Section 19 of the Trade Marks Act (Chapter 385) is the Act’s absolute bar. It is drafted as a prohibition on the Registrar, not a discretion.
Section 19 — the prohibition
(a) the use of which would be likely to deceive or cause confusion; or
(b) the use of which would be contrary to law; or
(c) which comprises or contains scandalous or otherwise offensive matter; or
(d) which would otherwise be not entitled to protection in a court of justice.
Compare section 20, where the Registrar “may refuse”. Section 19 leaves no room: a mark within any of the four limbs is not registrable, and no conditions, limitations or disclaimers can cure it. A mark registered in breach of section 19 remains vulnerable forever — section 52(b) makes section 19 an express exception to conclusive validity after 10 years.
Limb (a) — likely to deceive or cause confusion
This is the widest of the four, and the most commonly relied on. It covers two distinct situations.
- Deception about the goods themselves. A mark that misstates the nature, quality, origin or composition of the goods — a place name for goods not from there, a description of a material the goods are not made of, an implication of an approval or standard that does not exist.
- Confusion with another trader. Where the mark would lead the public to associate the goods with someone else’s business. This overlaps with section 24, but is wider: section 24 compares the mark with registered or applied-for marks; section 19(a) can be raised by reference to an unregistered reputation.
The use of a registered mark on goods with which the user has a form of connexion in the course of trade is not deemed likely to deceive or cause confusion on the ground only that the mark has been or is used on goods with which that person, or a predecessor in title, had a different form of connexion in the course of trade.
So a change from manufacturer to importer, or from retailer to licensor, does not of itself make continued use deceptive. It is the classic answer to a challenge based on a change in the business model behind the mark.
Limb (b) — use contrary to law
The question is whether use of the mark would breach some other law — not whether registration is inconvenient. Examples in the Papua New Guinea context include:
| Source | Effect on a mark |
|---|---|
| National Name (Protection) Act (Chapter 10) | Controls the use of the national name and related expressions in trade |
| National Seal Act (Chapter 11) | Governs the National Seal — see also section 20(1)(e) of this Act |
| Medicines and Cosmetics Act 1999 | Controls claims and labelling for medicines and cosmetics |
| Commercial Advertisement (Protection of the Public) Act | Restricts misleading commercial advertising |
| Copyright and Neighbouring Rights Act 2000 | Use of another’s artistic work as a mark may infringe copyright |
| Criminal Code Act (Chapter 262) | Fraud and false pretence offences beyond Part XI of this Act |
Where use of the mark would itself be an offence or an actionable wrong, limb (b) applies whatever the applicant’s intentions.
Limb (c) — scandalous or otherwise offensive matter
The test is the mark’s content, not the applicant’s motive. It reaches obscene, blasphemous and grossly insulting matter, and matter offensive to a section of the community — which, in Papua New Guinea, includes marks that appropriate or degrade customary, clan or sacred subject matter, or that are demeaning on grounds of race, sex, religion or place of origin.
Section 19(c) sits naturally with the Constitution — the National Goals and Directive Principles on Papua New Guinean Ways, and section 55 on the equality of citizens. Registration is a grant of a State-backed monopoly, and the Act declines to make that grant over offensive matter.
Limb (d) — not entitled to protection in a court of justice
The residual limb. It reaches marks whose adoption or intended use is tainted — typically:
- marks adopted dishonestly, such as a mark copied from a foreign proprietor with knowledge of their reputation and filed to block or extract payment from them;
- marks whose intended use is fraudulent; and
- applications made without any claim to proprietorship — recalling that section 32(1) permits an application only by a person who claims to be the proprietor, and that under section 25, where several persons claim proprietorship, the Registrar may refuse them all until the Court determines their rights.
Where the objection is bad faith, it is usually pleaded under limbs (a) and (d) together.
When and how section 19 comes up
| Stage | How |
|---|---|
| Examination | The Registrar refuses under section 33(2) — there is “no other lawful ground of objection” is not satisfied |
| After acceptance, before registration | The Registrar withdraws acceptance under section 33(6) where it was accepted in error |
| Opposition | A ground in a notice of opposition — and under section 40(7) the Registrar may take a ground into account whether relied on by the opponent or not |
| After registration | Rectification under section 13 — an entry “wrongly made or wrongly remaining” |
| In infringement proceedings | As an attack on validity; section 50 presumes validity only unless the contrary is shown |
| After 10 years | Still available — section 52(b) expressly preserves section 19 as an exception to conclusive validity |
Before you adopt the mark
- Test the mark against each limb before spending anything on packaging or signage.
- Check for an existing reputation, registered or not. Limb (a) is not confined to the Register.
- Check the sector’s own regulation — medicines, cosmetics, food and advertising all carry separate controls that can make use contrary to law.
- Do not use customary or sacred material without the authority of the community concerned.
- Do not file over someone else’s foreign brand. Limb (d) exists for exactly that, and section 52 never cures it.
Sources
- Trade Marks Act (Chapter 385) — ss 13, 19, 20, 24, 25, 32, 33, 40, 50, 52, 86
- National Name (Protection) Act (Chapter 10)
- National Seal Act (Chapter 11)
- Medicines and Cosmetics Act 1999
- Commercial Advertisement (Protection of the Public) Act
- Constitution — National Goals and Directive Principles; s 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.