S 453 Session 110 (1993-1994)
S 0453 General Bill, By Hayes
Similar(H 3812)
A Bill to amend Title 39, Chapter 15, Code of Laws of South Carolina, 1976,
relating to labels and trademarks, so as to enact the "Trademarks and Service
Marks Act of 1993" including registration procedures, fees, and civil
penalties; to amend Section 39-15-720, relating to use of trademarks on
timber, so as to conform a reference to this Act; and to repeal Article 3,
Chapter 15, Title 39 relating to trademarks and service marks.
02/23/93 Senate Introduced and read first time SJ-5
02/23/93 Senate Referred to Committee on Labor, Commerce and
Industry SJ-6
02/03/94 Senate Committee report: Majority favorable with amend.,
minority unfavorable Labor, Commerce and Industry SJ-8
Indicates Matter Stricken
Indicates New Matter
COMMITTEE REPORT
February 3, 1994
S. 453
Introduced by SENATOR Hayes
S. Printed 2/3/94--S.
Read the first time February 23, 1993.
THE COMMITTEE ON
LABOR, COMMERCE AND INDUSTRY
To whom was referred a Bill (S. 453), to amend Title 39, Chapter 15,
Code of Laws of South Carolina, 1976, relating to labels and
trademarks, etc., respectfully
REPORT:
That they have duly and carefully considered the same, and
recommend that the same do pass with amendment:
Amend the bill, as and if amended, by adding at the beginning of
Section 1 /Section 39-15-1100. This article may be cited as the
"Trademarks and Services Marks Act of 1994"/.
Amend the bill, further, by adding at the end of SECTION 1:
/Section 39-15-1190. (A) A person who intentionally traffics or
attempts to traffic in goods or services and knowingly uses or should
have known he was using a counterfeit mark on or in connection with
the goods or services is guilty of a misdemeanor and, upon conviction,
if an individual, must be fined not more than five thousand dollars or
imprisoned not more than one year, or both, and if a person other than
an individual, must be fined not more than twenty thousand dollars.
(B) For purposes of this section:
(1) "counterfeit mark" means a spurious mark:
(a) that is used in connection with trafficking in goods or
services;
(b) that is identical with, or substantially indistinguishable
from, a mark registered for those goods or services with the Secretary of
State under this chapter and in use, whether or not the defendant knew
the mark was registered; and
(c) the use of which is likely to cause confusion, to cause
mistake, or to deceive.
A counterfeit mark does not include a mark or designation used in
connection with goods or services of which the manufacturer or
producer, at the time of the manufacture or production in question, was
authorized, by the holder of the right to use the mark or designation, to
use it for designation for the type of goods or services so manufactured
or produced;
(2) "traffic" means to transport, transfer, or dispose
of as consideration for anything of value or to make or obtain control of
with intent so transport, transfer, or dispose of./
Renumber sections to conform.
Amend title to conform.
Majority favorable. Minority unfavorable.
J. VERNE SMITH ROBERT FORD
For Majority. For Minority.
A BILL
TO AMEND TITLE 39, CHAPTER 15, CODE OF LAWS OF SOUTH
CAROLINA, 1976, RELATING TO LABELS AND TRADEMARKS,
SO AS TO ENACT THE "TRADEMARKS AND SERVICE
MARKS ACT OF 1993" INCLUDING REGISTRATION
PROCEDURES, FEES, AND CIVIL PENALTIES; TO AMEND
SECTION 39-15-720, RELATING TO USE OF TRADEMARKS ON
TIMBER, SO AS TO CONFORM A REFERENCE TO THIS ACT;
AND TO REPEAL ARTICLE 3, CHAPTER 15, TITLE 39 RELATING
TO TRADEMARKS AND SERVICE MARKS.
Be it enacted by the General Assembly of the State of South Carolina:
SECTION 1. Title 39, Chapter 15 of the 1976 Code is amended by
adding:
"Article 11
Trademarks and Service Marks
Section 39-15-1105. As used in this article:
(1) `Applicant' means the person filing an application for registration
of a mark under this article and the legal representatives, successors, or
assigns of that person.
