State of Illinois
90th General Assembly
Legislation

   [ Search ]   [ Legislation ]   [ Bill Summary ]
[ Home ]   [ Back ]   [ Bottom ]


[ Engrossed ][ Enrolled ][ Senate Amendment 001 ]

90_SB0953

      New Act
      765 ILCS 1035/Act rep.
      765 ILCS 1050/2.03        from Ch. 140, par. 122.3
          Repeals the  Trademark  Registration  Act.   Creates  the
      Trademark   Registration  and  Protection  Act.   Establishes
      procedures   for   the   registration   of   trademarks   and
      servicemarks with the  Secretary  of  State.   Provides  that
      registration  shall  be  effective  for  5  years  and may be
      renewed for successive 5  year  periods.    Authorizes  civil
      actions  for  infringement.   Amends the Registered Container
      Trade Mark Act to change a cross reference to  refer  to  the
      new Act.  Effective January 1, 1998.
                                                    LRB9001251WHmgB
                                              LRB9001251WHmgB
 1        AN  ACT to provide for the registration and protection of
 2    trademarks, servicemarks, and tradenames.
 3        Be it enacted by the People of  the  State  of  Illinois,
 4    represented in the General Assembly:
 5        Section  1.   Short  title.  This Act may be cited as the
 6    Trademark Registration and Protection Act.
 7        Section 5.  Definitions.  In this Act:
 8        (a)  A mark shall be deemed to be "abandoned" when either
 9    of  the following occurs:
10             (1)  When its use has been discontinued with  intent
11        not  to    resume  that use.  Intent not to resume may be
12        inferred from  circumstances.  Nonuse for  2  consecutive
13        years   shall   constitute     prima  facie  evidence  of
14        abandonment.
15             (2)  When  any  course  of  conduct  of  the  owner,
16        including acts  of omission as well as commission, causes
17        the mark to lose its  significance as a mark.
18        (b)  "Applicant" means the person filing  an  application
19    for  registration  of  a  mark  under this Act, and the legal
20    representatives, successors, or assigns of that  person.
21        (c)  "Dilution" means the lessening of the capacity of  a
22    famous  mark  to  identify and distinguish goods or services,
23    regardless of the presence  or  absence  of  (1)  competition
24    between  the  owner  of the famous mark and other parties, or
25    (2) likelihood of confusion, mistake, or deception.
26        (d)  "Mark"  includes  any   trademark   or   servicemark
27    entitled to registration under this Act whether registered or
28    not.
29        (e)  "Person"   and  any  other  word  or  term  used  to
30    designate the applicant or other party entitled to benefit or
31    privilege or rendered liable under the provisions of this Act
                            -2-               LRB9001251WHmgB
 1    means a natural  person  as  well  as  a  firm,  partnership,
 2    corporation,   union,   association,  or  other  organization
 3    capable of suing and being sued in a court of law.
 4        (f)  "Registrant"  means   the   person   to   whom   the
 5    registration  of  a  mark  is  issued under this Act, and the
 6    legal representatives, successors, or assigns of that person.
 7        (g)  "Secretary" means the Secretary of State of Illinois
 8    or  the  designee  of  the   Secretary   charged   with   the
 9    administration of this Act.
10        (h)  "Servicemark"  means  any  word,  name,  symbol,  or
11    device  or  any  combination  thereof  used  by  a person, to
12    identify  and  distinguish  the  services  of   one   person,
13    including  a unique service, from the services of others, and
14    to indicate the source of the services, even if  that  source
15    is    unknown.  Titles, character names used by a person, and
16    other distinctive features of radio  or  television  programs
17    may be  registered as servicemarks notwithstanding that they,
18    or the programs, may advertise the goods of the sponsor.
19        (i)  "Trademark"  means any word, name, symbol, or device
20    or any combination thereof used by a person to  identify  and
21    distinguish  the  goods  of  the  person,  including a unique
22    product, from those manufactured and sold by others,  and  to
23    indicate  the  source  of  the  goods, even if that source is
24    unknown.
