HOUSE BILL NO. 1363 AMENDMENT IN THE NATURE OF A SUBSTITUTE (Proposed by the House Committee for Courts of Justice on February 1, 2008) (Patron Prior to Substitute--Delegate Cline) A BILL to amend and reenact §§ 59.1-92.2, 59.1-92.12, and 59.1-92.13 of the Code of Virginia, relating to the registration and protection of trademarks and service marks; penalties.

Be it enacted by the General Assembly of Virginia:

1.  That §§ 59.1-92.2, 59.1-92.12, and 59.1-92.13 of the Code of Virginia are amended and reenacted as follows:

§ 59.1-92.2. Definitions.

As used in this chapter, the following words shall have the following meanings:

"Abandoned" means either (i) the discontinuance of use of a mark with intent not to resume such use ("intent not to resume" may be inferred from circumstances, i.e., nonuse for three consecutive years shall constitute prima facie evidence of abandonment) or (ii) any course of conduct of the owner, including acts of omission as well as commission, which causes the mark to lose its significance as a mark.

"Applicant" means any person filing an application for registration of a mark under this chapter, and the legal representatives, successors, or assigns of such person.

"Commission" means the State Corporation Commission.

"Mark" means any trademark or service mark registered in the Commonwealth or on the principal register in the United States Patent and Trademark Office entitled to registration under this chapter, whether registered or not.

"Registrant" means any person to whom the registration of a mark under this chapter or prior law is issued, and the legal representatives, successors, or assigns of such person.

"Service mark" means any word, name, symbol, or device or any combination thereof used by a person to identify and distinguish the services of such person from the services of others.

"Trade name" means any name used by a person to identify a business or enterprise.

"Trademark" means any word, name, symbol, or device or any combination thereof used by a person to identify and distinguish the goods of such person from those manufactured or sold by others.

"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 chapter, a mark shall be deemed to be in use (i) on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or otherwise distributed in commerce in this the Commonwealth, and (ii) in connection with services when it is used or displayed in the course of selling or providing services in this the Commonwealth, or advertising descriptive of services available within this the Commonwealth that is communicated within or into this the Commonwealth.

§ 59.1-92.12. Infringement.

Subject to the provisions of § 59.1-92.15, any person who:

1. Uses in this Commonwealth in a manner likely to cause confusion or mistake or to deceive as to the source or origin of any goods or services, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter or prior law in connection with the sale, offering for sale, distribution, or advertising of any such goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source or origin of such goods or services; or

2. Reproduces, counterfeits, copies or colorably imitates a registered mark and applies such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements, or any item intended to be used in this Commonwealth in a manner likely to cause confusion or mistake or to deceive as to the source or origin of any goods or services in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive, shall be liable in a civil action by the registrant for any and all of the remedies provided in § 59.1-92.13, except that under this subdivision the registrant shall not be entitled to recover profits, damages, or attorneys' fees unless the acts have been committed with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive.

§ 59.1-92.13. Remedies and penalties.

A. Any registrant of a mark in force and effect may proceed by suit in a court of competent jurisdiction to enjoin violations of § 59.1-92.12 and/or seek such other remedies as are set forth herein. Any court of competent jurisdiction may grant such injunctions as may by the court be deemed just and reasonable to restrain such violations, and may require any defendant to pay to such registrant all profits derived from and/or all damages suffered by reason of such violations. The court may shall also order that any material that violates § 59.1-92.12 that is in the possession or under the control of any defendant in such case be destroyed, or delivered to an officer of the court or to the registrant for destruction or alternatively disposed of in another manner with the written consent of the registrant. The court, in its discretion upon consideration of the circumstances of the case, may award reasonable attorneys' fees to the prevailing party.

B. Any person who:

1. Knowingly and intentionally violates the provisions of § 59.1-92.12 shall be is guilty of a Class 2 1 misdemeanor and, upon a second or subsequent conviction, shall be is guilty of a Class 6 felony.

2. Knowingly and intentionally violates the provisions of § 59.1-92.12 and possesses 100 or more identical counterfeit marks or possesses counterfeit items valued at $200 or more, is guilty of a Class 6 felony.

C. Property subject to lawful seizure by any officer charged with enforcing this chapter shall include any article bearing or consisting of a counterfeit mark used in violation of this chapter, any property used in the substantial connection with or intended for use in the course of a violation of this chapter, or any interest or profits substantially connected to a violation of this chapter. Forfeiture, seizure, and disposition of such property shall be in accordance with Chapter 22 (§ 19.2-369 et seq.) of Title 19.2. 