(2) `Dilution' means the lessening of the capacity of a registrant's
mark to identify and distinguish goods or services, regardless of the
presence or absence of competition between the parties or the likelihood
of confusion, mistake, or deception.
(3) `Mark' includes a trademark or service mark entitled to
registration under this article whether registered or not.
(4) `Person' and any other word or term used to designate the
applicant or other party entitled to a benefit or privilege or rendered
liable under the provisions of this article includes a juristic person, as
well as a natural person. The term `juristic person' includes a firm,
partnership, corporation, union, association, or other organization
capable of suing and being sued in a court of law.
(5) `Registrant' means the person to whom the registration of a mark
under this article is issued and the legal representatives, successors, or
assigns of that person.
(6) `Secretary' means the Secretary of State or the designee of the
secretary charged with the administration of this article.
(7) `Service mark' means a word, name, symbol, or device or any
combination of these used by a person to identify and distinguish the
services of one person, including a unique service, from the services of
others and to indicate the source of the services, even if that source is
unknown. Titles, character names used by a person, and other
distinctive features of radio or television programs, motion pictures,
newspapers, or magazines may be registered as service marks
notwithstanding that they or the programs, may advertise the goods of
the sponsor.
(8) `Trade name' means a name used by a person to identify a
business or vocation of that person.
(9) `Trademark' means a word, name, symbol, or device or any
combination of these used by a person to identify and distinguish the
goods of that person, including a unique product, from those
manufactured and sold by others and to indicate the source of the goods,
even if that source is unknown.
(10) `Use' means the bona fide use of a mark in the ordinary course
of trade and not made merely to reserve a right in a mark. For the
purposes of this article, a mark is considered in use:
(a) on goods when it is placed in any manner on the:
(i) goods or other containers or the displays associated with the
goods or containers;
(ii) tags or labels affixed to the goods or containers; or
(iii) if the nature of the goods makes placement impracticable,
then on documents associated with the goods or other sale and the goods
are sold or transported in commerce in this State; and
(b) on services when it is used or displayed in the sale or
advertising of services and the services are rendered in this State. For
purposes of this article, a mark is considered `abandoned' when:
(i) its use has been discontinued with intent not to resume that
use. Intent not to resume may be inferred from circumstances. Nonuse
for two consecutive years constitutes prima facie evidence of
abandonment; or
(ii) a course of conduct of the owner, including acts of
omission as well as commission, causes the mark to lose its significance
as a mark.
Section 39-15-1110. (A) A mark by which the goods or services
of an applicant for registration may be distinguished from the goods or
services of others may not be registered if the mark:
(1) consists of or includes immoral, deceptive, or scandalous
matter;
(2) consists of or includes matter which may disparage or falsely
suggest a connection with or bring into contempt or disrepute a person,
living or dead, an institution, belief, or national symbol;
(3) consists of or includes the flag or coat of arms or other
insignia of the United States, a state or municipality, or a foreign nation
or a simulation of the flag, coat of arms, or other insignia of any of
these;
(4) consists of or includes the name, signature, or portrait
identifying a particular living individual, except by the individual's
written consent;
(5) consists of a mark which:
(a) when used on or in connection with the goods or services
of the applicant is merely descriptive or deceptively misdescriptive of
them;
(b) when used on or in connection with the goods or services
of the applicant is primarily geographically descriptive or deceptively
misdescriptive of them; or
(c) is primarily merely a proper name or surname;
(6) consists of or includes a mark which so resembles a mark
registered in this State or a mark or trade name previously used by
another and not abandoned as to be likely, when used on or in
connection with the goods or services of the applicant, to cause
confusion or mistake or to deceive.
(B) However, nothing in subsection (A)(5) prevents the registration
of a mark used by the applicant which has become distinctive of the
applicant's goods or services. The secretary may accept as evidence that
the mark has become distinctive, as used on or in connection with the
applicant's goods or services, by proof of continuous use as a mark by
the applicant in this State for the five years before the date on which the
claim of distinctiveness is made.
