Trade and Service Marks

– Trade Marks Act, 1978.

Membership in International Conventions

– WTO’s TRIPS Agreement, since June 9, 1996.
– Convention Establishing the World Intellectual Property Organization (WIPO), since July 10, 1997.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since June 15, 1999.

Filing

Introduction: the Papua New Guinea Trade Marks Act closely parallels the Australian Trade Marks Act 1955.

Applicant: any person or company, claiming to be the proprietor of the trademark may apply. It is possible for a trademark to be registered by an applicant who does not intend to use the trademark but intends to enter a registered user or to assign it to a corporation about to be founded. 

Foreigners and nationals not living in the country: may apply for registration on the same terms as a local applicant, but must give an address for service in Australia or Papua New Guinea. 

Registration of trademarks: Part A for distinctive marks, Part B for marks capable of becoming distinctive. Trademarks may be registered for goods and services.

Novelty: the trademark must not be deceptively similar to a trademark registered by another person in respect of goods or services of the same description. Prior use by the applicant or permitted user is beneficial as is a similar registration of the proprietor.

Exceptions to protection: (1) surnames, geographical names, and descriptive words, unless use has made them distinctive marks throughout Papua New Guinea; (2) marks contrary to law; (3) marks likely to deceive or cause confusion; and (4) marks including the word patent, registered, registered design, royal or similar words, royal arms, national flags, seats and international symbols. 

Names or portraits: may be registrable if they are distinctive or capable of distinguishing the goods or services.

Priorities: none.

Classification: International Classification of Goods and Services. Only a single class may be covered in an application.

Filing requirements for an application (to be sent to resident agent):
1. An application form signed by the applicant or agent giving full details of the applicant’s name and address, an address for service in New Guinea, and a statement that the applicant is using or intends to use the mark in New Guinea;
2. 1 representation of the mark.

Note: from April 1, 2020, the Intellectual Property Office of Papua New Guinea (IPOPNG) requires all trademark applications to be submitted electronically via email only to the email address (This email address is being protected from spambots. You need JavaScript enabled to view it.).

Examination Procedure

Amendment of application: an application may be amended in order to overcome the Examiner’s objections. 

Examination: applications are subjected to official search for earlier marks in respect of similar goods or services with which the applied mark is considered likely to be confused, to whether the mark is inherently adapted to distinguish the goods or services or is otherwise distinctive and whether the goods or services are properly detailed and classified.

Division: divisional applications may be filed in respect of a part of the mark and/or of the goods or services of the original filing. 

Letters of consent: will be considered to overcome citations. 

Opposition: opposition may be filed within three months of advertisement of the acceptance of the application in the National Gazette. An extension may be obtained provided it is applied for within the first three-month period.

Disputes about ownership: ownership resides in the first user or applicant of the trademark in Papua New Guinea, but in cases of honest concurrent use over a period of years each party may register its mark. 

Appeal: appeals against decisions by the Registrar may be made to the National Court of Papua New Guinea. 

Correction of registration: changes of name of the proprietor or address may be made after registration. Amendment of the specification of goods or services may be made provided there is no extension of the rights; the trademark itself may be amended provided this does not alter the identity of the mark.

Granting

Duration: ten years.

Renewals: for periods of ten years as often as required but on payment of renewal fees. Renewal dates are calculated from the date of filing the application or in the case of a divisional the date of the original filing. Registered user entries become due for renewal with the registration. If mark is used in amended form, an application to amend mark should be lodged with application for renewal.

Obligation to use: a trademark not used for a continuous period of three years may be removed from the Register on application by a third party.

Marking of registered goods and services: is not compulsory but is recommended. 

Text of marking: “Registered” or “Regd.” preferably with the words “trade mark” and the registration number. 

Assignment: may be registered with or without goodwill of the business. Assignment must be registered. 

Licenses: permitted users should be entered on the Register; otherwise the use may reduce the distinctiveness and may not fulfill the requirement to use the trademark. Where application based solely on use by licensee, registered user application to be lodged within three months of application.

Modification of Protection after Registration

Right of prior user: a prior user of a conflicting mark is entitled to registration and to continue using his mark. 

Opposition to registered marks: may be raised by way of application for revocation based on such grounds as improper registration, improper use of the mark, and lack of use of the mark as above.

Re-filing of identical mark: allowable if in the same owner’s name.

Compulsory licenses: no provision.

Infringement: action may be taken in the National Court against any person using the trademark registered or a confusingly similar mark in relation to the goods or services in respect of which the mark is registered.  Use on goods similar to those registered is not an infringement. Penalties for infringement are an injunction, damages and delivery up of infringing articles, literature, etc.

Note: long delays are sometimes experienced in the issuing of certificates or correcting same.