25        (j)  "Tradename" means any  name  used  by  a  person  to
26    identify a business or vocation of the person.
27        (k)  "Use"  means  the  bona  fide  use  of a mark in the
28    ordinary course of trade, and not made merely  to  reserve  a
29    right  in a mark.  For the purposes of this Act, a mark shall
30    be deemed to be in use (1) on goods when it is placed in  any
31    manner  on  the  goods  or  their  containers or the displays
32    associated  therewith  or  on  the  tags  or  labels  affixed
33    thereto, or if the nature of the goods makes  such  placement
34    impracticable, then on documents associated with the goods or
                            -3-               LRB9001251WHmgB
 1    their sale, and the goods are sold or transported in commerce
 2    in  this  State,  and  (2)  on  services  when  it is used or
 3    displayed in the sale or  advertising  of  services  and  the
 4    services are rendered in this State.
 5        Section  10. Registrability. A mark by which the goods or
 6    services  of   an   applicant   for   registration   may   be
 7    distinguished  from the goods or services of others shall not
 8    be registered if it:
 9        (a)  consists of  or  comprises  immoral,  deceptive,  or
10    scandalous matter; or
11        (b)  consists  of  or comprises matter that may disparage
12    or falsely suggest a connection with persons, living or dead,
13    institutions, beliefs, or national  symbols,  or  bring  them
14    into contempt, or disrepute; or
15        (c)  consists of or comprises the flag or coat of arms or
16    other  insignia  of  the  United  States,  or of any state or
17    municipality, or of any foreign  nation,  or  any  simulation
18    thereof; or
19        (d)  consists  of  or  comprises  the  name, signature or
20    portrait identifying a particular living  individual,  except
21    by the individual's written consent; or
22        (e)  consists  of  a  mark  which: (1) when used on or in
23    connection with the goods or services of  the  applicant,  is
24    merely  descriptive or deceptively misdescriptive of them, or
25    (2) when used on or in connection with the goods or  services
26    of  the  applicant is primarily geographically descriptive or
27    deceptively misdescriptive  of  them,  or  (3)  is  primarily
28    merely  a  surname;  however,  nothing in this subsection (e)
29    shall  prevent  the  registration  of  a  mark  used  by  the
30    applicant which has become  distinctive  of  the  applicant's
31    goods or services.  The Secretary may accept as evidence that
32    the  mark has become distinctive, as used on or in connection
33    with the applicant's goods or services, proof of   continuous
                            -4-               LRB9001251WHmgB
 1    use  thereof as a mark by the applicant in this State for the
 2    5 years before the date on which the claim of distinctiveness
 3    is made; or
 4        (f)  consists of or comprises a mark which so resembles a
 5    mark  registered  in  this  State  of  a  mark  of  tradename
 6    previously used by  another  and  not  abandoned,  as  to  be
 7    likely,  when  used  on  or  in  connection with the goods or
 8    services of the applicant, to cause confusion or  mistake  or
 9    to deceive.