Section 39-15-1115. (A) Subject to the limitations set forth in this
article, a person who uses a mark may file in the office of the secretary,
in a manner complying with the requirements of the secretary, an
application for registration of that mark setting forth, but not limited to,
this information:
(1) the name and business address of the person applying for the
registration; and if a corporation, the state of incorporation or if a
partnership, the state in which the partnership is organized and the
names of the general partners, as specified by the secretary;
(2) the goods or services on or in connection with which the mark
is used, the mode or manner in which the mark is used on or in
connection with these goods or services, and the class in which these
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 a predecessor in
interest;
(4) a statement that the applicant is the owner of the mark, that the
mark is in use, and that to the knowledge of the person verifying the
application no other person has registered either federally or in this
State, or has the right to use this mark in its identical form or in near
resemblance as to be likely, when applied to the goods or services of
another person, to cause confusion or to cause mistake or to deceive.
(B) The secretary may also require a statement whether an
application to register the mark or portions or a composite of the mark
has been filed by the applicant or a predecessor in interest in the United
States Patent and Trademark Office; and if so, the applicant shall
provide full particulars including the filing date and serial number of
each application, the status of the application, and if an application was
finally refused registration or has otherwise not resulted in a registration,
the reasons for this.
(C) The secretary also may require that a drawing of the mark,
complying with requirements as the secretary may specify, accompany
the application.
(D) The application must be signed and verified by oath, affirmation,
or declaration subject to perjury laws by the applicant or by a member
of the firm or an officer of the corporation or association applying.
(E) The application must be accompanied by three specimens
showing the mark as actually used and accompanied by the application
fee payable to the Secretary of State.
Section 39-15-1120. (A) Upon the filing of an application for
registration and payment of the application fee, the secretary may
examine the application for conformity with this article.
(B) The applicant shall provide additional pertinent information
requested by the secretary including a description of a design mark and
may make or authorize the secretary to make amendments to the
application as may be reasonably requested by the secretary or
considered by the applicant to be advisable to respond to a rejection or
objection.
(C) The secretary may require the applicant to disclaim an
unregisterable component of a mark otherwise registerable, and an
applicant may voluntarily disclaim a component of a mark sought to be
registered. No disclaimer may prejudice or affect the applicant's or
registrant's rights then existing or thereafter arising in the disclaimed
matter or the applicant's or registrant's rights of registration on another
application if the disclaimed matter is or becomes distinctive of the
applicant's or registrant's goods or services.
(D) Amendments may be made by the secretary to the application
submitted by the applicant with the applicant's consent, or the secretary
may require that the applicant submit a fresh application.
(E) If the applicant is found not to be entitled to registration, the
secretary shall notify the applicant of this and of the reasons registration
was denied. The applicant must be given a reasonable period of time
specified by the secretary in which to reply or to amend the application,
after which the application must be reexamined. This procedure may be
repeated until the secretary finally refuses registration of the mark or the
applicant fails to reply or amend within the specified period, at which
time the application is deemed to have been abandoned.
(F) If the secretary finally refuses registration of the mark, the
applicant may appeal the decision to the circuit court in Richland
County in accordance with the Administrative Procedures Act without
costs to the secretary.
(G) In the instance of applications concurrently being processed by
the secretary seeking registration of the same or confusingly similar
marks for the same or related goods or services, the secretary shall grant
priority to the applications in order of filing. If a prior-filed application
is granted a registration, the other application or applications must be
rejected. A rejected applicant may bring an action for cancellation of the
registration upon grounds of prior or superior rights to the mark in
accordance with Section 39-15-1145 of this article.
Section 39-15-1125. (A) Upon compliance by the applicant with
the requirements of this article, the secretary shall issue a certificate of
registration to the applicant under the signature of the secretary and the
seal of the State. The certificate shall show the name and business
address and if a corporation, the state of incorporation or if a
partnership, the state in which the partnership is organized and the
names of the general partners, as specified by the secretary, of the person
claiming ownership of the mark, the date claimed for the first use of the
mark anywhere, the date claimed for the first use of the mark in this
State, the class of goods or services, a description of the goods or
services on or in connection with which the mark is used, a reproduction
of the mark, the registration date, and the term of the registration.
