[Senate Executive Report 105-17]
[From the U.S. Government Publishing Office]
105th Congress Exec. Rpt.
SENATE
2d Session 105-17
_______________________________________________________________________
TRADEMARK LAW TREATY WITH REGULATIONS
_______
June 19, 1998.--Ordered to be printed
_______________________________________________________________________
Mr. Helms, from the Committee on Foreign Relations,
submitted the following
R E P O R T
[To accompany Treaty Doc. 105-35]
The Committee on Foreign Relations, to which was referred
the Trademark Law Treaty done at Geneva October 27, 1994, with
Regulations, signed by the United States on October 28, 1994,
having considered the same, reports favorably thereon with two
declarations and one proviso, and recommends that the Senate
give its advice and consent to the ratification thereof as set
forth in this report and the accompanying resolution of
ratification.
I. Purpose
The purpose of the Treaty is to harmonize and simplify the
trademark registration procedures of national trademark
offices.
II. Background
The Trademark Law Treaty was completed at Geneva,
Switzerland, on October 27, 1994 and entered into force on
August 1, 1996. The President submitted the treaty to the
Senate on January 29, 1998.
Because existing United States trademark law is generally
compatible with the requirements of the Treaty, the changes to
United States law needed to implement the Treaty are technical
in nature.
III. Summary
a. general
The negotiation and creation of the Trademark Law Treaty
occurred under the auspices of the World Intellectual Property
Organization (``WIPO''), which is the specialized agency of the
United Nations responsible for the administration of most of
the multilateral intellectual property law treaties. The
proposed treaty is part of an ongoing effort, coordinated by
WIPO, to harmonize the inter-
national standards relating to protection of trademarks.
Beginning in 1989, efforts were made to reach agreement on
harmonization of substantive principles. When this effort did
not lead to an agreement, the harmonization process was
adjusted to focus on administrative and procedural
improvements. In October 1994, these efforts culminated in the
creation of the Trademark Law Treaty.
There are several existing international treaties that bear
on protection for trademarks, but the United States is not a
member of all of them.
Paris Convention. The United States is a member of the
basic substantive trademark treaty, which is the 1883 Paris
Convention for the Protection of Industrial Property. The
trademark provisions establish only a few minimal requirements.
Primary reliance is placed on the principle of national
treatment--that is, the scope of protection is left to national
law and the basic requirement is that foreigners be accorded
the same protection that is granted to nationals of a country.
In addition to national treatment protection, the Paris
Convention requires a member to accord priority to a trademark
application filed within six months of an original filing in
another member country. Also, when a trademark is duly
registered in its country of origin, a member country must
accept an application and protect the trademark, subject to
certain exceptions.
Nice Agreement. The United States is also a member of the
1957 Nice Agreement Concerning the International Classification
of Goods and Services for the Purposes of the Registration of
Marks. The Nice Agreement establishes a classification of goods
and services to register trademarks, which is used by the
national trademark registration offices of member countries and
by WIPO in making international registrations under the 1891
Madrid Agreement.
Madrid Agreement. The 1891 Madrid Agreement Concerning the
International Registration of Marks provides for the
international registration of trademarks (including service
marks) at the International Bureau of WIPO. The trademark must
first be registered in the national trademark office of the
country of origin. Then, international registration may be
obtained from WIPO, which protects the trademark in all
countries party to the Madrid Agreement. The United States is
not a member of the Madrid Agreement.
As part of an effort to bring the United States and other
non-adhering countries into the Madrid Agreement, a Protocol to
the Madrid Agreement was developed in 1989. Among its main
innovations, the 1989 Protocol allows an applicant to base the
international registration not only on a national registration
of the mark but on an application for national registration; it
extends to 18 months (and even longer periods) the time for
oppositions and declarations against protection; and it allows
higher registration fees than permitted under the original 1891
Madrid Agreement.
H.R. 567, which would make United States law compatible
with the 1989 Madrid Protocol, passed the House of
Representatives on May 5, 1998. United States ratification to
the Madrid Protocol is unlikely since it grants voting rights
to both the European Union as a block and to each of its member
states. The President has not forwarded the 1989 Madrid
Protocol to the Senate for its advice and consent because of
the European Union voting rights issue.