10        Section 15.  Application for registration. Subject to the
11    limitations set forth in this Act, any person who uses a mark
12    may  file  in  the  office  of the Secretary, on a form to be
13    furnished by the Secretary, an application  for  registration
14    of  that mark setting forth, but not limited to the following
15    information:
16        (a)  the name and business address of the person applying
17    for the registration; and, if a  corporation,  the  state  of
18    incorporation,  or  if  a partnership, the state in which the
19    partnership is organized and  name  of  one  of  the  general
20    partners,  or  if  a  limited liability company, the state in
21    which the company is organized;
22        (b)  an appointment of the Secretary of  State  as  agent
23    for  service  of  process  in any action relating only to the
24    registration which may be issued, if  the  applicant  be,  or
25    shall   become   a   non-resident   individual,   or  foreign
26    partnership,  limited  liability  company,  association,   or
27    corporation  not  licensed  to  do business in this State, or
28    cannot be found in this State;
29        (c)  the goods or services on or in connection with which
30    the mark is used and the mode or manner in which the mark  is
31    used  on  or  in  connection  with such goods or services and
32    class in which such goods or services fall;
33        (d)  the date when the mark was first used  anywhere  and
                            -5-               LRB9001251WHmgB
 1    the  date  when  it  was  first  used  in  this  State by the
 2    applicant or a predecessor in interest; and
 3        (e)  a statement that the applicant is the owner  of  the
 4    mark,  that  the mark is in use, and that to the knowledge of
 5    the person verifying the application,  no  other  person  has
 6    registered  the  mark,  either federally or in this State, or
 7    has the right to use the mark either in  the  identical  form
 8    thereof  or in such near resemblance thereto as to be likely,
 9    when applied to the goods or services of such  other  person,
10    to cause confusion, or to cause mistake, or to deceive.
11        The  Secretary may also require a statement as to whether
12    an application  to  register  the  mark,  or  portions  or  a
13    composite  thereof,  has  been  filed  by  the applicant or a
14    predecessor in interest  in  the  United  States  Patent  and
15    Trademark  Office;  and,  if  so, the applicant shall provide
16    full particulars with respect thereto  including  the  filing
17    date  and  serial  number  of  each  application,  the status
18    thereof  and,  if  any  application   was   finally   refused
19    registration or has otherwise not resulted in a registration,
20    the reasons therefor.
21        The  Secretary  may  also  require  that a drawing of the
22    mark, complying with such requirements as the  Secretary  may
23    specify, accompany the application.
24        The  application  shall  be signed and verified (by oath,
25    affirmation, or declaration subject to perjury laws)  by  the
26    applicant  or  by  a  member of the firm or an officer of the
27    corporation or association applying.
28        The application  shall  be  accompanied  by  3  specimens
29    showing the mark as actually used.
30        The  application  shall be accompanied by the application
31    fee of $10 payable to the Secretary of State.
32        Section 20.  Filing of application.
33        (a)  Upon the filing of an application  for  registration
                            -6-               LRB9001251WHmgB
 1    and  payment  of the application fee, the Secretary may cause
 2    the application to be examined for conformity with this Act.
 3        (b)  The applicant shall provide any additional pertinent
 4    information  requested   by   the   Secretary   including   a
 5    description  of  a design mark and may make, or authorize the
 6    Secretary to make, such amendments to the application as  may
 7    be  reasonably  requested  by  the  Secretary  or  deemed  by
 8    applicant  to  be  advisable  to  respond to any rejection or
 9    objection.
10        (c)  The Secretary may require the applicant to  disclaim
11    an unregisterable component of a mark otherwise registerable,
12    and  an  applicant  may voluntarily disclaim a component of a
13    mark sought to be registered.  No disclaimer shall  prejudice
14    or   affect  the  applicant's  or  registrant's  rights  then
15    existing or thereafter arising in the disclaimed  matter,  or
16    the  applicant's  or  registrant's  rights of registration on
17    another application if the disclaimed matter be or shall have
18    become distinctive of the  applicant's or registrant's  goods
19    or services.
20        (d)  Amendments  may  be  made  by the Secretary upon the
21    application  submitted  by  the  applicant  upon  applicant's
22    agreement; or a fresh  application  may  be  required  to  be
23    submitted.
24        (e)  If  the  applicant  is  found  not to be entitled to
25    registration,  the  Secretary  shall  advise  the   applicant
26    thereof  and  of  the  reasons therefor.  The applicant shall
27    have a reasonable period of time specified by  the  Secretary
28    in which to reply or to amend the application, in which event
29    the application shall then be reexamined.  This procedure may
30    be   repeated   until   (1)  the  Secretary  finally  refuses
31    registration of the mark or (2) the applicant fails to  reply
32    or   amend   within  the  specified  period,   whereupon  the
33    application shall be deemed to have been abandoned.