(B) A certificate of registration issued by the secretary under this
section or a copy of a certificate certified by the secretary is admissible
in evidence as competent and sufficient proof of the registration of the
mark in an action or judicial proceeding in any court of this State.
Section 39-15-1130. (A) A registration of a mark is effective for
five years from the date of registration, and upon application filed within
six months before the expiration of the registration in a manner
complying with the requirements of the secretary, the registration may
be renewed for five years. A renewal fee payable to the secretary shall
accompany the application for renewal of the registration. A registration
may be renewed for successive periods of five years as provided for in
this subsection.
(B) An application for renewal under this article, whether of a
registration made under this article or of a registration effected under
any prior law, shall include a verified statement that the mark has been
and is still in use and a specimen showing actual use of the mark on or
in connection with the goods or services.
Section 39-15-1135. (A) A mark and its registration under this
article is 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. Assignment is by instruments
in writing properly executed and may be recorded with the secretary
upon the payment of the recording fee payable to the secretary who upon
recording of the assignment shall issue in the name of the assignee a new
certificate for the remainder of the term of the registration or of the last
renewal of the registration. An assignment of a registration under this
article is void against a subsequent purchaser for valuable consideration
without notice, unless it is recorded with the secretary within three
months after the date of the assignment or before the subsequent
purchase.
(B) A registrant or applicant effecting a change of the name of the
person to whom the mark was issued or for whom an application was
filed may record a certificate of change of name of the registrant or
applicant with the secretary upon payment of the recording fee. The
secretary may issue in the name of the assignee a certificate of
registration of an assigned application. The secretary may issue in the
name of the assignee a new certificate or registration for the remainder
of the term of the registration or last renewal of the registration.
(C) Other instruments which relate to a mark registered or
application pending pursuant to this article including, but not limited to,
licenses, security interests, or mortgages, may be recorded in the
discretion of the secretary if the instrument is in writing and properly
executed.
(D) Acknowledgement is prima facie evidence of the execution of an
assignment or other instrument, and when recorded by the secretary, the
record is prima facie evidence of execution.
(E) A photocopy of an instrument referred to in subsections (A), (B),
or (C) must be accepted for recording if it is certified to be a true and
correct copy of the original by a party to the instrument or their
successors.
Section 39-15-1140. The secretary shall keep for public
examination a record of all marks registered or renewed under this
article and a record of all documents recorded pursuant to Section
39-15-1135.
Section 39-15-1145. The secretary shall cancel from the register, in
whole or in part:
(1) a registration concerning which the secretary receives a
voluntary request for cancellation of it from the registrant or the assignee
of record;
(2) a registration granted under this article and not renewed in
accordance with this article;
(3) a registration concerning which a court of competent
jurisdiction finds that the:
(a) registered mark has been abandoned;
(b) registrant is not the owner of the mark;
(c) registration was granted improperly;
(d) registration was obtained fraudulently;
(e) mark is or has
become the generic name for the goods or services or a portion of the
goods or services for which it has been registered;
(f) 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 before the date
of the filing of the application for registration by the registrant under this
article, and not abandoned; however, if the registrant proves that the
registrant is the owner of a concurrent registration of a mark in the
United States Patent and Trademark Office covering an area including
this State, the registration under this article may not be canceled for that
area of the State; or
(4) a registration when a court of competent jurisdiction orders
cancellation of the registration on any ground.
Section 39-15-1150. (A) The general classification of goods and
services provided for in subsections (B) and (C) are established for
convenience of administration of this article but does not limit or extend
the applicant's or registrant's rights, and a single application for
registration of a mark may include goods upon which or services with
which the mark is actually being used indicating the appropriate class or
classes of goods or services. When a single application includes goods
or services which fall within multiple classes, the secretary may require
payment of a fee for each class. To the extent practical the classification
of goods and services shall conform to the classification adopted by the
United States Patent and Trademark Office.
