclusive use as against the other by registration — except so far as their respective rights have been defined by the Registrar or a court — but each has the same rights against everyone else as a sole proprietor would.
Two consequences follow. First, the conditions and limitations imposed under section 26(1) are not incidental: they are the only definition of where one proprietor’s rights end and the other’s begin. Second, section 55(1)(e) makes the use of one of two or more substantially identical registered marks, in exercise of the right given by registration, not an infringement of the other.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 5, 24–26, 32, 33, 45, 49, 53, 55
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.