34        (f)  All final decisions of the Secretary of State  under
                            -7-               LRB9001251WHmgB
 1    this  Act  shall be deemed to be administrative decisions and
 2    subject to  judicial  review  under  the  provisions  of  the
 3    Administrative  Review  Law  and  the  rules adopted pursuant
 4    thereto.
 5        (g)  In the instance of applications  concurrently  being
 6    processed  by  the Secretary seeking registration of the same
 7    or confusingly similar marks for the same or related goods or
 8    services,  the  Secretary  shall  grant   priority   to   the
 9    applications   in   order   of   filing.   If  a  prior-filed
10    application is granted a registration, the other  application
11    or   applications  shall  then  be  rejected.   Any  rejected
12    applicant  may  bring  an  action  for  cancellation  of  the
13    registration upon grounds of prior or superior rights to  the
14    mark, in accordance with the provisions of Section 45 of this
15    Act.
16        Section 25.  Certificate of registration. Upon compliance
17    by  the  applicant  with  the  requirements  of this Act, the
18    Secretary shall cause a certificate  of  registration  to  be
19    issued  and  delivered  to the applicant.  The certificate of
20    registration shall be  issued  under  the  signature  of  the
21    Secretary  and  the  Seal of the State, and it shall show the
22    name and business address and, if a corporation, the state of
23    incorporation, or if a partnership, the state  in  which  the
24    partnership  is  organized and the name of one of the general
25    partners, or if a limited liability  company,  the  state  in
26    which  the  company  is  organized,  of  the  person claiming
27    ownership of the mark, the date claimed for the first use  of
28    the  mark  anywhere and the date claimed for the first use of
29    the mark in this State, the class of goods or services and  a
30    description of the goods or services on or in connection with
31    which  the  mark  is  used,  a  reproduction of the mark, the
32    registration date and the term of the registration.
33        Any certificate of registration issued by  the  Secretary
                            -8-               LRB9001251WHmgB
 1    under  this  Act  or  a  copy  thereof  duly certified by the
 2    Secretary shall be admissible in evidence  as  competent  and
 3    sufficient proof of the registration of a mark in any actions
 4    or judicial proceedings in any court of this State.
 5        Section  30.   Duration  and renewal. A registration of a
 6    mark under this Act shall be effective for a term of 5  years
 7    from  the  date  of  registration and, upon application filed
 8    within 60 days before the expiration of the term, on  a  form
 9    furnished  by the Secretary, the registration may be  renewed
10    for a like term from the end of the expiring term.  A renewal
11    fee of $5, payable to  the  Secretary,  shall  accompany  the
12    application for renewal of the registration.
13        A registration may be renewed for successive periods of 5
14    years in like manner.
15        Any  registration  in force on the effective date of this
16    Act shall continue in full force and effect for the unexpired
17    term of the registration and may  be  renewed  by  filing  an
18    application for renewal with the Secretary complying with the
19    requirements  of    the  Secretary and paying the renewal fee
20    within 60 days before the expiration of the registration.
21        All applications for renewal under this Act,  whether  of
22    registrations   made  under  this  Act  or  of  registrations
23    effected under  any  prior  Act,  shall  include  a  verified
24    statement  that  the  mark  has  been and is still in use and
25    include 3 specimens showing actual use of the mark on  or  in
26    connection with the goods or services.
27        Section  35.  Assignments, changes of name or address and
28    other instruments.
29        (a)  Any mark and its registration under this  Act  shall
30    be    assignable  with the good will of the business in which
31    the mark is used, or with that part of the good will  of  the
32    business  connected  with  the  use  of and symbolized by the
                            -9-               LRB9001251WHmgB
 1    mark.  Assignment  shall  be  on  a  form  furnished  by  the
 2    Secretary  and  may  be  recorded with the Secretary upon the
 3    payment of a recording fee of $5  payable  to  the  Secretary
 4    who,  upon  recording  of  the assignment, shall issue in the
 5    name of the assignee a new certificate for the  remainder  of
 6    the  term of the registration or of the last renewal thereof.
