CHAPTER 612

SENATE BILL NO. 209

AS AMENDED BY SENATE AMENDMENT NOS. 2, 3, 4

AND HOUSE AMENDMENT NO. 1

AN ACT TO AMEND CHAPTER 33, PART II, TITLE 6 OF THE DELAWARE CODE RELATING TO COMMERCE AND TRADE; AND PROVIDING FOR THE REGISTRATION AND PROTECTION OF TRADEMARKS, BRANDS AND LABELS.

Be it enacted by the General Assembly of the State of Delaware:

Section 1. Amend Chapter 33, Title 6 of the Delaware Code by striking said Chapter in its entirety, and substituting in lieu thereof the following:

"CHAPTER 33. TRADEMARKS, BRANDS AND LABELS

§3301. Short Title.

The provisions of this Act may be known and cited as the Delaware Trademark Act.

§3302. Definitions.

The following words, terms and phrases, when used in this Chapter, shall have the meaning ascribed to them except where the context clearly indicates a different meaning:

(a) 'Applicant' shall mean any person filing an application for registration of a trademark under the provisions of this Chapter, his legal representatives, successors or assigns.

(b) 'Mark' shall include any trademark or service mark entitled to registration under the provisions of this Chapter, whether registered or not.

() 'Person' shall mean any individual, firm, partner. ship, corporation, association, union or other organization.

(a) 'Registrant' shall mean the person to whom the registration of a trademark under the provisions of this Act is issued, his legal representatives, successors or assigns.

(b) 'Service mark' shall mean a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.

(c) 'Trademark' shall mean 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.

(d) 'Trade Name' shall mean a word, name, symbol, device, or any combination there of used by a person to identify his business, vocation or occupation and distinguish it from the business, vocation or occupation of others.

() For the purpose of this Chapter, a trademark shall be deemed to be 'used' in this State:

(1) on goods, when it is placed in any manner on the goods, their containers or the displays associated therewith, or on labels affixed thereto and such goods are sold or otherwise distributed within this State; and

(2) on services, when the trademark is used or displayed in the sale or advertising of services and the services are rendered in this State.

§3303. Registrability.

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:

(a) consists of or comprises immoral, deceptive or scandalous matter; or

(b) consists of or comprises 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; or

(c) consists of or comprises 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; or

(d) consists of or comprises the name, signatures or portrait of any living individual, except with his written consent; or

(e) consists of a mark which:

(1) when applied to the goods or services of the applicant, is merely descriptive or deceptively mis-description of them; or

(2) when applied to the goods or services of the applicant, is primarily geographically descriptive or deceptively mis-descriptive of them; or

(3) is primarily merely a surname (provided, however, that nothing in this section shall prevent the registration of a mark used in this State by the applicant which is or has become distinctive of the applicant's goods or services); or

(f) consists of or comprises a mark which so resembles a mark registered in this State or a trademark or trade name previously used in this State by another and not abandoned, as to be likely, when applied to the goods or services of the applicant to cause mistake, or to confuse or deceive.

§3304. Application for Registration.

Subject to the limitations set forth in this Chapter, 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 the Secretary of State, an application for registration of that mark setting forth, but not limited to, the following information:

(a) the name and business address of the person applying for such registration, and if a corporation, the state of incorporation;

(b) the goods or services in connection with which the mark is used, and the mode or manner in which the mark is used in connection with such goods or services, and the class in which such goods or services fall;

(c) 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 predeccessor in business; and

(d) a statement that the applicant is the owner of the mark and that no other person has the right to use such mark in this State, either in the identical form thereof 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, by a member of the firm, or by an officer of the corporation or association applying therefor. The application shall be accompanied by a specimen of facsimile of such mark in duplicate. The application for registration shall be accompanied by a filing fee of twenty-five dollars ($25.00), payable to the Secretary of State.

§3305. Certificate of Registration.

ments of this Chapter, the Secretary of State shall cause a Certificate of Registration to be issued and delivered to the applicant. The Certificate of Registration shall be issued under the signature of the Secretary of State and the seal of the State of Delaware, and 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, 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 which the mark is used, a reproduction of the mark, the registration date, and the term of the registration period.

Any Certificate of Registration issued by the Secretary of State under the provisions of this Chapter or a copy thereof duly certified by the Secretary shall be admissible in evidence as competent and sufficient proof of the registration of such mark in any action or judicial proceeding in any court of this State.

A certificate of registration will be issued by the Secretary of State upon receipt of a $10.00 fee payable to the Secretary of State.

§3306. Duration and Renewal.