The Trademark Law Treaty does not have the same voting
rights disability as the Madrid Protocol. Under the formulation
of the proposed treaty regional governmental organizations,
such as the European Union, are not permitted to cast a vote in
addition to the individual country votes.
b. article-by-article summary
The Trademark Law Treaty is intended to simplify and
harmonize the trademark registration procedures of national
trademark offices. The Treaty establishes a list of maximum
requirements for trademark registration procedures that the
national offices may impose. The list includes procedures such
as the content of the trademark application, determination of
the application filing date, recordation of assignments,
renewal of trademarks, and recordation of name and address
changes. Standardized trademark application forms and detailed
regulations are established to carry out these procedures.
Formalities such as notarization and authentication of
signatures are prohibited.
The Trademark Law Treaty consists of 25 articles. The first
17 articles deal with the substantive and procedural
obligations relating to trademark registration placed on member
states. Articles 18-25 represent the administrative and final
clauses.
Articles 1-17 may be grouped into three main phases:
acceptable requirements relating to applications for trademark
registration; permissible procedures relating to post-
registration changes; and renewal of trademarks.
Article 1 defines a few terms and gives abbreviations for
certain names, treaties or organizations.
Article 2 describes the marks to which the Treaty applies
(visible signs relating to goods, services, or both) and does
not apply (collective marks; certification and guarantee marks;
hologram marks; sound marks; and olfactory marks).
Articles 3-9 establish the maximum procedural requirements
that a national office may impose relating to a trademark
application and prosecution of the application. Article 3 is
the primary article; it deals with the content of the
application. Other articles cover representation; address for
service of communications with the national office; filing
date; single registration for goods or services in several
classes; requirements relating to division of the application
into separate parts and registration based on the divided
applications; signature for applications and communications;
and classification of goods and services for trademark
registration purposes.
Articles 10-12 deal with post-registration requirements.
Article 10 covers acceptable procedures relating to changes in
the name or address of the trademark owner, an applicant, or a
representative of the applicant or owner. Article 11 covers
changes in ownership of the registered trademark. Article 12
describes the acceptable procedures for correction of mistakes
in a registration or an application.
Article 13 is perhaps the most substantive article of the
Treaty. It governs the procedures relating to renewal of
trademarks, but also fixes the duration of the initial period
of registration and of each renewal period at 10 years.
Articles 14-17 deal with miscellaneous issues including the
requirement that the national trademark office provide an
opportunity to respond to a refusal to make registration or
grant a request; an obligation to comply with the provisions of
the 1883 Paris Convention; an obligation to register service
marks and to apply the trademark provisions of the 1883 Paris
Convention to such registrations; and the incorporation by
reference of detailed regulations and a standard trademark
application form.
Articles 18-25 comprise the administrative and final
clauses, and cover such matters as treaty adherence, revision,
and protocols; effective date; reservations; transitional
provisions; treaty denunciation; treaty languages; and the
depositary for instruments of ratification or adherence.
Changes Required to U.S. law. The existing United States
trademark law is generally compatible with the requirements of
the Trademark Law Treaty. One of the most significant changes
required relates to renewal of the trademark. Under existing
United States law, the trademark owner must file an affidavit
with the Patent and Trademark Office averring that the mark is
still in use in commerce when applying for trademark renewal.
The owner must also deposit specimens of the mark showing the
commercial use. The Treaty eliminates these affidavit and
specimen requirements as a condition of the renewal of the
trademark, although the Treaty permits a member to require that
evidence of use must be submitted to maintain the trademark
registration.
IV. Entry into Force and Termination
a. entry into force
The Trademark Law Treaty enters into force three months
after five States have deposited their instruments of
ratification. The Treaty entered into force on August 1, 1996.
After that date, other States shall become Party to the Treaty
three months after the date of the deposit of the instrument of
ratification. A State Party may elect to condition its
ratification of the treaty on the ratification by other
Parties, and entry into force will occur three months after
that condition has taken place.
b. termination
Any Party may terminate its obligations under the treaty
through notice to the Director General of the World
Intellectual Property Organization. Termination shall take
effect one year after such notification.
