Conforms Hawaii's trademark law to Model State Trademark Act by establishing trademark and service mark registration requirements and establishing civil remedies for infringement of a mark and dilution of a famous mark. (SD1)

A BILL FOR AN ACT

SECTION 1. Chapter 482, Hawaii Revised Statutes, is amended by adding a new part to be appropriately designated and to read as follows:

§482-A 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:

(C) Is primarily a surname;

§482-B Application for registration. (a) Subject to the limitations set forth in this part, any person who uses a mark may file in the office of the director, in a manner complying with the requirements of the director, an application for registration of that mark setting forth at least the following information:

(b) The director may also require a statement as to whether an application to register the mark, or portions or a composite thereof, 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 fully disclose the filing date and serial number of each application, the status of the application, and if any application was finally refused registration or has otherwise not resulted in a registration, the reasons therefor.

(c) The director may also require that a drawing of the mark accompany the application and comply with requirements the director may specify in rules.

(d) The application shall be signed and verified by the applicant, a member of the firm, or an officer of the corporation or association applying. The application shall be accompanied by two specimens showing the mark as actually used and the application fee payable to the director.

§482-C Filing of applications; appeal. (a) Upon the filing of an application for registration and payment of the application fee, the director shall cause the application to be examined for conformity with this part.

(b) The applicant shall provide any additional pertinent information requested by the director including a description of a design mark and may make, or authorize the director to make, amendments to the application that are reasonably requested by the director or deemed by the applicant to be advisable to respond to any rejection or objection.

(c) The director 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 shall prejudice or affect the applicant's or registrant's rights in the disclaimed matter, or the applicant's or registrant's rights of registration in another application if the disclaimed matter is or will become distinctive of the applicant's or registrant's goods or services.

(d) If the application for registration of a mark is denied, the director shall notify the applicant of the denial and the reasons for the denial. An applicant may appeal the director's denial of an application for registration of a mark in accordance with section 91-13.1.

(e) Applications concurrently being processed by the director and seeking registration of the same or confusingly similar marks for the same or related goods or services shall be reviewed in the order that they are filed. If an earlier-filed application is granted registration, the other applications seeking registration of the same or confusingly similar marks for the same or related goods or services shall be rejected. Any 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 482-H.

§482-D Certificate of registration. (a) Upon compliance by the applicant with the requirements of this part, the director shall issue a certificate of registration to the applicant. The certificate of registration shall be issued with the signature of the director and the seal of the State, and shall show:

(4) The date the mark was first used in this State;

(b) The original or a copy certified by the director of a certificate of registration issued under this part shall be admissible in evidence as sufficient proof of the registration of a mark in any action or judicial proceeding in any court of this State.

§482-E Duration and renewal. (a) The registration of a mark shall be effective for a term of five years from the date of registration. A renewal fee, payable to the director, shall accompany the application for renewal of the registration.

(b) A registration may be renewed for successive periods of five years by filing a renewal application within six months prior to the expiration of the current term, complying with the renewal requirements prescribed by the director, and paying the appropriate renewal fee.

(c) Any registration in effect on the date on which this part becomes effective shall continue in full force and effect for the unexpired term thereof and may be renewed by filing an application for renewal with the director in accordance with this section.

(d) All applications for renewal under this part shall include a verified statement that the mark has been and is still in use, and include a specimen showing actual use of the mark on or in connection with the goods or services.

§482-F Assignment; change of name. (a) The registration of a mark 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. An assignment shall be executed in writing and may be recorded by filing an application with the director and paying an appropriate recording fee. Upon recording of the assignment, the director shall issue a new certificate for the remainder of the term of the registration or of the last renewal thereof in the name of the new assignee. An assignment of a registration of a mark under this section shall be void against a subsequent purchaser for valuable consideration without notice, unless the assignment is recorded with the director within three months after the date thereof or prior to the subsequent purchase.

