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Trade Marks
Fifty questions and answers on the Trade Marks Act (Chapter 385) - what a trade mark is, what can and cannot be registered, how to apply, opposition, what registration gives you, infringement, assignment, and how a mark is lost.
A trade mark is the sign that tells a customer where goods or services come from. In Papua New Guinea trade marks are governed by the Trade Marks Act (Chapter 385), which establishes a Register, sets out what may be registered and on what conditions, and gives the registered proprietor the exclusive right to use the mark for the goods it is registered for. Unregistered marks are not without protection - but the protection is different, harder to prove, and generally more expensive to enforce.
Jump to a subject
50 questions and answers, grouped by subject.
- What a trade mark is — 7 questions
- What can be registered — 9 questions
- Applying for registration — 8 questions
- What registration gives you — 8 questions
- Infringement and enforcement — 9 questions
- Dealings, alteration and loss of a mark — 9 questions
What a trade mark is
What a trade mark is and does, the Register, the Registrar, and the difference between a registered and an unregistered mark.
What Is a Trade Mark?
What a trade mark is under the PNG Trade Marks Act (Chapter 385): the statutory definition, what counts as a “mark”, Part A and Part B of the Register, and registered versus unregistered marks.
Read the answer → No. 2What Does the Trade Marks Act Cover?
An overview of the PNG Trade Marks Act (Chapter 385): its fourteen Parts, the key definitions, what a trade mark is, and how registered and unregistered marks are protected.
Read the answer → No. 3Who Is the Registrar of Trade Marks, and What Can He Do?
Part II of the PNG Trade Marks Act (Chapter 385): the Office of Registrar, Deputy Registrars, the seal, powers to summon and take evidence, and powers of amendment.
Read the answer → No. 4What Is the Register of Trade Marks?
Part III of the PNG Trade Marks Act (Chapter 385): the Register, Part A and Part B, the rule against entering trusts, inspection, certificates, and the Register as evidence.
Read the answer → No. 5Do I Need to Register My Trade Mark?
Registered and unregistered trade marks in PNG compared: the rights under sections 49 and 53 of the Trade Marks Act (Chapter 385) against the common law action of passing off.
Read the answer → No. 6What Is the Difference Between Part A and Part B of the Register?
Part A and Part B of the PNG Register of Trade Marks compared — sections 15, 16, 33(5), 49, 51, 52 and 53(2) of the Trade Marks Act (Chapter 385).
Read the answer → No. 7How Are Goods and Services Classified for Trade Marks?
Classification of goods and services under sections 22, 32(3) and 100 of the PNG Trade Marks Act (Chapter 385), including the Registrar’s unappealable class decision.
Read the answer →What can be registered
Distinctiveness, the parts of a registrable mark, marks that cannot be registered, deceptive and scandalous marks, and marks conflicting with earlier rights.
What Can Be Registered as a Trade Mark in Part A?
Section 15 of the PNG Trade Marks Act (Chapter 385) — the essential particulars for registration in Part A of the Register, explained one by one.
Read the answer → No. 9What Can Be Registered in Part B of the Register?
Section 16 of the PNG Trade Marks Act (Chapter 385) — Part B registration, the “capable of becoming distinctive” test, and the section 53(2) limitation on relief.
Read the answer → No. 10What Makes a Trade Mark Distinctive?
Sections 17 and 18 of the PNG Trade Marks Act (Chapter 385): the test for distinctiveness, inherent and acquired, use by a registered user, and colour limitations.
Read the answer → No. 11What Marks Cannot Be Registered at All?
Section 19 of the PNG Trade Marks Act (Chapter 385): the absolute prohibitions on registration, what each limb covers, and how the bar can be raised years later.
Read the answer → No. 12Which Marks May the Registrar Refuse?
Section 20 of the PNG Trade Marks Act (Chapter 385): the discretionary refusal grounds for national symbols, royal devices and claims of official status.
Read the answer → No. 13Can I Register a Person’s Name as a Trade Mark?
Section 21 of the PNG Trade Marks Act (Chapter 385): consent for names and representations of living and recently deceased persons, and how surnames and signatures are treated.
Read the answer → No. 14What Happens if My Mark Is Similar to Another?
Section 24 of the PNG Trade Marks Act (Chapter 385): substantially identical and deceptively similar marks, goods of the same description, and deferral of acceptance.
Read the answer → No. 15What Is Honest Concurrent Use?
Sections 25 and 26 of the PNG Trade Marks Act (Chapter 385): rival claims to proprietorship, honest concurrent use, and the protection of a continuous prior user.
