[Senate Executive Report 107-1]
[From the U.S. Government Publishing Office]
107th Congress Exec. Rpt.
SENATE
1st Session 107-1
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PROTOCOL RELATING TO THE MADRID AGREEMENT
_______
November 15, 2001.--Ordered to be printed.
_______
Mr. Biden from the Committee on Foreign Relations submitted the
following
R E P O R T
[To accompany Treaty Doc. 106-41]
The Committee on Foreign Relations, to which was referred
the Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks adopted at Madrid (``the
Madrid Protocol'') on June 27, 1989, which entered into force
on December 1, 1995, and a related letter from the Council of
the European Union regarding voting within the assembly
established under the Protocol, having considered the same,
reports favorably on the Protocol with an understanding,
declarations and conditions set forth in the resolution of
advice and consent, and recommends that the Senate give its
advice and consent to the accession thereof as set forth in
this report and the accompanying resolution of advice and
consent to accession.
CONTENTS
Page
I. Purpose..........................................................2
II. Background.......................................................2
III. Entry Into Force and Denunciation................................4
IV. Committee Action.................................................5
V. Committee Recommendation and Comments............................5
VI. Text of Resolution of Advice and Consent to Accession............6
VII. Appendix.........................................................9
I. Purpose
This treaty will permit U.S. trademark owners to register
and protect a trademark internationally with a single
standardized English-language filing and a single payment in
dollars at the United States Patent and Trademark Office, in
lieu of registering a mark in each country individually.
II. Background
A. General
The Letter of Submittal from the Secretary of State to the
President, dated July 11, 2000, and set forth in full in Treaty
Document 106-41, explains in detail the background to the
Madrid Protocol (see pp. vi-vii). This background may be
summarized as follows.
Although an international system for the registration of
trademarks--the ``Madrid Agreement Concerning the International
Registration of Marks''--has been in place for over a century,
the United States has never been part of this system because it
believed that the Agreement contained several provisions
inimical to U.S. interests. These provisions included the
requirement that applications be made in the French language
and a provision, called ``central attack,'' which resulted in
cancellation of an international registration in all countries
party to the Agreement if the registration in the home country
was cancelled in the first five years.
In 1989, the parties to the Madrid Agreement signed the
Madrid Protocol. The Protocol is parallel to, but independent
of, the Madrid Agreement. The Protocol remedies the concerns in
the Madrid Agreement that had deterred the United States from
joining the Agreement. Among other things, the Protocol permits
the filing of applications in English. The Protocol addresses
the concern about ``central attack'' as follows: if the
registration in the home country is cancelled in the first five
years, the international registration may be ``transformed''
into a series of national applications in the designated
countries; those applications would retain the original filing
date.
In the 1990s, the United States remained outside the
Protocol--despite the Protocol's resolution of major U.S.
concerns--because intergovernmental organizations that meet the
criteria to become Contracting Parties are each permitted (if
they were to become a Contracting Party) to have an additional
vote separate and independent from that of its member states in
the operation of the Protocol. The United States long has
opposed such voting power in multilateral fora for
intergovernmental organizations because of its effect in
diluting U.S. voting power. In early 2000, the United States
reached an accommodation with the European Community (EC), the
only intergovernmental organization likely to join the
Protocol, which opened the door for the Executive Branch to
recommend to the Senate that it advise and consent to
accession. That accommodation is described below in Section
II(C).
B. Summary of Madrid Protocol Process
A detailed discussion of the Madrid Protocol process is set
forth in the Letter of Submittal from the Secretary of State to
the President, dated July 11, 2000, and set forth in full in
Treaty Document 106-41 (see pp. vii-xi). This process may be
summarized as follows.
The Madrid Protocol will provide a trademark registration
filing system that will permit a U.S. trademark owner to file
for registration in any number of Contracting Parties by filing
a single standardized application, in English, with a single
payment in dollars, at the United States Patent and Trademark
Office (``PTO'').
Under the Madrid Protocol, the PTO must review the
international application and certify that it is identical to
the underlying U.S. application or registration that is claimed
as the basis for the international application. If the
international application meets the test, the PTO must forward
the international application to the International Bureau of
the World Intellectual Property Organization.