(B) The following is the international schedule of classes of goods:
(1) chemical products used in industry, science, photography,
agriculture, horticulture, forestry; artificial and synthetic resins; plastics
in the form of powders, liquids or pastes for industrial use; manures
(natural and artificial); fire extinguishing compositions; tempering
substances and chemical preparations for soldering; chemical substances
for preserving foodstuffs, tanning substances, adhesive substances used
in industry;
(2) paints, varnishes, lacquers; preservatives against rust and
against deterioration of wood, coloring matters,
dyestuffs, mordants, natural resins; metals in foil and powder form for
painters and decorators;
(3) bleaching preparations and other substances for laundry use,
cleaning, polishing, scouring and abrasive preparations, soaps;
perfumery, essential oils, cosmetics, hair lotions; dentifrices;
(4) industrial oils and greases (other than oils and fats and
essential oils); lubricants; dust laying and absorbing compositions; fuels
(including motor spirit) and illuminants; candles, tapers, night lights and
wicks;
(5) pharmaceutical, veterinary, and sanitary substances; infants'
and invalids' foods; plasters, material for bandaging; material for
stopping teeth, dental wax, disinfectants; preparations for killing weeds
and destroying vermin;
(6) unwrought and partly wrought common metals and their
alloys, anchors, anvils, bells, rolled and cast building materials, rails and
other metallic materials for railway tracks, chains (except driving chains
for vehicles), cables and wires (nonelectric), locksmiths' work; metallic
pipes and tubes; safes and cash boxes, steel balls; horseshoes; nails and
screws; other goods in nonprecious metal not included in other classes;
ores;
(7) machines and machine tolls; motors (except for land vehicles);
machine couplings and belting (except for land vehicles); large size
agricultural implements; incubators;
(8) hand tools and instruments; cutlery, forks, and spoons; side
arms;
(9) scientific, nautical, surveying and electrical apparatus and
instruments (including wireless), photographic, cinematographic,
optical, weighing, measuring, signaling, checking (supervision),
life-saving and teaching apparatus and instruments; coin or counterfreed
apparatus; talking machines; cash registers; calculating machines; fire
extinguishing apparatus;
(10) surgical, medical, dental, and veterinary instruments and
apparatus (including artificial limbs, eyes and teeth);
(11) installations for lighting, heating, steam generating, cooking,
refrigerating, drying, ventilating, water supply, and sanitary purposes;
(12) vehicles; apparatus for locomotion by land, air, or water; (13) firearms; ammunition and projectiles; explosive substances;
fireworks;
(14) precious metals and their alloys and goods in precious metals
or coated therewith (except cutlery, forks, and spoons); jewelry, precious
stones, horological and other chronometric instruments;
(15) musical instruments (other than talking machines and wireless
apparatus);
(16) paper and paper articles, cardboard and cardboard articles;
printed matter, newspaper and periodicals, books; bookbinding material;
photographs; stationery, adhesive materials (stationery); artists'
materials; paint brushes; typewriters and office requisites (other than
furniture); instructional and teaching material (other than apparatus);
playing cards; printers' type and cliches (stereotype);
(17) gutta percha, india rubber, balata and substitutes, articles made
from these substances and not included in other classes; plastics in the
form of sheets, blocks and rods, being for use in manufacture, materials
for packing, stopping, or insulating; asbestos, mica and their products;
hose pipes (nonmetallic);
(18) leather and imitations of leather, and articles made from these
materials and not included in other classes; skins, hides; trunks and
traveling bags; umbrellas, parasols and walking sticks; whips, harness
and saddlery;
(19) building materials, natural and artificial stone, cement, lime,
mortar, plaster and gravel; pipes of earthenware or cement; roadmaking
materials; asphalt, pitch and bitumen, portable buildings; stone
monuments; chimney pots;
(20) furniture, mirrors, picture frames; articles (not included in
other classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory,
whalebone, shell, amber, mother-of-pearl, meerschaum, celluloid,
substitutes for all these materials, or of plastics;
(21) small domestic utensils and containers (not of precious metals,
or coated therewith); combs and sponges, brushes (other than paint
brushes); brushmaking materials, instruments and material for cleaning
purposes, steel wool; unworked or semi-worked glass (excluding glass