Read the answer → No. 16Can I Register a Series of Trade Marks, or Own One Jointly?
Sections 27 and 31 of the PNG Trade Marks Act (Chapter 385): joint proprietorship of a trade mark, and registration of a series of marks in one registration.
Read the answer →Applying for registration
How to apply, classification of goods, examination, acceptance, advertisement, opposition, and registration.
How Do I Apply to Register a Trade Mark?
Section 32 of the PNG Trade Marks Act (Chapter 385): who may apply, what the application must specify, the one-class rule, and the steps from search to registration.
Read the answer → No. 18How Is a Trade Mark Application Examined?
Section 33 of the PNG Trade Marks Act (Chapter 385): examination of an application, conditions and limitations, amendment, the Part B option, withdrawal of acceptance, and appeals.
Read the answer → No. 19Can a Trade Mark Application Be Divided?
Sections 34 and 35 of the PNG Trade Marks Act (Chapter 385): division of an application, retention of the original date, and applications where the mark will be used by a company to be formed or by a registered user.
Read the answer → No. 20What Happens After My Application Is Accepted?
Sections 36, 37 and 38 of the PNG Trade Marks Act (Chapter 385): notice of acceptance, advertisement by the applicant, withdrawal of an application, and lapse on refusal.
Read the answer → No. 21How Do I Oppose a Trade Mark Application?
Sections 39 and 40 of the PNG Trade Marks Act (Chapter 385): who may oppose, the three-month period, counter statements, evidence, the Registrar’s decision and appeal.
Read the answer → No. 22Can a Trade Mark Opposition Go Straight to Court?
Sections 41, 42 and 43 of the PNG Trade Marks Act (Chapter 385): referral of an opposition to the National Court, security for costs, and withdrawal of an opposition.
Read the answer → No. 23What Is the Date of Registration of a Trade Mark?
Sections 44, 45 and 46 of the PNG Trade Marks Act (Chapter 385): when the Registrar registers a mark, the date of registration, and the 10-year term.
Read the answer → No. 24What Is a Disclaimer on a Trade Mark?
Section 23 of the PNG Trade Marks Act (Chapter 385): when a disclaimer is required, what it does, and what it expressly does not affect.
Read the answer →What registration gives you
The exclusive right, evidence of validity, associated marks, disclaimers, alteration, renewal and restoration.
What Rights Does Registration of a Trade Mark Give?
Sections 48 and 49 of the PNG Trade Marks Act (Chapter 385): the powers of a registered proprietor, the exclusive right, and what happens where two similar marks are both registered.
Read the answer → No. 26How Do I Prove My Trade Mark Is Valid?
Sections 50, 51, 52 and 89 of the PNG Trade Marks Act (Chapter 385): the presumption of validity, the three-year limitation, conclusive validity after 10 years, and certificates of validity.
Read the answer → No. 27What Are Associated Trade Marks?
Sections 28, 29 and 30 of the PNG Trade Marks Act (Chapter 385): association of trade marks, dissolution of an association, the restriction on assignment, and use of one mark counting as use of another.
Read the answer → No. 28Can a Registered Trade Mark Be Altered?
Sections 11 and 12 of the PNG Trade Marks Act (Chapter 385): correcting and altering the Register, and the procedure for altering a registered trade mark itself.
Read the answer → No. 29How Do I Renew a Trade Mark?
Sections 46, 60 and 61 of the PNG Trade Marks Act (Chapter 385): the 10-year term, renewal, the Registrar’s expiry notice, and removal for failure to renew.
Read the answer → No. 30What Happens if I Miss My Trade Mark Renewal?
Sections 62 and 63 of the PNG Trade Marks Act (Chapter 385): restoration of a removed trade mark, and the status of an un-renewed mark against later applicants.
Read the answer → No. 31Can a Trade Mark Become a Generic Name?
Section 47 of the PNG Trade Marks Act (Chapter 385): when a registered word becomes the name or description of an article, the two triggers, and what happens to the proprietor’s rights.
Read the answer → No. 32Does Use for Export Count as Use of a Trade Mark?
Sections 85 and 86 of the PNG Trade Marks Act (Chapter 385): use of a trade mark for export trade, and when a change in the form of connexion in trade is not deceptive.
Read the answer →Infringement and enforcement
What counts as infringement, defences, remedies, passing off, groundless threats, and the criminal offences in Part XI.
What Is Trade Mark Infringement?
