CHAPTER 120

FORMERLY

HOUSE BILL NO. 225

AS AMENDED BY

SENATE AMENDMENT NO. 1

AN ACT TO AMEND TITLE 11 OF THE DELAWARE CODE RELATING TO TRADEMARK COUNTERFEITING.

BE IT ENACTED BY THE GENERAL ASSEMBLY OF THE STATE OF DELAWARE (Two-thirds of all members elected to each house thereof concurring therein):

Section 1. Amend Chapter 5, Subchapter III, Title 11 of the Delaware Code by adding “and Trademark Counterfeiting” after “Devices” in the heading for subpart J.

Section 2. Amend Chapter 5, Subchapter III, Title 11 of the Delaware Code by adding a new Section as follows:

Ҥ 926. Trademark Counterfeiting.

(a) Any person who knowingly manufactures, uses, displays, advertises, distributes, offers for sale, sells or possesses with intent to sell or distribute any items or services bearing or identified by a counterfeit mark shall be guilty of the crime of trademark counterfeiting.

(b) Definitions. As used in this Section, the following words and phrases shall have the meanings given to them in this subsection:

(1) ‘Counterfeit mark’ means:

i. Any unauthorized reproduction or copy of intellectual property.

ii. Intellectual property affixed to any item knowingly sold, offered for sale, manufactured or distributed or identifying services offered or rendered, without the authority of the owner of the intellectual property.

(2) ‘Intellectual property’ means any trademark, service mark, trade name, label, term, device, design or word adopted or used by a person to identify that person’s goods or services.

(3) ‘Retail value’ means the counterfeiter’s regular selling price for the item or service bearing or identified by the counterfeit mark. In the case of items bearing a counterfeit mark which are components of a finished product, the retail value shall be the counterfeiter’s regular selling price of the finished product on or in which the component would be utilized.

(c) Presumption. A person having possession, custody or control of more than 25 items bearing a counterfeit mark shall be presumed to possess said items with intent to sell or distribute.

(d) Penalties.

(1) Except as provided in paragraphs (2) and (3), a violation of this Section constitutes a Class A misdemeanor.

(2) A violation of this Section constitutes a G Felony if:

i. The defendant has previously been convicted under this Section; or

ii. The violation involved more than 100 but less than 1,000 items bearing a counterfeit mark or the total retail value of all items or services bearing or identified by a counterfeit mark is more than $2,000, but less than $10,000.

(3) A violation of this Section constitutes a Class E Felony if:

i. The defendant has been previously convicted of two or more offenses under this Section;

ii. The violation involved the manufacture or production of items bearing counterfeit marks; or

iii. The violation involved 1,000 or more items bearing a counterfeit mark or the total retail value of all items or services bearing or identified by a counterfeit mark is $10,000 or more.

(e) Quantity or retail value. The quantity or retail value of items or services shall include the aggregate quantity or retail value of all items or services bearing or identified by every counterfeit mark the defendant manufactures, uses, displays, advertises, distributes, offers for sale, sells or possesses.

(f) Fine. Any person convicted under this Section shall be fined not less than $5,000 or an amount up to three times the retail value of the items or services bearing or identified by a counterfeit mark, whichever is greater, unless extenuating circumstances are shown by the defendant.

(g) Seizure, forfeiture and disposition.

(1) Any items bearing a counterfeit mark, and all personal property, including, but not limited to, any items, objects, tools, machines, equipment, instrumentalities or vehicles of any kind, knowingly employed or used in connection with a violation of this Section may be seized by any law enforcement officer.

(2) All seized personal property referenced in paragraph (1) shall be forfeited in accordance with applicable law, unless the prosecuting attorney responsible for the charges and the intellectual property owner consent in writing to another disposition.

(h) Evidence. Any federal or State certificate of registration of any intellectual property shall be prima facie.

Approved July 7, 2005