(b) Any registrant may change the name of the person to whom the mark is issued by filing an application to change the name of the registrant with the director and paying the appropriate fee. The director shall issue a new certificate of registration in the name of the registrant.

§482-G Records. The director shall maintain a record of all marks registered or renewed under this part, including a record of all marks recorded pursuant to section 482-F.

§482-H Cancellation. (a) The director shall cancel the registration of a mark if the director receives a request for cancellation from the registrant or assignee of record, a registration is not timely renewed in accordance with the provisions of this part, or a court of competent jurisdiction finds that:

(b) The director shall cancel a registration when a court of competent jurisdiction orders cancellation of a registration.

§482-I Classification. The director, by rule, may establish a classification of goods and services for convenience of administration of this part, 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 indicating the appropriate class or classes of goods or services. When a single application includes goods or services which fall within multiple classes, the director may require payment of a fee for each class. To the extent practical, the classification of goods and services should conform to the classification adopted by the United States patent and trademark office.

§482-J Fraudulent registration. Any person who knowingly makes a false or fraudulent representation or declaration in registration documents filed with the director shall be liable for all damages sustained as a result of the registration documents as determined by a court of competent jurisdiction.

§482-K Infringement. Subject to section 482-O, any person who:

shall be liable in a civil action by the registrant for any and all of the damages and remedies provided in section 482-M; provided that under paragraph (2) the registrant shall not be entitled to recover profits or damages unless the acts have been committed with the intent to cause confusion, mistake, or to deceive.

§482-L Injury to business reputation; dilution. (a) The owner of a mark which is famous in this State shall be entitled, subject to the principles of equity and upon such terms as a court deems reasonable, to an injunction against another person's commercial use of a mark or trade name, if the use begins after the mark has become famous and causes dilution of the distinctive quality of the famous mark, and to obtain such other relief as provided in this part. In determining whether a mark is distinctive and famous, a court may consider but shall not be limited to factors such as:

(b) In any action brought under this section, the owner of a famous mark shall be entitled only to injunctive relief in this State, unless the person against whom the injunctive relief is sought wilfully intended to trade on the owner's reputation or to cause dilution of the famous mark. If wilful intent is proven, the owner shall also be entitled to the remedies set forth in this chapter, subject to the discretion of the court and principles of equity.

(c) The fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark, the noncommercial use of the mark, and all forms of news reporting and news commentary shall not be actionable under this section.

§482-M Remedies. (a) The owner of a mark registered under this part may proceed by suit to enjoin the manufacture, use, display, or sale of any counterfeits or imitations of the mark, and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display, or sale as the court deems just and reasonable, and may require the defendants to pay the owner all profits derived from and all damages suffered by reason of such wrongful manufacture, use, display, or sale; and the court may also order that any 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 owner, to be destroyed. The court, in its discretion, may enter judgment for an amount not to exceed three times the lost profits and damages incurred by the owner, and award reasonable attorneys' fees to the owner when the court finds that the defendants committed the wrongful acts knowingly or in bad faith.

(b) The enumeration of any right or remedy under this part shall not adversely affect a registrant's right to pursue criminal penalties under other laws of this State.

§482-N Forum for actions regarding registration; service on out of state registrants. (a) An action to require cancellation of a mark registered under this part shall be brought in circuit court. In an action for cancellation, the director shall not be made a party to the proceeding but shall be notified of the filing of the complaint by the clerk of the court in which it is filed and shall have the right to intervene in the action.

(b) In any action brought against a registrant that is a nonresident of this State, service may be effected pursuant to sections 634-35 and 634-36.

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

§482-P Fees. The application fee to register a mark shall be $50. A special handling fee of $20 for expediting the registration of a mark shall be assessed by the director. All special handling fees shall be credited to the compliance resolution fund established under section 26-9(o). Unless otherwise specified by the director, these fees shall not be refundable.

§482-Q Severability. If any provision of this part is deemed to be invalid, the remaining provisions of this chapter shall continue to be effective."