Section 53 of the PNG Trade Marks Act (Chapter 385): the elements of infringement, the deceptive similarity test, and the special defence available against a Part B mark.
Read the answer → No. 34Can I Remove or Alter a Trade Mark on Goods I Own?
Section 54 of the PNG Trade Marks Act (Chapter 385): infringement by breach of restrictions, the notice requirement, the acts caught, and the good faith purchaser exception.
Read the answer → No. 35What Acts Do Not Infringe a Trade Mark?
Section 55 of the PNG Trade Marks Act (Chapter 385): the five statutory defences to trade mark infringement, and the effect of conditions and limitations.
Read the answer → No. 36What Remedies Can I Get for Trade Mark Infringement?
Sections 56, 57, 58, 89 and 92 of the PNG Trade Marks Act (Chapter 385): relief in infringement actions, evidence of trade usage, jurisdiction, certificates of validity and pleading.
Read the answer → No. 37What Is Passing Off?
Passing off in Papua New Guinea: the three elements, how it differs from statutory infringement, and the effect of section 59 of the Trade Marks Act (Chapter 385).
Read the answer → No. 38What Are Groundless Threats of Trade Mark Proceedings?
Section 90 of the PNG Trade Marks Act (Chapter 385): the groundless threats action, who may bring it, the two defences, the lawyer exemption, and the counter-claim under section 91.
Read the answer → No. 39What Are the Criminal Offences for Trade Mark Forgery?
Sections 75, 76, 80 and 81 of the PNG Trade Marks Act (Chapter 385): forgery of a trade mark, false application, the deeming provisions, penalties, and the burden of proof.
Read the answer → No. 40Can Goods with False Trade Marks Be Seized?
Sections 77, 78 and 79 of the PNG Trade Marks Act (Chapter 385): importing goods with false marks, forfeiture on conviction, and liability for acts done outside the country.
Read the answer → No. 41Is It an Offence to Falsely Claim a Mark Is Registered?
Section 103 of the PNG Trade Marks Act (Chapter 385): false representations about registration, when the word “registered” refers to a foreign registration, and the four prohibited representations.
Read the answer →Dealings, alteration and loss of a mark
Assignment and transmission, registered users and licensing, alteration and correction of the Register, non-use removal, and rectification.
Can I Sell or Assign a Trade Mark?
Section 73 of the PNG Trade Marks Act (Chapter 385): assignment and transmission of a registered trade mark, the invalidity rules, the exceptions, and the three-year limitation.
Read the answer → No. 43How Is an Assignment of a Trade Mark Registered?
Section 74 of the PNG Trade Marks Act (Chapter 385): registering title on an assignment or transmission, proof of title, appeal, and the inadmissibility of unregistered instruments.
Read the answer → No. 44What Is a Registered User of a Trade Mark?
Section 64 of the PNG Trade Marks Act (Chapter 385): registering a user of a trade mark, the joint application, public interest and trafficking, the period, and confidentiality.
Read the answer → No. 45How Is a Registered User Registration Varied or Cancelled?
Sections 65 to 68 and 72 of the PNG Trade Marks Act (Chapter 385): expiry, renewal, variation, extension and cancellation of a registered user, and the appeal right.
Read the answer → No. 46What Are the Rights of a Registered User?
Sections 69, 70 and 71 of the PNG Trade Marks Act (Chapter 385): the effect of permitted use, previous use by the user, common law rights of the proprietor, infringement proceedings, and the bar on assignment.
Read the answer → No. 47How Can a Trade Mark Be Removed for Non-Use?
Section 14 of the PNG Trade Marks Act (Chapter 385): the two non-use grounds, the goods of the same description answer, place and export limitations, and special circumstances in the trade.
Read the answer → No. 48How Is the Trade Marks Register Rectified?
Section 13 of the PNG Trade Marks Act (Chapter 385): rectification of the Register by the National Court, the four heads, breach of conditions, and removal from Part A to Part B.
Read the answer → No. 49How Do I Appeal a Trade Marks Decision?
Part XII of the PNG Trade Marks Act (Chapter 385): the Court’s powers on appeal, intervention by the Registrar, special cases, security for costs, extension of time and service of documents.
Read the answer → No. 50What Happened to Trade Marks Registered Before 1980?
Part XIV of the PNG Trade Marks Act (Chapter 385): the transitional scheme for proprietors registered on the Australian Register at 15 September 1975, priority, backdating and the bar on retrospective claims.
Read the answer →Acts are amended, and figures and time limits change. Every article names the sections it relies on so you can read them. 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.