After a formalities check, the International Bureau then
registers the application as an international registration and
forwards the data in the application to the Contracting Parties
that the application for registration has selected. Thus,
international registration may be obtained without obtaining a
local agent and without filing a national or regional
application with each Contracting Party. Equally important,
renewal of all extensions of protection may be made by filing a
single request with a single payment.
A foreign trademark owner would follow a similar process to
seek extension of protection of a trademark in the United
States. The foreign owner would file an application for
registration in the country of a foreign Contracting Party
under the Protocol, and request extension of protection by
other Contracting Parties. The application would be forwarded
to the International Bureau. Then, if the owner requested
extension of protection to the United States, the International
Bureau would forward the application to the U.S. Patent and
Trademark Office. The PTO would examine the request as it would
any application for protection filed directly with the PTO. As
provided in the proposed implementing legislation, the request
for extension of protection will ``be examined as an
application for registration on the Principal Register'' under
the Trademark Act of 1946. (See, e.g., Sec. 2 of S. 407, 107th
Congress) (Proposed new Sec. 68(a) of Trademark Act of 1946).
C. European Community Membership and Voting
From the perspective of the United States, the most
controversial aspect of the Madrid Protocol has been the voting
provision contained in subparagraph 3(a) of Article 10, which
provides that ``[e]ach Contracting Party shall have one vote in
the Assembly.'' Because intergovernmental organizations may
become Contracting Parties under the Protocol, this provision
has the effect of allowing an intergovernmental organization
such as the European Community (``EC'') to have an additional
vote separate, independent and in addition to the votes of its
member states if it were to become a Contracting Party to the
Madrid Protocol.
The United States opposed this possibility as a
contravention of the democratic concept of one vote per
country. State Department officials sought to ensure that this
voting structure would not establish a damaging precedent for
deviation from the one state-one vote principle in future
international agreements.
At the request of the United States, the EC and its Member
States affirmed, in a February 2, 2000 letter from Margarida
Figueiredo, Chairwoman of the Permanent Representatives
Committee on behalf of the Council of the European Union, their
commitment to a consensus-based decision process within the
Assembly. They also have indicated that, in the event that a
vote is called for, they will endeavor to consult with the
United States and, where appropriate, with other like-minded
participants. The EC letter also affirms that, where these
consultations do not lead to a common position among the United
States, the EC and its Member States on the subject put to a
vote, it is the intention of the EC and its Member States to
use their voting rights in such a way as to ensure that the
number of votes cast by the EC and its Member States does not
exceed the number of the EC's Member States.
D. Declarations Proposed by Executive Branch
The Executive Branch recommends that the United States
accede to the Protocol, accompanied by three declarations.
These declarations concern the extension of the time period
within which the United States must notify the International
Bureau of its refusal to extend protection to an international
registration, the possibility of a refusal of protection
concerning any given international registration as a result of
third party opposition to the granting of protection, and the
fees to which the United States is entitled in connection with
an extension of protection of an international registration.
E. Implementing Legislation
Legislation is necessary to implement the Protocol for the
United States. The Executive Branch has indicated that the
United States will not deposit the instrument of accession to
the Protocol until enactment of the implementing legislation
and until the passage of time sufficient to allow the PTO to
promulgate the necessary regulations. This legislation would
amend the Trademark Act of 1946.
There is broad support for the implementing legislation in
the Committees on the Judiciary of the House and Senate, which
have jurisdiction over trademark law. Earlier this year, the
Committee on the Judiciary of the House of Representatives
approved the bill by voice vote, and then the full House passed
the bill under suspension of the rules (H.R. 741, approved
March 14, 2001). In the Senate, the Committee on the Judiciary
also approved the bill by voice vote (S. 407, reported July 25,
2001). The reports of both committees on this legislation
express the view that ``there is no opposition'' either to the
legislation or to the substantive portions of the Protocol.
(See S. Rept. 107-46, at 4; H. Rept. 107-19, at 3).
III. Entry Into Force and Denunciation
A. Entry Into Force
The Protocol is in force. Pursuant to Article 14, for an
acceding party, the agreement shall enter into force three
months after the date on which its accession has been notified
by the Director General of the World Intellectual Property
Organization.