D. In any proceeding under this chapter, any certificate of registration issued by the Commonwealth, any other state or federal entity shall be prima facie evidence of the facts stated therein.

2. That the provisions of this act may result in a net increase in periods of imprisonment or commitment.  Pursuant to § 30-19.1:4, the estimated amount of the necessary appropriation cannot be determined for periods of imprisonment in state adult correctional facilities and cannot be determined for periods of commitment to the custody of the Department of Juvenile Justice.

HOUSE BILL NO. 1363 Offered January 9, 2008 Prefiled January 9, 2008 A BILL to amend and reenact §§ 59.1-92.2, 59.1-92.12, and 59.1-92.13 of the Code of Virginia, relating to the registration and protection of trademarks and service marks; penalties. ---------- Patron-- Cline ---------- Committee Referral Pending ----------

Be it enacted by the General Assembly of Virginia:

1.  That §§ 59.1-92.2, 59.1-92.12, and 59.1-92.13 of the Code of Virginia are amended and reenacted as follows:

§ 59.1-92.2. Definitions.

As used in this chapter, the following words shall have the following meanings:

"Abandoned" means either (i) the discontinuance of use of a mark with intent not to resume such use ("intent not to resume" may be inferred from circumstances, i.e., nonuse for three consecutive years shall constitute prima facie evidence of abandonment) or (ii) any course of conduct of the owner, including acts of omission as well as commission, which causes the mark to lose its significance as a mark.

"Applicant" means any person filing an application for registration of a mark under this chapter, and the legal representatives, successors, or assigns of such person.

"Bodily injury" means a cut, abrasion, bruise, burn, disfigurement, illness, impairment of the function of a bodily member, organ, or mental faculty, or any other injury to the body, no matter how temporary.

"Commission" means the State Corporation Commission.

"Counterfeit mark" means a mark:

1. That is applied to or used in connection with any goods, services, labels, prints, packages, receptacles, advertisements, patches, fabric, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, handtags, documentation, packaging, or any other components of any type or nature that are designed, marketed, or otherwise intended to be used on or in connection with any goods or services;

2. That is identical with, or substantially indistinguishable from, a mark registered in this Commonwealth, any other state, or on the principal register in the United States Patent and Trademark Office and in use, whether or not the defendant knew such mark was so registered; and

3. The application or use of which either is (i) likely to cause confusion, mistake or to deceive; or (ii) otherwise intended to be used on or in connection with the goods or services for which the mark is registered.

"Mark" means any trademark or service mark registered in the Commonwealth, any other state, or on the principal register in the United States Patent and Trademark Office and in use, or otherwise entitled to registration under this chapter, whether registered or not.

"Registrant" means any person to whom the registration of a mark under this chapter or prior law is issued, and the legal representatives, successors, or assigns of such person.

"Retail value" means the counterfeiter’s regular selling price for the goods or services; however, if the goods or services bearing a counterfeit mark would appear to a reasonably prudent person to be authentic, then the retail value shall be the price of the authentic counterpart and if no authentic reasonably similar counterpart exists, then the retail value shall be the counterfeiter’s regular selling price. In the case of labels, prints, packages, receptacles, advertisements, patches, fabric, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, handtags, documentation, packaging, or any other components of any type or nature that are designed, marketed, or otherwise intended to be used on or in connection with any goods or services, the retail value shall be determined as if each component was a finished good and valued in accordance with this definition.

"Service mark" means any word, name, symbol, or device or any combination thereof used by a person to identify and distinguish the services of such person from the services of others.

"Trade name" means any name used by a person to identify a business or enterprise.

"Trademark" means any word, name, symbol, or device or any combination thereof used by a person to identify and distinguish the goods of such person from those manufactured or sold by others.

"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 chapter, a mark shall be deemed to be in use (i) on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or otherwise distributed in commerce in this the Commonwealth, and (ii) in connection with services when it is used or displayed in the course of selling or providing services in this the Commonwealth, or advertising descriptive of services available within this the Commonwealth that is communicated within or into this the Commonwealth.

§ 59.1-92.12. Infringement.

Subject to the provisions of § 59.1-92.15, any person who:

1. Uses in this the Commonwealth, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter or prior law, or registered in any state or with the United States government, in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source or origin of such goods or services; or

2. Reproduces, counterfeits, copies or colorably imitates a registered mark and applies such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements, patches, fabric, stickers, badges, emblems, medallions, charms, boxes, containers, cans, cases, handtags, documentation, packaging, or any other components of any type or nature that are designed, marketed, or otherwise intended to be used on or in connection with any goods or services intended to be used in this the Commonwealth in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive, shall be criminally and civilly liable in a civil action by the registrant for any and all of the for, without limitation, the remedies provided in § 59.1-92.13, except that under this subdivision the registrant shall not be entitled to recover profits, damages, or attorneys' fees unless the acts have been committed with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive.