 7    An assignment of any registration under  this  Act  shall  be
 8    void   as  against  any  subsequent  purchaser  for  valuable
 9    consideration without notice, unless it is recorded with  the
10    Secretary  within 3 months after the date thereof or prior to
11    such subsequent  purchase.
12        (b)  Any registrant or applicant effecting  a  change  of
13    the name or address of the person to whom the mark was issued
14    or  for  whom  an application was filed may record, on a form
15    furnished by the Secretary, a certificate of change  of  name
16    or  address of the registrant or applicant with the Secretary
17    upon the payment of  a recording fee of  $5.   The  Secretary
18    may  issue  in  the  name  of  the  assignee a certificate of
19    registration of an assigned application.  The  Secretary  may
20    issue  in  the  name  of  the  assignee, a new certificate of
21    registration  for  the  remainder  of   the   term   of   the
22    registration or last renewal thereof.
23        (c)  Other  instruments which relate to a mark registered
24    or application pending pursuant to this Act, such as, by  way
25    of  example,  licenses, security interests, or mortgages, may
26    be recorded in the discretion of the Secretary, provided that
27    instrument is in writing and duly executed.
28        (d)  Acknowledgement shall be prima facie evidence of the
29    execution of an  assignment  or  other  instrument  and  when
30    recorded  by  the  Secretary, the record shall be prima facie
31    evidence of execution.
32        Section 40. Records. The Secretary shall keep for  public
33    examination a record of all marks registered or renewed under
                            -10-              LRB9001251WHmgB
 1    this  Act,  as  well  as  a  record of all documents recorded
 2    pursuant to Section 35.
 3        The Secretary will provide a certified copy of any single
 4    registration, or portion thereof, upon receiving a request in
 5    writing for the copy and payment of a $5 fee, payable to  the
 6    Secretary.
 7        Section  45.   Cancellation.  The  Secretary shall cancel
 8    from the register, in whole or in part:
 9        (a)  any  registration  concerning  which  the  Secretary
10    shall receive a voluntary request  for  cancellation  thereof
11    from the registrant or the assignee of record;
12        (b)  all  registrations  granted  under  this Act and not
13    renewed in accordance with this Act;
14        (c)  any registration concerning which the circuit  court
15    shall find:
16             (1)  that the registered mark has been abandoned,
17             (2)  that  the  registrant  is  not the owner of the
18        mark,
19             (3)  that the registration was granted improperly,
20             (4)  that    the    registration    was     obtained
21        fraudulently,
22             (5)  that the mark is or has become the generic name
23        for  the  goods  or  services,  or a portion thereof, for
24        which it has been registered,
25             (6)  that the registered mark is so similar,  as  to
26        be likely to cause confusion or mistake or to deceive, to
27        a  mark registered by another person in the United States
28        Patent and Trademark Office prior  to  the  date  of  the
29        filing   of  the  application  for  registration  by  the
30        registrant hereunder, and not abandoned; however,  should
31        the registrant prove that the  registrant is the owner of
32        a  concurrent registration of a mark in the United States
33        Patent and Trademark Office covering  an  area  including
                            -11-              LRB9001251WHmgB
 1        this  State,  the  registration  hereunder  shall  not be
 2        cancelled for such area of the State; or
 3        (d)  when the circuit court shall order cancellation of a
 4    registration on any ground.
 5        The clerk of  the  court  ordering  the  cancellation  or
 6    making  any  of the findings specified in subdivision (c) (3)
 7    shall, when such judgment becomes final, transmit a certified
 8    copy of the judgment to the Secretary of State.