B. Denunciation
Pursuant to Article 15, a Contracting Party may denounce
the Protocol by notifying the Director General of the World
Intellectual Property Organization. The denunciation takes
effect one year after the day on which the Director General has
received the notification.
IV. Committee Action
The Committee held a public hearing on the Madrid Protocol
on September 13, 2000 (a transcript of the hearing and
questions for the record may be found in S. Hrg. 106-660). On
November 14, 2001, the Committee considered the Madrid Protocol
and ordered it favorably reported by a voice vote, with a
recommendation that the Senate give its advice and consent to
the accession to the Protocol subject to the understanding,
declarations, and conditions set forth in the resolution of
advice and consent.
V. Committee Recommendation and Comments
The Committee recommends that the Senate advise and consent
to the accession of the Madrid Protocol. The Committee believes
that the Protocol will provide significant benefits to U.S.
trademark owners by greatly simplifying the process of applying
for international protection of a trademark. It will provide
``one-stop shopping''--a means to protect a trademark abroad
through the filing of a single application in a single location
with a single fee. The Madrid Protocol will thereby save both
time and money for U.S. trademark owners. Time will be saved
not only in the simplified application process, but also in the
process of review. Barring the filing of an opposition,
applications must be reviewed and acted upon within 18 months,
thereby shortening a process that can, in some countries, take
several years. Money will be saved because it will reduce the
transaction costs normally associated with filing for
protection abroad. The Protocol would not affect the integrity
of the U.S. trademark registration system because it does not
address substantive trademark law. As stated in the letter of
submittal from the Secretary of State to the President, the PTO
must examine a request for protection under the Protocol ``in
the same manner, and pursuant to the same requirements, as a
regularly-filed U.S. application.''
The Committee has included in the resolution of advice and
consent to accession the three declarations proposed by the
Executive Branch related to Protocol Article 5(2)(b) (related
to the time period for notification of refusal to extend
protection), Article 5(2)(c) (related to the time period for
notification of refusal to extend protection as a result of
third party opposition) and Article 8(7)(a) (related to fees
charged in connection with international registrations and
renewals). The Committee also notes that, under the Rule 7(2)
of the Common Regulations under the Madrid Agreement and the
Madrid Protocol, the United States intends to notify the
Director General of the World Intellectual Property
Organization that it will require that trademark owners
requesting extension of protection to the United States under
the Protocol to provide a statement of bona fide intention to
use a mark in commerce. This is consistent with current U.S.
law.
The Committee recognizes that the Executive Branch believes
the commitment of the European Community on the question of
voting in the Assembly of the Madrid Union by the Community is,
although not legally binding, a significant political
commitment. The Committee concurs in the judgment of the
Secretary of State that while this is not an ``ideal resolution
of the voting issue and is certainly not an acceptable model
for future agreements,'' it does permit the United States to
proceed with accession to the Protocol. To ensure that the
Senate is promptly informed in the event that the European
Community reneges on this commitment, the Committee has
included a condition in the resolution of advice and consent
requiring that the President notify the Senate within 15 days
of such an occurrence.
The Committee also has included a declaration that the
Protocol is not self-executing for the United States. For the
purposes of the Protocol, the declaration that it is not self-
executing reflects the fact that, as stated above and as stated
in the Executive Branch's submittals to the Senate,
implementing legislation is necessary to carry out the
provisions of the Protocol. Enactment of such legislation,
which is proceeding through the normal legislative process,
will be necessary before the President may deposit the U.S.
instrument of accession to the Protocol. This declaration also
makes clear the Committee's view that the Protocol does not
establish a private right of action. The Executive Branch has
informed the Committee that it shares this view. (See exchange
of letters in appendix)
VI. Text of Resolution of Advice and Consent to Accession
Resolved (two-thirds of the Senators present concurring
therein),
SECTION 1. ADVICE AND CONSENT TO ACCESSION TO THE MADRID PROTOCOL,
SUBJECT TO AN UNDERSTANDING, DECLARATIONS, AND
CONDITIONS.
The Senate advises and consents to the accession by the
United States to the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks, adopted at
Madrid on June 27, 1989, entered into force on December 1, 1995
(Treaty Doc. 106-41; in this resolution referred to as the
``Protocol''), subject to the understanding in section 2, the
declarations in section 3, and the conditions in section 4.
