S*5 Session 104 (1981-1982)
S*0005(Rat #0137, Act #0092 of 1981) General Bill, By H.C. Smith and Saleeby
A Bill to amend Article 3, Chapter 15, of Title 39, Code of Laws of South
Carolina, 1976, relating to trademarks, so as to include service marks; to
define trade name; to provide that legal actions pending prior to the
effective date of this Act shall not be affected; and to provide for changes
that will make South Carolina Laws relating to trademarks conform more closely
with the provisions of the Model State Trademark Law.-at
12/02/80 Senate Prefiled
12/02/80 Senate Referred to Committee on Labor, Commerce and Industry
01/13/81 Senate Introduced and read first time SJ-51
01/13/81 Senate Referred to Committee on Labor, Commerce and
Industry SJ-51
01/29/81 Senate Committee report: Favorable Labor, Commerce and
Industry SJ-11
02/03/81 Senate Read second time SJ-15
02/04/81 Senate Read third time and sent to House SJ-9
02/05/81 House Introduced and read first time HJ-503
02/05/81 House Referred to Committee on Judiciary HJ-503
05/13/81 House Committee report: Favorable with amendment
Judiciary HJ-2352
05/20/81 House Amended HJ-2514
05/20/81 House Read second time HJ-2518
05/21/81 House Read third time HJ-2589
05/21/81 House Returned HJ-2589
05/27/81 Senate Concurred in House amendment and enrolled SJ-10
06/03/81 Senate Ratified R 137 SJ-11
06/04/81 Signed By Governor
06/04/81 Effective date 06/04/81
06/04/81 Act No. 92
06/18/81 Copies available
(A92, R137, S5)
AN ACT TO AMEND ARTICLE 3, CHAPTER 15, OF TITLE 39, CODE OF LAWS OF SOUTH
CAROLINA, 1976, RELATING TO TRADEMARKS, SO AS TO INCLUDE SERVICE MARKS; TO DEFINE
TRADE NAME; TO PROVIDE THAT LEGAL ACTIONS PENDING PRIOR TO THE EFFECTIVE DATE OF
THIS ACT SHALL NOT BE AFFECTED; AND TO PROVIDE FOR CHANGES THAT WILL MAKE SOUTH
CAROLINA LAWS RELATING TO TRADEMARKS CONFORM MORE CLOSELY WITH THE PROVISIONS OF
THE MODEL STATE TRADEMARK LAW.
Be it enacted by the General Assembly of the State of South Carolina:
Trademarks and service marks
SECTION 1. Article 3, Chapter 15, of Title 39 of the 1976 Code is amended to
read:
"ARTICLE 3
TRADEMARKS AND SERVICE MARKS GENERALLY
Section 39-15-110. Definitions. As used in this article:
(1) 'Trademark' means any word, name, symbol or device or any combination
thereof adopted and used by a person to identify goods made or sold by him and
to distinguish them from goods made or sold by others.
(2) 'Service mark' means a mark used in the sale or advertising of services to
identify the services of one person and to distinguish them from the services of
others.
(3) 'Mark' means any trademark or service mark entitled to registration under
this article whether registered or not.
(4) 'Trade name' means a word, name, symbol, device or any combination thereof
used by a person to identify his business, vocation or occupation and to
distinguish it from the business, vocation or occupation of others.
(5) 'Person' means any individual, firm, partnership, corporation, association,
union or other organization.
(6) 'Applicant' means the person filing an application for registration of a
mark, his legal representatives, successors or assigns.
(7) 'Registrant' means the person to whom the registration of a mark is issued,
his legal representatives, successors or assigns.
For the purposes of this article a mark shall be deemed to be used in this
State:
(a) On goods when it is placed in any manner on the goods or their containers
or on the tags or labels affixed thereto and such goods are sold or otherwise
distributed in this State.
(b) On services when it is used or displayed in the sale or advertising of
services which are rendered in this State.