used in building); glassware, porcelain and earthenware, not included in
other classes;
(22) ropes, string, nets, tents, awnings, tarpaulins, sails, sacks,
padding and stuffing materials (hair, kapok, feathers, seaweed, etc.); raw
fibrous textile materials;
(23) yarns, threads;
(24) tissues (piece goods); bed and table covers; textile articles not
included in other classes;
(25) clothing, including boots, shoes, and slippers);
(26) lace and embroidery, ribands, and braid; buttons, press
buttons, hooks and dyes, pins and needles; artificial flowers;
(27) carpets, rugs, mats, and matting; linoleum and other materials
for covering existing floors; wall hangings (nontextile);
(28) games and playthings; gymnastic and sporting articles (except
clothing); ornaments and decorations for Christmas trees;
(29) meats, fish, poultry, and game; meat extracts; preserved, dried,
and cooked fruits and vegetables; jellies, jams; eggs, milk, and other
dairy products; edible oils and fats; preserves, pickles;
(30) coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes;
flour
and preparations made from cereals; bread, biscuits, cakes, pastry, and
confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard,
pepper, vinegar, sauces, spices; ice;
(31) agricultural, horticultural, and forestry products and grains not
included in other classes; living animals; fresh fruits and vegetables;
seeds; live plants and flowers; foodstuffs for animals, malt;
(32) beer, ale, and porter; mineral and aerated waters and other
nonalcoholic drinks; syrups and other preparations for making
beverages;
(33) wines, spirits, and liqueurs;
(34) tobacco, raw, or manufactures; smokers' articles; matches.
(C) The following is the international schedule of classes of services:
(1) advertising and business;
(2) insurance and financial;
(3) construction and repair;
(4) communication;
(5) transportation and storage;
(6) material treatment;
(7) education and entertainment;
(8) miscellaneous.
Section 39-15-1155. A person who procures or who on behalf of
another person procures the filing or registration of a mark in the office
of the secretary under the provisions of this article by knowingly making
a false or fraudulent representation or declaration orally, in writing, or
by any other fraudulent means is liable to pay all damages sustained in
consequence of the filing or registration to be recovered in a court of
competent jurisdiction by or on behalf of the party injured.
Section 39-15-1160. (A) Subject to Section 39-15-1180 and
subsection (B) of this section, a person is liable in a civil action by the
registrant for the remedies provided in Section 39-15-1170 if the person:
(1) uses without the consent of the registrant a reproduction,
counterfeit, copy, or colorable imitation of a mark registered under this
article in connection with the sale, distribution, offering for sale, or
advertising of goods or services on or in connection with which this use
is likely to cause confusion or mistake or to deceive as to the source of
origin of these goods or services; or
(2) reproduces, counterfeits, copies, or colorably imitates a mark
and applies the reproduction, counterfeit, copy, or colorable imitation to
a label, sign, print, package wrapper, receptacle, or advertisement
intended to be used on or in connection with the sale or other
distribution in this State of these goods or services.
(B) Notwithstanding subsection (A) a person liable under subsection
(A)(2) is not entitled to recover profits or damages unless the acts have
been committed with the intent to cause confusion or mistake or to
deceive.
Section 39-15-1165. (A) The owner of a mark which is famous in
this State is entitled, subject to the principles of equity, to an injunction
against another's use of a mark commencing after the registrant's mark
becomes famous which causes dilution of the distinctive quality of the
registrant's mark and to obtain other relief as is provided in this section.
In determining whether a mark is famous, a court may consider, but is
not limited to considering, these factors:
(1) the degree of inherent or acquired distinctiveness of the mark
in this State;
(2) the duration and extent of use of the mark in connection with
the goods and services;
(3) the duration and extent of advertising and publicity of the
mark in this State;
(4) the geographical extent of the trading area in which the mark
is used;
(5) the channels of trade for the goods or services with which the
registrant's mark is used;
(6) the degree of recognition of the registrant's mark in its and in
the other's trading areas and channels of trade in this State; and
(7) the nature and extent of use of the same or similar mark by
third parties.