SECTION 2. Chapter 482, Hawaii Revised Statutes, is amended by designating sections 482-1 to 482-12 as PART I, entitled "TRADE NAMES, PRINTS, AND LABELS".

SECTION 3. Section 482-1, Hawaii Revised Statutes, is amended to read as follows:

"§482-1 Definitions. As used in this chapter, unless the context otherwise requires:

["Person" means an individual, corporation, government, or governmental subdivision or agency, business trust, estate, trust, partnership, unincorporated association, two or more of any of the foregoing having a joint or common interest, or any other legal or commercial entity.

"Service mark" means a mark used by a person to identify services and to distinguish them from the services of others.

"Trademark" means a mark used by a person to identify goods and distinguish them from the goods of others.

"Trade name" means a word or name used by a person to identify the person's business, vocation, or occupation and distinguish it from the business, vocation, or occupation of others.]

"Abandonment" of a mark means when either of the following occurs:

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

"Dilution" means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the owner of the famous mark and other parties, or likelihood of confusion, mistake, or deception.

"Director" means the director of the department of commerce and consumer affairs.

"Mark" includes any trademark or service mark, entitled to registration under this chapter whether registered or not.

"Partnership" includes a general partnership, limited partnership, and limited liability partnership.

"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 this chapter, includes an individual, firm, partnership, corporation, limited liability company, union, association, or other organization capable of suing and being sued in a court of law.

"Registrant" includes the person to whom the registration of a mark under this chapter is issued, and the legal representatives, successors, or assigns of the 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 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 may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

"Trademark" means any word, name, symbol, or device or any combination thereof used by a person to identify and distinguish the goods of the person, including a unique product, from those manufactured or sold by others, and to indicate the source of the goods, even if that source is unknown.

"Trade name" means any name used by a person to identify a business or vocation of that person.

"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:

SECTION 4. Section 482-2, Hawaii Revised Statutes, is amended to read as follows:

"§482-2 Certificate. (a) Any person desiring to register any print[,] or label[, or trademark] intended to be attached or applied to goods or manufactured articles or to bottles, boxes, or packages containing the goods or manufactured articles to indicate the name of the manufacturer, and any person desiring to register a [service mark, or a] trade name[,] may obtain a certificate of the registration of the print, label, [trademark, service mark,] or trade name in the manner hereinafter provided.

(b) Before any person may receive a certificate of registration of a print[,] or label, [or trademark,] the person shall file in the office of the director [of commerce and consumer affairs] an application for the registration of the print[,] or label, [or trademark,] with a declaration, certified by the applicant, stating that the applicant is the sole and original proprietor or the assign of the proprietor of this print[,] or label, [or trademark,] and describing the goods or manufactured articles for which the print[,] or label, [or trademark] is used, and stating the manner in which the print[,] or label[, or trademark] is used. [Before any person may receive a certificate of registration of a service mark or trade name, the person shall file in the office of the director an application for the registration thereof, with a declaration, certified, as aforesaid, stating that the person is the sole and original proprietor of the service mark or trade name, or the assign of the proprietor and setting forth the nature of the business in which the service mark or trade name is used.] The application shall be accompanied by two exact copies of the print, label, [trademark, service mark,] or trade name. Upon filing the application, the applicant shall pay to the director a fee of $50. A special handling fee of $20 for expediting registration of a trade name, print, or label[, trademark, or service mark] shall be assessed by the [department.] director. All special handling fees shall be credited to the compliance resolution fund established under section [[]26-9(o)[]]."