Section 39-15-120. Types of marks which shall not be required. A mark by which
the goods or services of any applicant for registration may be distinguished from
the goods or services of others shall not be registered if it:
(1) Contains immoral, deceptive or scandalous matter.
(2) Contains matter which may disparage or falsely suggest a connection with
persons, living or dead, institutions, beliefs or national symbols or bring them
into contempt or disrepute.
(3) Contains the flag or coat of arms or other insignia of the United States
or of any state or municipality or of any foreign nation, or any simulation
thereof.
(4) Contains the name, signature or portrait of any living individual, except
with his written consent.
(5) When applied to the goods or services of an applicant:
(a) Is merely descriptive or deceptively misdescriptive of them.
(b) Is primarily geographically descriptive or deceptively misdescriptive
of them.
(c) Is primarily merely a surname, provided, however, a surname used as a
signature or identifying mark by an artist upon a work of art may be registered.
Nothing in this item shall prevent the registration of a mark used in this
State by an applicant which has become distinctive of an applicant's goods or
services. The Secretary of State may accept as evidence that the mark, as applied
to the applicant's goods or services, has become distinctive proof of continuous
use thereof as a mark by an applicant in this State or elsewhere for the five
years preceding the date of the filing of the application for registration.
(6) Consists of or comprises a mark which so resembles a mark registered in this
State or a mark or trade name previously used in this State by another which is
not abandoned as to be likely, when applied to the goods of the applicant, to
cause confusion or mistake or to deceive.
Section 39-15-130. Filing and contents of application for registration;
specimen, fee. Subject to the limitations of this article, any person who adopts
and uses a mark in this State may file in the office of the Secretary of State,
on a form to be furnished by that office, an application for registration of such
mark including, but not limited to, the following information:
(1) The name and business address of the person applying for the registration
and, if a corporation, the state of incorporation.
(2) The goods or services with which the mark is used and the mode or manner
in which the mark is used with the goods or services and the class in which the
goods or services fall.
(3) The date when the mark was first used anywhere and the date when it was
first used in this State by the applicant or his predecessor in business.
(4) A statement that the applicant is the owner of the mark and that no other
person has the right to use the mark in this State either in its identical form
or in such near resemblance thereto as might be calculated to deceive or to be
mistaken therefor.
The application shall be signed and verified by the applicant or by a member
of the firm or an officer of the corporation or association applying.
The application shall be accompanied by a specimen or facsimile of the mark in
triplicate and a filing fee of fifteen dollars payable to the Secretary of State.
Section 39-15-140. Issuance and contents of certificate of registration;
admissibility of certificate as evidence. Upon compliance with the requirements
of this article the Secretary of State shall issue a certificate of registration
to the applicant under his signature and the seal of the State. It shall show the
name and business address and, if a corporation, the state of incorporation of
the person claiming ownership of the mark, the date claimed for the first use of
the mark anywhere and the date claimed for the first use of the mark in this
State, the class of goods or services and a description of the goods or services
on which the mark is used, a reproduction of the mark, the registration date and
the term of the registration.
Any such certificate of registration or a copy thereof certified by the
Secretary of State shall be admissible in evidence as proof of the registration
of the mark in any action or judicial proceedings.
Section 39-15-150. Term of registration; renewals and renewal fees.
Registration of a mark shall be effective for ten years from the date of
registration and, upon application filed within six months prior to the
expiration date, on a form to be furnished by the Secretary of State, the
registration may be renewed for a like term. A renewal fee of five dollars
payable to the Secretary of State shall accompany the application. A mark
registered may be renewed for successive periods of ten years in like manner.
The Secretary of State shall notify registrants of the necessity of renewal
within the year preceding the expiration date by writing to their last known
addresses.
Any registration in force on the date this article takes effect shall expire
ten years from the date of the registration or of the last renewal or one year
after the effective date of this article, whichever is later, and may be renewed
by filing an application with the Secretary of State on a form furnished by him
and paying the renewal fee of five dollars within six months prior to the
expiration of the registration.