(B) The registrant is entitled only to injunctive relief in this State in
an action brought under this section unless the subsequent user wilfully
intended to trade on the registrant's reputation or to cause dilution of the
owner's mark. If wilful intent is proven, the owner is entitled to the
remedies set forth in this article, subject to the discretion of the court and
the principles of equity.
Section 39-15-1170. (A) An owner of a mark registered under this
article may bring an action to enjoin the manufacture, use, display, or
sale of a counterfeit or imitation of the registered mark, and a court of
competent jurisdiction may grant an injunction to restrain the
manufacture, use, display, or sale as the court considers just and
reasonable and may require a defendant to pay the owner profits derived
from or damages suffered due to the wrongful manufacture, use, display,
or sale or to pay both profits and damages. The court also may order
that the counterfeit or imitation in the possession or under the control of
a defendant be delivered to an officer of the court or to the complainant
to be destroyed. The court in its discretion may enter judgment for an
amount not to exceed three times the profits and damages or reasonable
attorneys' fees of the prevailing party, or both, in cases where the court
finds the other party committed the wrongful acts with knowledge or in
bad faith or otherwise according to the circumstances of the case.
(B) The enumeration of a right or remedy in this article does not
affect a registrant's right to prosecute under any penal law of this State.
Section 39-15-1175. (A) An action to require cancellation of a
mark registered pursuant to this article or an appeal from a refusal of the
secretary to register a mark pursuant to this article must be brought in
the circuit court. In an appeal the proceeding must be based solely upon
the record before the secretary. In an action for cancellation the
secretary may not be made a party to the proceeding but must be notified
of the filing of the complaint by the clerk of the court in the county in
which it is filed and must be given the right to intervene in the action.
(B) In an action brought against a nonresident registrant, service may
be effected upon the secretary as agent for service of the registrant in
accordance with the procedures established for service upon nonresident
corporations and business entities under the Rules of Civil Procedure.
Section 39-15-1180. Nothing in this article may adversely affect the
rights or the enforcement of rights in marks acquired in good faith at any
time at common law.
Section 39-15-1185. The secretary shall charge a fee of fifteen
dollars for an original application, a fee of five dollars for a renewal
application, and a fee of three dollars for recording an assignment. The
fees payable under this article are not refundable."
SECTION 2. Section 39-15-720 of the 1976 Code is amended to read:
"Section 39-15-720. Any A person who has
adopted or used a label, trademark, term, design, or device and
has filed obtained a registration for it for record in
the office of the Secretary of State as provided in pursuant
to Article 3 11 of this chapter may use it to mark
and identify timber and when such the label, trademark,
term, design, or device shall be is stamped,
impressed, or indented on timber it shall constitute
constitutes a `brand' within the meaning of this article and
shall be is notice to the world that the owner of
such the brand is the owner of or has some property
right or interest in such the timber or lien
thereon on the timber, as set forth in this article."
SECTION 3. A registration in force on this article's effective date
continues in full force and effect for the date unexpired term of the
registration and may be renewed by filing an application for renewal
with the secretary complying with the requirements of the secretary and
paying the renewal fee as provided for in Section 39-15-1130(A) within
six months before the expiration of the registration.
SECTION 4. The intent of this act is to provide a system of state
trademark registration and protection substantially consistent with the
federal system of trademark registration and protection under the
Trademark Act of 1946, as amended. To that end, the construction given
the federal act should be examined as persuasive authority for
interpreting and construing this Act.
SECTION 5. Article 3, Chapter 15, Title 39 of the 1976 Code is
repealed; however, Article 3 is deemed not repealed and is applicable to
a pending application, suit, proceeding, or appeal for that purpose only
until the application, suit, proceeding, or appeal is finally concluded.
SECTION 6. This act takes effect three months after approval by the
Governor but is not applicable to an application, suit, proceeding, or
appeal then pending for that purpose only.
-----XX----- |