 9        Section 50. Classification. The Secretary shall  by  rule
10    establish   a   classification  of  goods  and  services  for
11    convenience of administration of this Act, but not  to  limit
12    or  extend  the  applicant's  or  registrant's  rights, and a
13    single application for registration of a mark may include any
14    or all goods upon which, or services with which, the mark  is
15    actually  being  used  and  which  are  comprised in a single
16    class.  In no event shall a single application include  goods
17    or  services upon which the mark is being used and which fall
18    within different  classes.   To  the  extent  practical,  the
19    classification  of  goods  and services should conform to the
20    classification  adopted  by  the  United  States  Patent  and
21    Trademark Office.
22                       Classification of Goods
23    Class     Title
24    1         Chemicals
25    2         Paints
26    3         Cosmetics and cleaning preparations
27    4         Lubricants and fuels
28    5         Pharmaceuticals
29    6         Metal goods
30    7         Machinery
31    8         Hand tools
32    9         Electrical and scientific apparatus
33    10        Medical apparatus
                            -12-              LRB9001251WHmgB
 1    11        Environmental control apparatus
 2    12        Vehicles
 3    13        Firearms
 4    14        Jewelry
 5    15        Musical Instruments
 6    16        Paper goods and printed matter
 7    17        Rubber goods
 8    18        Leather goods
 9    19        Non-metallic building materials
10    20        Furniture and articles not otherwise classified
11    21        Housewares and glass
12    22        Cordage and fibers
13    23        Yarns and threads
14    24        Fabrics
15    25        Clothing
16    26        Fancy goods
17    27        Floor coverings
18    28        Toys and sporting goods
19    29        Meats and processed foods
20    30        Staple foods
21    31        Natural agricultural products
22    32        Light beverages
23    33        Wine and spirits
24    34        Smoker's articles
25    35        Advertising and business
26    36        Insurance and financial
27    37        Building construction and repair
28    38        Telecommunications
29    39        Transportation and storage
30    40        Treatment of materials
31    41        Education and entertainment
32    42        Miscellaneous
33        Section 55.   Fraudulent  registration.  Any  person  who
                            -13-              LRB9001251WHmgB
 1    shall  for  himself  or  herself,  or  on behalf of any other
 2    person, procure the filing or registration of any mark in the
 3    office of the Secretary under this Act, by  knowingly  making
 4    any false or fraudulent representation or declaration, orally
 5    or  in  writing,  or  by any other fraudulent means, shall be
 6    liable to pay all damages sustained  in  consequence  of  the
 7    filing  or  registration,  to be recovered by or on behalf of
 8    the  party  injured  thereby  in  any  court   of   competent
 9    jurisdiction.
10        Section  60.   Infringement. Subject to the provisions of
11    Section 80 of this Act, a person shall be liable in  a  civil
12    action  by  the  registrant  for  any and all of the remedies
13    provided in Section 70 of this Act if the person:
14        (a)  uses, without the consent  of  the  registrant,  any
15    reproduction,  counterfeit, copy, or colorable imitation of a
16    mark registered under this Act in connection with  the  sale,
17    distribution,  offering for sale, or advertising of any goods
18    or services on or in connection with which such use is likely
19    to cause confusion or mistake or to deceive as to the  source
20    of origin of such goods or services; or
21        (b)  reproduces,   counterfeits,   copies,  or  colorably
22    imitates  any  such  mark  and  applies  such   reproduction,
23    counterfeit,  copy,  or colorable imitation to labels, signs,
24    prints, packages, wrappers,  receptacles,  or  advertisements
25    intended  to  be  used upon or in connection with the sale or
26    other distribution in this State of such goods  or  services.
27    The  registrant  shall  not be entitled to recover profits or
28    damages under this subdivision (b) unless the acts have  been
29    committed with the intent to cause confusion or mistake or to
30    deceive.