§ 59.1-92.13. Remedies and penalties.

A. Any trademark owner or registrant of a mark in force and effect registered with the Commonwealth, another state, or the United States Patent and Trademark Office may proceed by suit in a court of competent jurisdiction to enjoin violations of § 59.1-92.12 and/or seek such other remedies as are set forth herein. Any court of competent jurisdiction may grant such injunctions as may by the court be deemed just and reasonable to restrain such violations, and may require any defendant to pay to such registrant all profits derived from and/or all damages suffered by reason of such violations. The court may shall also order that any material that violates § 59.1-92.12 that is in the possession or under the control of any defendant in such case be destroyed, or delivered to an officer of the court or to the registrant for destruction delivered to an officer of the court or to the registrant for destruction or alternatively disposed of in another manner with the written consent of the trademark owners or registrant of such mark. The court, in its discretion upon consideration of the circumstances of the case, may award reasonable attorneys' fees to the prevailing party.

B. Any person who:

1. Who knowingly and intentionally violates the provisions of § 59.1-92.12 shall be guilty of a Class 2 misdemeanor and, upon a second or subsequent conviction, shall be guilty of a Class 6 felony manufactures, distributes, transports, offers for sale, sells, or possesses with the intent to sell or distribute any labels, signs, prints, packages, wrappers, receptacles, advertisements, patches, fabric, stickers, badges, emblems, medallions, charms, boxes, containers, cans, cases, handtags, documentation, packaging, or any other components of any type or nature that are designed, marketed, or otherwise intended to be used on or in connection with any goods or services bearing a counterfeit mark shall be guilty of violating this section.

2. Having possession, custody or control of more than 25 goods, labels, signs, prints, packages, wrappers, receptacles, advertisements, patches, fabric, stickers, badges, emblems, medallions, charms, boxes, containers, cans, cases, handtags, documentation, packaging, or any other components of any type or nature bearing a counterfeit mark shall be presumed to possess such items with the intent to sell or distribute.

3. Convicted of an offense under this chapter shall be guilty of a Class 1 misdemeanor; however, (i) any offense involving at least 100 items bearing one or more counterfeit marks shall be guilty of a Class 6 felony and (ii) any offense involving any number of items bearing a counterfeit mark with a retail value of more than $200 shall be guilty of a Class 6 felony.

4. Convicted of a second or subsequent conviction under this chapter shall be guilty of a Class 6 felony.

5. Convicted of any offense under this chapter in which the offender maliciously causes or attempts to cause the bodily injury of another shall be guilty of a Class 3 felony.  If such act be done unlawfully but not maliciously, the offender shall be guilty of a Class 6 felony.

6. Convicted of an offense under this section shall be fined the greater of the fine or fines that may be levied in accordance with existing law or an amount up to three times the retail value of the items (i) seized, (ii) manufactured, (iii) sold, or (iv) any combination or aggregation of the foregoing.

C. The following property shall be subject to forfeiture to the Commonwealth and no property right shall exist in such property:

1. Any article bearing or consisting of a counterfeit mark used in committing a violation of this chapter; and

2. Any property used, in any manner or part, to commit or facilitate the commission of a violation of this chapter. 

Upon conviction under this chapter, the sentencing court shall order, in addition to any other penalty imposed, that the defendant or defendants forfeit to the Commonwealth: (i) any property constituting or derived from any proceeds the person obtained, directly or indirectly, as the result of the offense; (ii) any of the property of the defendant or defendants used, or intended to be used, in any manner or part, to commit, facilitate, aid, or abet the commission of the offense; and (iii) any item that bears or consists of a counterfeit mark used in committing the offense. Forfeiture, seizure and disposition of such property shall be in accordance with Chapter 22 (§ 19.2-369 et seq.) of Title 19.2. 

D. In any proceeding under this chapter, any certificate of registration issued by the Commonwealth, any other state or federal entity shall be prima facie evidence of the facts stated therein.

2. That the provisions of this act may result in a net increase in periods of imprisonment or commitment.  Pursuant to § 30-19.1:4, the estimated amount of the necessary appropriation is _________ for periods of imprisonment in state adult correctional facilities and _________ for periods of commitment to the custody of the Department of Juvenile Justice.