All applications for renewals shall include a statement that the mark is still
in use in this State.
The Secretary of State shall within six months after the effective date of this
article notify all registrants of marks under previous acts of the date of
expiration of such registrations unless renewed in accordance with the provisions
of this article, by writing to their last known addresses.
Section 39-15-160. Assignment of registered marks; procedure; fee. Any mark and
its registration shall be assignable with the good will of the business in which
the mark is used or with that part of the good will of the business connected
with the use of and symbolized by the mark. Assignments shall be in writing duly
executed and may be recorded with the Secretary of State upon the payment of a
fee of three dollars to the Secretary of State who, upon recording the
assignment, shall issue in the name of the assignee a new certificate for the
remainder of the term of the registration.
An assignment of a registration shall be void as against any subsequent
purchaser for valuable consideration without notice unless it is recorded with
the Secretary of State within three months after its date or prior to such
subsequent purchase.
Section 39-15-170. Function of State Development Board in sale of mark
advertising contents of food products. Any mark or name used to advertise the
chemical or other contents of food products grown in this State or other articles
shall not be sold, bartered or exchanged by any person except through and by the
State Development Board. The board is entrusted with handling by selling, or
otherwise, any mark used for the purpose set forth in this section and may use
under its direction any officer of the State for the purpose of handing such
mark. Any person violating the provisions of this section shall upon conviction
be subject to a fine or imprisonment, in the discretion of the court.
Section 39-15-180. Records of marks shall be public. The Secretary of State
shall keep for public examination a record of all registered marks.
Section 39-15-190. Cancellation of registration. The Secretary of State shall
cancel from the register:
(1) After one year from the effective date of this article, all registrations
which are more than ten years old which have not been renewed.
(2) Any registration for which the Secretary of State receives a voluntary
request for cancellation from the registrant or the assignee of record.
(3) All registrations granted under this article which are not renewed.
(4) Any registration concerning which a court of competent jurisdiction finds:
(a) That the registered mark has been abandoned.
(b) That the registrant is not the owner of the mark.
(c) That the registration was granted improperly.
(d) That the registration was obtained fraudulently.
(e) That the registered mark is so similar, as to be likely to cause
confusion or mistake or to deceive, to a mark registered by another person in the
United States Patent and Trademark Office, prior to the date of the filing of the
application for registration by the registrant hereunder, and not abandoned; but,
if the registrant proves that he is the owner of a concurrent registration of his
mark in the United States Patent and Trademark Office covering an area including
this State, the registration shall not be canceled.
(5) A registration ordered canceled by a court of competent jurisdiction on any
ground.
Section 39-15-200. C]asses of goods; each application for registration shall
be confined to one class. The following general classes of goods and services are
established for convenience of administration of this article but not to limit
or extend the applicant's or registrant's rights, and a single application for
registration of a mark may include any or all goods upon which, or services with
which, the mark is actually being used, comprised in a single class, but in no
event shall a single application include goods or services upon which the mark
is being used which fall within different classes of goods or services. The
classes are as follows:
(a) Goods:
(1) Raw or partly prepared materials.
(2) Receptacles.
(3) Baggage, animal equipment, portfolios and pocketbooks.
(4) Abrasives and polishing materials.
(5) Adhesives.
(6) Chemicals and chemical compositions.
(7) Cordage.
(8) Smokers' articles, not including tobacco products.
(9) Explosives, firearms, equipment and projectiles.
(10) Fertilizers.
(11) Inks and inking materials.
(12) Construction materials.
(13) Hardware and plumbing and steam-fitting supplies.
(14) Metals and metal castings and forgings.
(15) Oils and greases.
(16) Paints and painters' materials.
(17) Tobacco products.
(18) Medicines and pharmaceutical preparations.
(19) Vehicles.
(20) Linoleum and oiled cloth.
(21) Electrical apparatus, machines and supplies.
