(A) No person shall knowingly do any of the following:
(1) Attach, affix or otherwise use a counterfeit mark in connection with the manufacture of goods or services, whether or not the goods or services are intended for sale or resale;
(2) Possess, sell or offer for sale tools, machines, instruments, materials, articles or other items of personal property with the knowledge that they are designed for the production or reproduction of counterfeit marks;
(3) Purchase or otherwise acquire goods, and keep or otherwise have the goods in the person’s possession, with the knowledge that a counterfeit mark is attached to, affixed to or otherwise used in connection with the goods and with the intent to sell or otherwise dispose of the goods;
(4) Sell, offer for sale or otherwise dispose of goods with the knowledge that a counterfeit mark is attached to, affixed to or otherwise used in connection with the goods; or
(5) Sell, offer for sale or otherwise provide services with the knowledge that a counterfeit mark is used in connection with that sale, offer for sale or other provision of the services.
(B) Whoever violates this section is guilty of trademark counterfeiting.
(1) A violation of division (A)(1) of this section is guilty of a felony to be prosecuted under appropriate state law.
(2) Except as otherwise provided in this division (B), a violation of division (A)(2) of this section is a misdemeanor of the first degree. If the circumstances of the violation indicate that the tools, machines, instruments, materials, articles or other items of personal property involved in the violation were intended for use in the commission of a felony, a violation of division (A)(2) is a felony to be prosecuted under appropriate state law.
(3) Except as otherwise provided in this division (B)(3), a violation of division (A)(3), (A)(4) or (A)(5) of this section is a misdemeanor of the first degree. If the cumulative sales price of the goods or services to which or in connection with which the counterfeit mark is attached, affixed or otherwise used in the offense is $1,000 or more, a violation of division (A)(3), (A)(4) or (A)(5) is a felony to be prosecuted under appropriate state law.
(C) A defendant may assert as an affirmative defense to a charge of a violation of this section, defenses, affirmative defenses and limitations on remedies that would be available in a civil, criminal or administrative action or proceeding under the Lanham Act, being 15 U.S.C. §§ 1051 through 1127, as amended, the Trademark Counterfeiting Act of 1984, being 18 U.S.C. § 2320, as amended, R.C. Chapter 1329 or another section of the Ohio Revised Code, or common law.
(D) (1) Law enforcement officers may seize pursuant to Criminal Rule 41, R.C. Chapter 2933 or R.C. Chapter 2981 either of the following:
(a) Goods to which or in connection with which a person attached, affixed, otherwise used or intended to attach, affix or otherwise use a counterfeit mark in violation of this section; or
(b) Tools, machines, instruments, materials, articles, vehicles or other items of personal property that are possessed, sold, offered for sale or used in a violation of this section or in an attempt to commit or complicity in the commission of a violation of this section.
(2) Notwithstanding any contrary provision of R.C. Chapter 2981, if a person is convicted of or pleads guilty to a violation of this section, an attempt to violate this section or complicity in a violation of this section, the court involved shall declare that the goods described in division (D)(1)(a) of this section and the personal property described in division (D)(1)(b) of this section are contraband and are forfeited. Prior to the court’s entry of judgment under Criminal Rule 32, the owner of a registered trademark or service mark that is the subject to the counterfeit mark may recommend a manner in which the forfeited goods and forfeited personal property should be disposed of. If that owner makes a timely recommendation of a manner of disposition, the court is not bound by the recommendation. If that owner makes a timely recommendation of a manner of disposition, the court may include in its entry of judgment an order that requires appropriate persons to dispose of the forfeited goods and forfeited personal property in the recommended manner. If the owner fails to make a timely recommendation of a manner of disposition or if that owner makes a timely recommendation of a manner of disposition but the court determines to not follow the recommendation, the court shall include in its entry of judgement an order that requires the law enforcement agency that employs the law enforcement officer who seized the forfeited goods or the forfeited personal property to destroy them or cause their destruction.
(E) This section does not affect the rights of an owner of a trademark or service mark, or the enforcement in a civil action or in administrative proceedings of the rights of an owner or a trademark or service mark under the Lanham Act, being 15 U.S.C. §§ 1051 through 1127, as amended, the Trademark Counterfeiting Act of 1984, being 18 U.S.C. § 2320, as amended, R.C. Chapter 1329, or another section of the Ohio Revised Code or common law.
(F) As used in this section:
COUNTERFEIT MARK.
(a) Except as provided in division (b) of this definition, the term means a spurious trademark or a spurious service mark that satisfies both of the following:
1. It is identical with or substantially indistinguishable from a mark that is registered on the principal register in the United States Patent and Trademark Office for the same goods or services as the goods or services to which or in connection with which the spurious trademark or spurious service mark is attached, affixed or otherwise used, or from a mark that is registered with the Secretary of State pursuant to R.C. §§ 1329.54 through 1329.67 for the same goods or services as the goods or services to which or in connection with which the spurious trademark or spurious service mark is attached, affixed or otherwise used, and the owner of the registration uses that registered trademark, whether or not the offender knows that the mark is registered in a manner described in this division (a)1.; and
2. Its use is likely to cause confusion or mistake or to deceive other persons.
(b) The term does not include a mark or other designation that is attached to, affixed to or otherwise used in connection with goods or services if the holder of the right to use the mark or other designation authorizes the manufacturer, producer or vendor of those goods or services to attach, affix or otherwise use the mark or other designation in connection with those goods or services at the time of their manufacture, production or sale.
CUMULATIVE SALES PRICE. Means the product of the lowest single unit sales price charged or sought to be charged by an offender for goods to which or in connection with which a counterfeit mark is attached, affixed or otherwise used or of the lowest single service transaction price charged or sought to be charged by an offender for services in connection with which a counterfeit mark is used, multiplied by the total number of those goods or services, whether or not units of goods are sold or are in an offender’s possession, custody or control.
REGISTERED TRADEMARK OR SERVICE MARK. Means a trademark or service mark that is registered in a manner described in division (a) of the definition of counterfeit mark.
SERVICE MARK. Has the same meaning as in R.C. § 1329.54.
TRADEMARK. Has the same meaning as in R.C. § 1329.54.
(R.C. § 2913.34)