SECTION 5. Section 482-3, Hawaii Revised Statutes, is amended to read as follows:

"§482-3 Record, issuance and effect of certificate. (a) Upon receiving the application accompanied by the fee, the director [of commerce and consumer affairs] shall cause the print, label, [trademark, service mark,] or trade name to be recorded and shall issue to the applicant a certificate of registration under the seal of the director; and the certificate of registration shall be constructive notice to all persons of the applicant's claim of the use of the print, label, [trademark, service mark,] or trade name throughout the State, for the term of one year from the date thereof; provided that the director shall not register any print, label, [trademark, service mark,] or trade name which is substantially identical with any registered print, label, [trademark, service mark,] or trade name or with the name of any corporation [or], partnership, or limited liability company registered in accordance with chapters [415,] 414, 415A, 415B, 425, [and] 425D[;], and 428; provided further that the print, label, [trademark, service mark,] or trade name is continued in actual use by the applicant in the State or elsewhere in the United States, or is registered in the name of the applicant in the patent and trademark office of the United States. The acceptance of an application and issuance of a certificate of registration by the director shall not abrogate or limit any common law or other right of any person to any corporation [or], partnership, or limited liability company name, or trade name [or trademark].

(b) The registration of a print, label, [trademark, service mark,] or trade name may be renewed at any time during a period of its registration for additional periods of ten years from the date of renewal by the filing of an application for renewal of registration in a form as the director may provide. Upon filing the application for renewal, the applicant shall pay the director a fee of $50.

(c) The director may make, amend, and repeal such rules as may be necessary to carry out the purposes of this section."

SECTION 6. Section 482-4, Hawaii Revised Statutes, is amended to read as follows:

"§482-4 Certain prints, labels, [trademarks, service mark,] union labels, and trade names not to be adopted or used. (a) It shall be unlawful for any person to adopt or use a print, label, [trademark, service mark,] or trade name which is identical to or confusingly similar with any registered print, label, [trademark, service mark,] or trade name, or the name of any corporation, partnership, or limited liability company[, or limited liability partnership] existing or registered, or authorized to transact business, in accordance with the laws of this State, on corporations, partnerships, or limited liability companies[, or limited liability partnerships.], or a name the exclusive right to which is, at the time, reserved in this State.

(b) When a bona fide labor union, or association of employees has adopted a device in the form of a label, brand, mark, name, or other character for the purpose of designating the products of the members of the union or association and the device has been registered pursuant to sections 482-2 and 482-3, then it shall be unlawful for any person to adopt, print, distribute, or otherwise use the device or one so similar as to be confused therewith. Any person, except the director [of commerce and consumer affairs], found to be in violation of this subsection may, in addition to any other penalty assessed or otherwise imposed by law, be required to pay all costs and attorney's fees incurred in seeking enforcement of this subsection, and may be ordered by the court to pay damages to the bona fide labor union or association of employees involved in such amount as may be determined by the court; provided that the damages ordered shall not be less than $250 nor more than $5,000."

SECTION 7. Section 482-5, Hawaii Revised Statutes, is amended to read as follows:

"§482-5 Penalty. Any person using such identical or similar print, label, [trademark, service mark] or trade name as set forth in section 482-4, shall be fined not more than $1,000."

SECTION 8. Section 482-6, Hawaii Revised Statutes, is amended to read as follows:

"§482-6 Revocation of certificate; nonuse. (a) If any print, label, [trademark, service mark] or trade name is not used by the registrant in accordance with the declaration either in [the] this State or elsewhere in the United States for a period of three hundred [and] sixty-five consecutive days, and the print, label, [service mark, trademark,] or trade name has not been registered in the name of the registrant in the patent and trademark office of the United States, the certificate of registration shall be subject to revocation.

(b) Any person desiring such revocation shall file a verified petition in the office of the director [of commerce and consumer affairs], setting forth facts indicating such nonuse for a period of three hundred [and] sixty-five consecutive days immediately preceding the date of the filing of the petition, and alleging the nonregistration in the patent and trademark office of the United States. The petitioner shall, at the petitioner's expense, notify the registrant of the hearing in the manner prescribed by the director and section 91-9.5, and the registrant shall be given the opportunity of a full hearing in accordance with chapter 91.

