Not every valuable brand is registered. Passing off is the action that protects the rest — a common law cause of action applying in Papua New Guinea as part of the underlying law under Schedule 2 of the Constitution.
The classic trinity
1. Reputation or goodwill attaching to the goods or services in the mind of the purchasing public, by association with the mark, name, get-up or other identifying feature.
2. A misrepresentation by the defendant — whether or not intentional — leading or likely to lead the public to believe that the goods or services offered are those of the plaintiff.
3. Damage, or the likelihood of damage, resulting from the erroneous belief.
| Element | What proves it |
|---|---|
| Reputation | Duration and continuity of trading; sales volumes by year and province; advertising spend and samples; signage and packaging; media coverage; statements from distributors, retailers and trade bodies |
| Misrepresentation | Samples of the defendant’s goods and packaging; side-by-side comparison; evidence of actual confusion — misdirected orders, complaints, returns, mistaken enquiries |
| Damage | Lost sales and margin; diverted custom; loss of licensing opportunity; damage to reputation where the defendant’s goods are inferior |
The goodwill must exist in Papua New Guinea, among the purchasing public here. A brand famous elsewhere but unknown in this market has nothing to protect. And reputation is proved by evidence, gathered and paid for — which is why a registration, which requires none of it, is so much cheaper to enforce.
Passing off and statutory infringement compared
| Infringement (s 53) | Passing off | |
|---|---|---|
| Requires registration | Yes | No |
| Requires reputation | No | Yes |
| Requires damage | No | Yes, or its likelihood |
| What is protected | The mark, for the registered goods | The goodwill of the business, however identified — name, get-up, packaging, slogan, shop layout |
| Scope of goods | Confined to the specification | Whatever the reputation and the risk of confusion extend to |
| Geographic scope | The whole country, subject to limitations on the registration | Only where the reputation exists |
| Proof of title | Certified extract (s 10) | Evidence of trading, built case by case |
| Remedies | Injunction; damages or account, at the plaintiff’s option (s 56) | Injunction; damages or an account, at general law |
Because it protects goodwill rather than a registered sign, passing off can reach things a registration cannot: get-up and packaging as a whole, a trading name, a slogan, the look of a shop, and use on goods outside the registered specification. It is the natural companion claim in most infringement proceedings, and the only claim available where the mark was never registered or the registration has been removed.
Section 59 — the registered defendant’s shield
In an action for passing off arising out of the use by the defendant of a registered trade mark of which he is the registered proprietor or a registered user, being a mark substantially identical with, or deceptively similar to, the plaintiff’s trade mark, damages shall not be awarded against the defendant if he satisfies the court:
(a) that at the time he commenced to use the mark he was unaware, and had no reasonable means of ascertaining, that the plaintiff’s mark was in use; and
(b) that when he became aware of the existence and nature of the plaintiff’s mark he immediately ceased to use his mark on goods in relation to which the plaintiff used it.
- It applies only where the defendant is himself the registered proprietor or a registered user of the mark he used.
- It bars damages only — an injunction and the other relief remain available.
- Both conditions must be satisfied, and the burden is on the defendant.
- Condition (b) requires the defendant to have immediately ceased. A defendant who kept trading after learning of the plaintiff’s mark loses the protection entirely.
The practical lesson for a defendant is to search before adopting, and to stop at once if a prior user emerges. For a plaintiff, it is to give notice early and clearly — from the date the defendant becomes aware, continued use is unprotected.
Before writing a letter of demand
Section 90 applies to threats of proceedings for infringement of a mark that is registered, or alleged by the threatener to be registered. A person threatened may seek a declaration that the threats are unjustifiable, an injunction, and damages, unless the threatener shows the mark is registered and the acts would constitute infringement.
So a demand that asserts registration where there is none is exposed. Where your rights rest on reputation alone, say so — assert passing off, not infringement. Section 90(3) also confirms that the section does not render a lawyer liable for an act done in a professional capacity on behalf of a client.
Related claims
- Section 19(a) — a reputation, registered or not, supports an objection that a mark’s use would be likely to deceive or cause confusion. That is the registry-stage counterpart of passing off, raised in an opposition.
- Copyright and Neighbouring Rights Act 2000 — a copied logo or label is usually also an infringement of copyright in an artistic work, and copyright needs no registration.
- Commercial Advertisement (Protection of the Public) Act — restrictions on misleading commercial advertising.
- Criminal Code Act (Chapter 262) — false pretence and fraud offences, alongside the Part XI trade mark offences.
The strongest position combines them: a registration for the statutory monopoly, copyright in the artwork, and the reputation to support passing off for everything the registration does not cover. For advice, see the law firms directory.
Sources
- Trade Marks Act (Chapter 385) — ss 10, 19, 53, 56, 59, 90; Part XI
- Constitution — Schedule 2.2
- Copyright and Neighbouring Rights Act 2000
- Commercial Advertisement (Protection of the Public) Act
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.