31        Section 65.  Injury to business reputation; dilution.
32        (a)  The  owner  of  a mark which is famous in this State
                            -14-              LRB9001251WHmgB
 1    shall be entitled, subject to the principles  of  equity  and
 2    upon  such  terms  as  the  court  deems  reasonable,  to  an
 3    injunction  against another person's commercial use of a mark
 4    or tradename, if the use begins after  the  mark  has  become
 5    famous  and causes dilution of the distinctive quality of the
 6    mark, and to obtain such other relief as is provided in  this
 7    Section.   In  determining  whether a mark is distinctive and
 8    famous, a court may consider factors such as, but not limited
 9    to:
10             (1)  the   degree   of    inherent    or    acquired
11        distinctiveness of the mark in this State;
12             (2)  the  duration  and extent of use of the mark in
13        connection with the goods and  services  with  which  the
14        mark is used;
15             (3)  the  duration  and  extent  of  advertising and
16        publicity of the mark in this State;
17             (4)  the geographical extent of the trading area  in
18        which the mark is used;
19             (5)  the channels of trade for the goods or services
20        with which the mark is used;
21             (6)  the  degree  of  recognition of the mark in the
22        trading areas and channels of trade in this State used by
23        the  mark's  owner  and  the  person  against  whom   the
24        injunction is sought;
25             (7)  the  nature  and  extent  of use of the same or
26        similar mark by third parties; and
27             (8)  whether the mark is  the  subject  of  a  State
28        registration  in  this  State,  or a federal registration
29        under the Act of March 3,  1881,  or  under  the  Act  of
30        February 20, 1905, or on the principal register.
31        In  an  action brought under this Section, the owner of a
32    famous mark shall be entitled only to  injunctive  relief  in
33    this  State, unless the person against whom injunctive relief
34    is  sought  willfully  intended  to  trade  on  the   owner's
                            -15-              LRB9001251WHmgB
 1    reputation  or to cause dilution of the famous mark.  If such
 2    willful intent is proven, the owner shall also be entitled to
 3    the remedies set forth in this Act, subject to the discretion
 4    of the court and the principles of equity.
 5        (b)  The following are not actionable under this Section:
 6             (1)  Fair use of a famous mark by another person  in
 7        comparative   commercial   advertising  or  promotion  to
 8        identify the competing goods or services of the owner  of
 9        the famous mark.
10             (2)  Noncommercial use of a mark.
11             (3)  All   forms   of   news   reporting   and  news
12        commentary.
13        Section 70.  Remedies. Any owner  of  a  mark  registered
14    under this Act may proceed by suit to enjoin the manufacture,
15    use,  display  or  sale  of  any  counterfeits  or imitations
16    thereof and any court of  competent  jurisdiction  may  grant
17    injunctions  to  restrain  such manufacture, use, display, or
18    sale as may be by the court deemed just and  reasonable,  and
19    may  require  the defendants to pay to such owner all profits
20    derived from or  all  damages  suffered  by  reason  of  such
21    wrongful  manufacture, use, display, or sale or both; and the
22    court may also order that any such counterfeits or imitations
23    in the possession or under the control of  any  defendant  in
24    the  case be delivered to an  officer of the court, or to the
25    complainant, to be destroyed.  The court in  its  discretion,
26    may  enter  judgment  for an amount not to exceed 3 times the
27    profits and damages or reasonable   attorneys'  fees  of  the
28    prevailing  party, or both, in those cases in which the court
29    finds the  other  party  committed  the  wrongful  acts  with
30    knowledge  or  in  bad faith or otherwise as according to the
31    circumstances of the case.
32        The enumeration of any right or remedy in this Act  shall
33    not  affect a registrant's right to prosecute under any penal
                            -16-              LRB9001251WHmgB
 1    law of this State.
 2        Section 75.  Forum for  actions  regarding  registration;
 3    service on out of state registrants.