(22) Games, toys and sporting goods.
(23) Cutlery, machinery and tools, and parts thereof.
(24) Laundry appliances and machines.
(25) Locks and safes.
(26) Measuring and scientific appliances.
(27) Horological instruments.
(28) Jewelry and precious metalware.
(29) Brooms, brushes and dusters.
(30) Crockery, earthenware and porcelain.
(31) Filters and refrigerators.
(32) Furniture and upholstery.
(33) Glassware.
(34) Heating, lighting and ventilating apparatus.
(35) Belting, hose, machinery packing and nonmetallic tires.
(36) Musical instruments and supplies.
(37) Paper and stationery.
(38) Prints and publications.
(39) Clothing.
(40) Fancy goods, furnishings and notions.
(41) Canes, parasols and umbrellas.
(42) Knitted, netted and textile fabrics, and substitutes therefor.
(43) Thread and yarn.
(44) Dental, medical and surgical appliances.
(45) Soft drinks and carbonated waters.
(46) Foods and ingredients of foods.
(47) Wines.
(48) Malt beverages and liquors.
(49) Distilled alcoholic liquors.
(50) Merchandise not otherwise classified.
(51) Cosmetics and toilet preparations.
(52) Detergents and soaps.
(b) Services:
(100) Miscellaneous.
(101) Advertising and business.
(102) Insurance and financial.
(103) Construction and repair.
(104) Communications.
(105) Transportation and storage.
(106) Material treatment.
(107) Education and entertainment.
Section 39-15-210. Civil liability for fraudulent registration. Any person who
files for or obtains a registration for himself or on behalf of any other person
by knowingly making any false or fraudulent representation or declaration,
verbally or in writing, or by any other fraudulent means, shall be liable to pay
all damages sustained inconsequence of such filing or registration, to be
recovered by or on behalf of the injured party in any court of competent
jurisdiction.
Section 39-15-220. Civil liability for certain uses of imitation of registered
mark. Subject to the provisions of Section 39-15-240, any person who shall:
(1) Use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of a mark in connection with the sale,
offering for sale or advertising of any goods or services on or in connection
with which use is likely to cause confusion or mistake or to deceive as to the
source of origin of such goods or services; or
(2) Reproduce, counterfeit, copy or colorably imitate any such mark and apply
such reproduction, counterfeit, copy or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be used
upon or in conjunction with the sale or other distribution in this State of such
goods or services; shall be liable to a civil action by the owner of such
registered mark for any or all of the remedies provided in Section 39-15-230,
except that under item (2) the registrant shall not be entitled to recover
profits or damages unless the acts have been committed with knowledge that the
mark is intended to be used to cause confusion or mistake or to deceive.
Section 39-15-230. Injunction and recovery of profits and damages for
manufacture, use, display or sale of imitations. Any owner of a mark may proceed
by suit to enjoin the manufacture, use, display or sale of any counterfeits or
imitations thereof and any court of competent jurisdiction may grant injunctions
to restrain such manufacture, use, display or sale as may be by the court deemed
just and reasonable and may require the defendants to pay to the owner all
profits derived therefrom and all damages suffered by reason of such wrongful
manufacture, use, display or sale. The court may also order that any such
counterfeits or imitations in the possession or under the control of any
defendant in the case be delivered to an officer of the court or to the
complainant to be destroyed.
The enumeration of any right or remedy herein shall not affect a registrant's
right to prosecute under any penal law of this State.
Section 39-15-240. Common law rights not affected by article. Nothing in this
article shall adversely affect the rights or the enforcement of rights in marks
acquired in good faith at any time at common law."
Not to affect pending actions
SECTION 2. Any legal actions pending prior to the effective date of this act
shall not be affected or abated by the provisions of this act.
Analysis lines
Section 3. The analysis lines in the code sections in this act are not
intended as part of the sections but are only for purposes of identification.
Time effective
Section 4. This act shall take effect upon approval by the Governor. |