Registration of a mark under the provisions of this Chapter shall be effective for a term of ten years from the date of registration and, upon application filed within six months prior to the expiration of such term, on a form to be furnished by the Secretary of State, the registration may be renewed for a like term. A renewal fee of twenty-five dollars ($25.00), payable to the Secretary of State, shall accompany the application for renewal of the registration. A trademark registration may be renewed for successive periods of ten years in like manner.

under of the necessity of renewal within the year next preceding expiration of the ten years from the date of registration, by writing to the last-known address of a registrant.

Any registration in force on the date on which this Act shall become effective shall expire ten years from the date of the registration, the last renewal thereof or one year after the effective date of this Act, 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 aforementioned renewal fee thereof within six months prior to the expiration of the registration.

All applications for renewals under this Chapter, whether of registrations made hereunder or of registrations effected under any prior act, shall include a statement that the mark is still in use in this State.

The Secretary of State shall, within six months after such effective date, notify all registrants of marks registered under previous acts of the date of expiration of such registrations unless renewed in accordance with the provisions of this Chapter, by writing to the last-known address of the registrants.

§3307. Assignment.

Any mark and its registration hereunder 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. Assignment shall- be by instruments in writing duly executed, and may be recorded with the Secretary of State upon the payment of a fee of twenty-five dollars ($25.00), payable to the Secretary of State 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 thereof. An assignment of any registration under the provisions of this Chapter 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 the date thereof, or prior to such subsequent purchase.

§3308. Records.

The Secretary of State shall keep for public examination a record of all marks registered or renewed under the provisions of this Chapter.

§3309. Cancellation.

The Secretary of State shall cancell from the register:

(a) after one year from the effective date hereof, all registrations under prior acts which are more than ten years old, and not renewed in accordance with the provisions of this Chapter;

(b) any registration concerning which the Secretary of State shall receive a voluntary request for cancellation thereof from the registrant or the assignee of record;

(c) all registrations granted under this Chapter and not renewed in accordance with the provisions hereof;

(d) any registration concerning which a court of competent jurisdiction shall find:

(1) that the registered mark has been abandoned,

(2) that the registrant is not the owner of the mark,

(3) that the registration was granted improperly,

(4) that the registration was obtained fraudulently,

(5) that the registered mark is so similar, as to be likely to cause confusion or to deceive, to a mark registered by another person in the United States Patent Office, prior to the date of the filing of the application for registration by the registrant hereunder, and not abandoned; provided, however, that should the registrant prove that he is the owner of a concurrent registration of his mark in the United States Patent Office covering an area including this State, the registration hereunder shall not be cancelled;

(e) when a court of competent jurisdiction shall order cancellatio of a registration on any ground.

§3310. Classification.

Classification shall be as that which is enforced at the time of application under the classification system used by the United States Patent Office.

§3311. Fraudulent Registration.

Any person who shall for himself, or on behalf of any other person, procure the filing or registration of any mark in the office of the Secretary of State under the provisions hereof, 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 in consequence of such filing or registration, to be recovered by or on behalf of the party injured thereby in any court of competent jurisdiction.

§3312. Infringement.

Subject to Common Law Rights as set forth in §3315 of this Chapter, any person who shall:

(a) use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this Chapter in connection with the sale, offering for sale, or advertising of any goods or serservices, or in connection with which such use is likely to cause confusion or to deceive as to the source or origin of such goods or services; or

(b) 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 §3314 of this Chapter, except that under subsection (b) of this section the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such mark is intended to be used to cause confusion or to deceive.

§3313. Injury to Business Reputation; Dilution.

Likelihood to injury to business reputation or of dilution of the distinctive quality of a mark registered under the provisions of this Chapter, or a mark valid at common law, or a trade name valid at common law, shall be a ground for injunctive relief notwithstanding the absence of competition between the parties, or the absence of confusion as to the source of goods or services.

§3314. Remedies.

Any owner of a mark registered under this Chapter 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 said court deemed just and reasonable, and may require the defendants to pay to such owner all profits derived from and/or all damages suffered by reason of such wrongful manufacture, use, display or sale. Such

possession or under the control of any defendant in such 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.

§3315. Common Law Rights.

Nothing herein shall adversely affect the rights or the enforcement of the rights in marks acquired in good faith in any time at common law.

Section 2. If any provision hereof, or the application of such provision to any person or circumstance is held invalid, the remainder of this Act shall not be affected thereby.

Section 3. This Act shall be in force and take effect one month after its enactment but shall not affect any suit, proceeding or appeal then pending. All acts relating to marks and parts of any other acts inconsistent herewith are hereby repealed on the effective date of this Act, provided that as to any suit, proceeding or appeal, and for that purpose only, pending at the time this Act takes effect, such repeal shall be deemed not to be effective until final determination of said pending suit, proceeding or appeal.

Approved July 22, 1976