Part VII of the Trade Marks Act (Chapter 385) sets out what a registration is worth. Sections 48 and 49 are its foundation.
Section 49(1) — the right itself
Subject to this Act, the registration of a trade mark in Part A or Part B of the Register, if valid, gives to the registered proprietor:
• the right to the exclusive use of the trade mark in relation to the goods in respect of which the trade mark is registered; and
• the right to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
Four qualifications are built into the sentence, and each does real work.
| Words | Effect |
|---|---|
| “Subject to this Act” | The right is subject to the section 55 defences, the section 53(2) limitation on Part B relief, and removal under sections 13 and 14 |
| “Part A or Part B” | The right is the same in both Parts; the differences appear in ss 51, 52 and 53(2) |
| “If valid” | Registration is not a guarantee. Section 50 presumes validity unless the contrary is shown |
| “In relation to the goods in respect of which registered” | The specification is the boundary. Use on other goods is outside the right — which is why the specification matters |
Section 49(2) — subject to conditions and limitations
The rights acquired by registration are subject to any conditions or limitations to which the registration is subject.
“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 to a market outside the country. Conditions and limitations are imposed under section 33(1) on acceptance, under section 40(6)(b) or 41(3)(b) on an opposition, and under section 26(1) in concurrent-use cases. A disclaimer under section 23 works in the same way, cutting down the claim to part of the mark.
Section 55(2) is the mirror image: where a mark is registered subject to conditions or limitations, it is not infringed by use in relation to goods to be sold or traded in a place, or exported to a market, or in any other circumstances, to which the registration does not extend. And under section 13(2) the Court may cancel or vary a registration on the ground of failure to observe, or contravention of, a condition or limitation entered in the Register.
Section 49(3) — when two proprietors hold similar marks
Where two or more persons are proprietors of registered trade marks which are substantially identical or deceptively similar, whether for the same or different goods, rights of exclusive use of either of those marks are not acquired by any one of them as against any other of them by registration — except so far as their respective rights have been defined by the Registrar or a court — but each has otherwise the same rights against other persons (not being registered users) as if he were the sole registered proprietor.
Coexisting registrations arise under section 26, and under section 49(3) neither proprietor can sue the other on the registration. The only thing that defines where one proprietor’s rights end and the other’s begin is the set of conditions and limitations the Registrar or the Court has laid down.
So in a concurrent-use negotiation, the limitations are not paperwork — they are the whole of the bargain. Get them expressed precisely: which provinces, which goods, which mode of use, what house name must accompany the mark.
Against everyone else, though, each proprietor is in the same position as a sole proprietor. And under section 55(1)(e), the use of one of two or more substantially identical registered marks, in exercise of the right given by registration, is not an infringement of the other.
Section 48 — powers of registered proprietors
(1) Subject to this Act, the registered proprietor has — subject to any rights appearing from the Register to be vested in some other person — power to assign the trade mark and to give good discharges for any consideration for the assignment.
(2) Equities in respect of a trade mark may be enforced in like manner as in respect of other personal property.
Subsection (1) makes the Register the reference point for a purchaser: the registered proprietor can sell and give a good receipt, subject only to rights appearing from the Register. Subsection (2) preserves equities — trusts, agreements to assign, security interests, rights arising from a partnership or joint venture — enforceable as they would be over any other personal property.
The tension between them is resolved by section 7: a notice of trust is never entered in the Register. A beneficial owner therefore cannot warn the world through the Register, and must protect their position by contract, by taking the registration in their own name, or by a registered user entry.
What the right does not give you
- No right over other goods. The exclusive right is limited to the registered goods. A reputation extending beyond them is protected, if at all, by passing off.
- No right against an honest namesake or an honest description. Section 55(1)(a) and (b) preserve the good faith use of one’s own name and of a description of the character or quality of goods.
- No right against a continuous prior user. Section 55(1)(c).
- No right against a co-proprietor of a similar registered mark, except as defined by the Registrar or a court. Section 49(3).
- No relief on a Part B mark where the defendant proves confusion is not likely. Section 53(2).
- No protection against your own inaction. Three years of non-use exposes the mark under section 14; failure to renew under section 61(2) can end it.
The registration is a strong right, but it is a defined one. What it defines is set at the application stage — which is why the specification, the Part, and the conditions accepted on the way in decide how much the registration is worth years later.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 7, 13, 14, 23, 26, 33, 40, 41, 48–56, 61
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.