 4        (a)  Actions to require cancellation of a mark registered
 5    under  this Act shall be brought in the circuit court.  In an
 6    action for cancellation, the Secretary shall not  be  made  a
 7    party  to  the proceeding but shall be notified of the filing
 8    of the complaint by the clerk of the court  in  which  it  is
 9    filed  and  shall  be  given  the  right  to intervene in the
10    action.
11        (b)  Any action under this Section may be brought by  any
12    person  who  believes  he  is  or  will  be  damaged  by  the
13    registration  complained of.  Such action shall be brought in
14    the circuit court for the  county  in  which  the  registrant
15    resides  or  has a regular and established place of business,
16    or has appointed an agent  to  receive  service,  or  if  the
17    registrant   is   a   non-resident   individual,  or  foreign
18    partnership, limited  liability  company,  association  or  a
19    corporation  not  licensed  to  do business in this State, or
20    cannot be found in this State, in the Circuit Court that sits
21    in the City of Springfield and the County of Sangamon.
22             (1)  When the agent appointed to receive process  is
23        the  Secretary  of  State,  the  Secretary of State shall
24        forward notice of such action by registered mail  to  the
25        registrant at his last address of record.
26             (2)  Notice  of any such action shall be transmitted
27        by the clerk of the court in which the action is  brought
28        to  the Secretary of State who shall place such notice in
29        the file of such registration with proper  notations  and
30        endorsements.
31        Section 80.  Common law rights. Nothing in this Act shall
32    adversely  affect  the rights or the enforcement of rights in
                            -17-              LRB9001251WHmgB
 1    marks acquired in good faith at any time at common law.
 2        Section 85.  Severability.  The provisions of the Act are
 3    severable under Section 1.31 of the Statute on Statutes.
 4        Section 90. Time of taking effect; conflicts  with  prior
 5    Acts;   intent  of  Act.   This  Act  shall  not  affect  any
 6    application, suit, proceeding, or appeal then pending on  its
 7    effective  date.  Except in the case of an application, suit,
 8    proceeding, or appeal pending on its effective date, this Act
 9    shall control in any conflict between the provisions of  this
10    Act  and the provisions of any other Act relating to marks or
11    any other Act that conflicts with this Act.  Any application,
12    suit, proceeding, or appeal pending  at  the  time  this  Act
13    takes  effect  shall  continue under the law under which that
14    application,  suit,  or  appeal  was  initiated  until  final
15    determination.
16        The intent of this Act is to provide a  system  of  State
17    trademark    registration    and   protection   substantially
18    consistent with the federal system of trademark  registration
19    and  protection  under the Trademark Act of 1946, as amended.
20    To that end, the construction given the federal Act shall  be
21    examined   as   persuasive  authority  for  interpreting  and
22    construing this Act.
23        (765 ILCS 1035/Act rep.)
24        Section 905.  Repeal.  The Trademark Registration Act  is
25    repealed.
26        Section  910.  The Registered Container Trade Mark Act is
27    amended by changing Section 2.03 as follows:
28        (765 ILCS 1050/2.03) (from Ch. 140, par. 122.3)
29        Sec. 2.03.  "Trade mark" means any  word,  name,  symbol,
                            -18-              LRB9001251WHmgB
 1    picture,  design  or device registered with the Office of the
 2    Secretary  of  State  in  accordance   with   the   Trademark
 3    Registration  and  Protection  Act "An Act to provide for the
 4    registration and protection of trade-marks, service marks and
 5    trade names, approved July  11,  1955,"  which  is  filed  as
 6    provided  in  Section 3 of this Act and adopted and used by a
 7    person  to  identify  containers  made,  sold,  produced   or
 8    distributed  by  him  or  with  his  authorization  and which
 9    distinguishes them from containers made,  sold,  produced  or
10    distributed by others.
11    (Source: P.A. 80-1449.)
12        Section  999.   Effective  date.   This  Act takes effect
13    January 1, 1998.

[ Top ]