(c) After granting an opportunity for hearing to the petitioner and the registrant, the director shall grant or deny the petition for revocation, as the facts shall warrant."

SECTION 9. Section 482-7, Hawaii Revised Statutes, is amended to read as follows:

"§482-7 Application of law; reissue on nonuser. (a) Sections 482-1 to 482-9 are applicable to all registrations filed in the office of the director [of commerce and consumer affairs]; the intent [hereof] being that all prints, labels, [trademarks, service marks,] or trade names not used by the applicant in [the] this State or elsewhere in the United States and not registered in the name of the applicant in the patent and trademark office of the United States may be immediately reissued to such applicant who is actually using the same.

(b) The fact that a print, label, [trademark, service mark,] or trade name has not been used in [the] this State for a period of one year shall be prima facie proof of the fact that the same has not been used elsewhere for such period."

SECTION 10. Section 482-8, Hawaii Revised Statutes, is amended to read as follows:

"§482-8 Revocation of certificate; ownership. (a) Any person claiming to be the owner of a print, label, [service mark, trademark,] or trade name for which a certificate of registration pursuant to this chapter has been issued to any other person shall file a verified petition in the office of the director [of commerce and consumer affairs] for the revocation of the registration of such print, label, [service mark, trademark,] or trade name. The petition shall set forth facts in support of the ownership by such petitioner of such print, label, [service mark, trademark,] or trade name and in support of the claim of the petitioner that the certificate of registration should be revoked.

(b) The petitioner shall, at the petitioner's expense, notify the registrant of the hearing in the manner prescribed by the director and section 91-9.5 and the registrant shall be given the opportunity of a [full] hearing in accordance with chapter 91.

(c) After granting an opportunity for hearing to the petitioner and the registrant, the director shall grant or deny the petition for revocation, as the facts shall warrant."

SECTION 11. Section 482-9, Hawaii Revised Statutes, is amended to read as follows:

"§482-9 Appeal. Any person aggrieved by any action of the director [of commerce and consumer affairs] under this chapter in issuing or revoking a certificate of registration of a print, label, [trademark, service mark,] or trade name or [in revoking any such certificate of registration or] in denying an application may, within thirty days after the action by the director, or in the event no order has been entered either granting or denying the application within four months after the filing of the application, commence proceedings to obtain judicial review thereof by the circuit court of the first circuit by filing in the court a notice of appeal. The trial by the circuit court of any such proceeding shall be de novo. Proceedings for review by the supreme court may be had and taken in the same manner as is provided for a review of a judgment of a circuit court."

SECTION 12. Section 482-10, Hawaii Revised Statutes, is amended to read as follows:

"§482-10 Registration of name, title, or other mark or device on bottles, siphons, tins, kegs, or other containers. Any person engaged in manufacturing, bottling, selling, or distributing soda water, mineral or aerated water, porter, ale, beer, cider, ginger ale, milk, cream, or other beverages or mixtures in bottles, siphons, tins, kegs, or other containers with the person's name, title, or other mark or device branded, stamped, engraved, [or] etched, blown, impressed, or otherwise produced in or on such bottles, siphons, tins, kegs, or other containers used by the person, may file in the office of the director [of commerce and consumer affairs] a description of the name, title, or other mark or device so used by the person, and cause [such] the description to be printed at least once in each week for two weeks successively in a newspaper published in the English language in the county where such manufacturing, bottling, selling, or distributing takes place or in some paper of general circulation published in the English language in [Honolulu;] the State; whereupon, such name, title, or other mark or device shall be deemed registered."

SECTION 13. In codifying the part added to chapter 482, Hawaii Revised Statutes, by section 1 of this Act and references to new sections, the revisor of statutes shall substitute appropriate section numbers for the letters used in the designation of new sections.

SECTION 14. Statutory material to be repealed is bracketed and stricken. New statutory material is underscored.

SECTION 15. This Act shall take effect on July 1, 2003.