SEC. 2. UNDERSTANDING.
The advice and consent of the Senate under section 1 is
subject to the understanding, which shall be included in the
United States instrument of accession to the Protocol, that no
secretariat is established by the Protocol and that nothing in
the Protocol obligates the United States to appropriate funds
for the purpose of establishing a permanent secretariat at any
time.
SEC. 3. DECLARATIONS.
The advice and consent of the Senate under section 1 is
subject to the following declarations.
(1) Not self-executing.--The United States declares
that the Protocol is not self-executing.
(2) Time limit for refusal notification.--Pursuant to
Article 5(2)(b) of the Protocol, the United States
declares that, for international registrations made
under the Protocol, the time limit referred to in
subparagraph (a) of Article 5(2) is replaced by 18
months. The declaration in this paragraph shall be
included in the United States instrument of accession.
(3) Notifying refusal of protection.--Pursuant to
Article 5(2)(c) of the Protocol, the United States
declares that, when a refusal of protection may result
from an opposition to the granting of protection, such
refusal may be notified to the International Bureau
after the expiry of the 18-month time limit. The
declaration in this paragraph shall be included in the
United States instrument of accession.
(4) Fees.--Pursuant to Article 8(7)(a) of the
Protocol, the United States declares that, in
connection with each international registration in
which it is mentioned under Article 3ter of the
Protocol, and in connection with each renewal of any
such international registration, the United States
chooses to receive, instead of a share in revenue
produced by the supplementary and complementary fees,
an individual fee the amount of which shall be the
current application or renewal fee charged by the
United States Patent and Trademark Office to a domestic
applicant or registrant of such a mark. The declaration
in this paragraph shall be included in the United
States instrument of accession.
SEC. 4. CONDITIONS.
The advice and consent of the Senate under section 1 is
subject to the following conditions:
(1) Treaty interpretation.--The Senate reaffirms
condition (8) of the resolution of ratification of the
Document Agreed Among the States Parties to the Treaty
on Conventional Armed Forces in Europe (CFE) of
November 19, 1990 (adopted at Vienna on May 31, 1996),
approved by the Senate on May 14, 1997 (relating to
condition (1) of the resolution of ratification of the
INF Treaty, approved by the Senate on May 27, 1988).
(2) Notification of the senate of certain european
community votes.--The President shall notify the Senate
not later than 15 days after any nonconsensus vote of
the European Community, its member states, and the
United States within the Assembly of the Madrid Union
in which the total number of votes cast by the European
Community and its member states exceeded the number of
member states of the European Community.
VII. Appendix
United States Senate,
Committee on Foreign Relations,
Washington, DC, November 14, 2001.
Hon. William H. Taft, IV,
Legal Adviser,
Department of State,
Washington, DC.
Dear Will:
Today the Committee on Foreign Relations will take up the
Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks.
The Committee intends to include in the resolution of
advice and consent a declaration which states that the Protocol
is not self-executing. For the purposes of the Protocol, I
believe that this declaration reflects the fact that
implementing legislation is necessary to carry out the
provisions of the Protocol and reflects the Committee's view
that the Protocol does not establish a private right of action.
I would appreciate knowing whether the Executive Branch
shares this view regarding whether the Protocol establishes a
private right of action.
Sincerely,
Joseph R. Biden, Jr.,
Chairman.
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Hon. William H. Taft, IV,
Legal Adviser, Department of State,
Washington, DC, November 14, 2001.
Hon. Joseph R. Biden, Jr., Chairman,
United States Senate,
Committee on Foreign Relations,
Washington, DC.
Dear Mr. Chairman:
Thank you for your letter of November 14, 2001, informing
me that the Committee on Foreign Relations will take up the
Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks today.
You have indicated that the Committee intends to include in
the resolution of advice and consent a declaration that states
that the Protocol is not self-executing. For the purposes of
the Protocol, I understand the Committee believes that this
declaration reflects the fact that implementing legislation is
necessary to carry out the provisions of the Protocol and
reflects the Committee's view that the Protocol does not
establish a private right of action.
In response to your inquiry, I am pleased to inform you
that the Executive Branch shares the Committee's view that the
Protocol does not establish a private right of action.
Sincerely,
William H. Taft, IV.