V. Committee Action
The Committee on Foreign Relations held a public hearing on
the proposed treaty on Wednesday, May 13, 1998. The hearing was
chaired by Senator Hagel. The Committee considered the proposed
treaty on Tuesday, May 19, 1998, and ordered the proposed
treaty favorably reported by voice vote, with the
recommendation that the Senate give its advice and consent to
the ratification of the proposed treaty subject to two
declarations, and one proviso.
VI. Committee Comments
The Committee on Foreign Relations recommends favorably the
proposed treaty. On balance, the Committee believes that the
proposed treaty is in the interest of the United States and
urges the Senate to act promptly to give its advice and consent
to ratification. The Committee notes also the overwhelming
support for the treaty from the American Bar Association, the
American Intellectual Property Lawyers Association, the
International Trademark Association, and various U.S. business
trade groups.
Several issues relating to Senate prerogatives did arise in
the course of the Committee's consideration of the treaty,
however, and the Committee believes that the following comments
may be useful to Senate in its consideration of the proposed
treaty and to the State Department.
a. limited reservations to the treaty
Article 21(4) of the treaty limits the reservations which a
State may take to the treaty. The State Department, in response
to a question for the record, had this to say about its
agreement to restrict reservations under the treaty:
The Executive did not consult with the Committee before
accepting the clause. While we are aware that the
Senate has concerns over ``no reservations'' clauses,
in the situation of this technical treaty, the
Executive's view was that such a clause protected U.S.
interests and was necessary to achieve the treaty's
benefits.
While the Committee recognizes that an abuse of reservations
can be detrimental to enforcement of the conditions agreed to
during a treaty negotiation, the Committee continues to be
concerned by the increasingly common practice of agreeing to
such ``no reservations'' clauses, which impinge upon the
Senate's prerogatives. The Committee questions whether there is
any substantive evidence that other Parties would place
numerous or burdensome reservations on the treaty so as to
undermine U.S. interests.
The Committee's recommended Resolution of Ratification
contains a declaration that it is the Sense of the Senate that
such a ``limited reservations'' provision can inhibit the
Senate in its Constitutional obligation of providing advice and
consent to ratification, and approval of this treaty should not
be read as a precedent for approval of other treaties
containing such a provision.
Although the Committee has determined that this treaty is
beneficial to the interests of the United States and should be
approved notwithstanding Article 21, the Committee will
continue to object to the inclusion of such provisions in U.S.
treaties. The Committee repeatedly has expressed its concern
that such ``no reservations'' provisions could complicate
Senate ratification, yet there has been no apparent decline in
the inclusion of such provisions in treaties signed by the
United States.
b. delay in submittal of treaty to the senate
The Committee notes that the President did not submit the
Trademark Law Treaty to the Senate for its advice and consent
until January 29, 1998, over three years after the United
States signed the Agreement. This delay is inexplicable,
particularly given that the Administration sought legislation
to bring U.S. law into compliance with the treaty one year
prior to submitting the treaty for the Senate's advice and
consent to ratification. This apparently casual attitude to the
advice and consent process is troubling.
In its response to a question for the record regarding the
reason for the delay, the State Department replied:
The Administration did not wish to submit the treaty
package to the Senate for advice and consent well in
advance of Congressional consideration of implementing
legislation. Trademark Law Treaty implementing
legislation (H.R. 1661--The Trademark Law Treaty
Implementing Act) was introduced into Congress in 1997
following extensive consultations with U.S. bar
associations on proposed amendment to domestic law.
The Executive appears to misunderstand that its request for
legislation to implement treaties prior to seeking the Senate's
advice and consent prejudges the will of the Senate in giving
advice and consent to ratification.
As a general matter, the Committee wishes to express its
concern with a recent trend of delaying submission of treaties
to the Senate for many years, even as the United States
participates in the activities of the organizations established
under some of the treaties. Of the four treaties--including
this one--considered by the Committee during its May 19
business meeting, each was submitted to the Senate more than
two years after signature by the United States. In one case,
the Administration advanced legislation to bring U.S. law into
compliance with the treaty, two years prior to a request for
advice and consent to the treaty. The Committee believes this
trend undermines the Senate's legal role in the advice and
consent to ratification of treaties. The Committee may need to
consider legislation to redress this issue should this trend
continue.
VII. Explanation of Proposed Treaty
For a detailed article-by-article analysis of the proposed
treaty, see the technical analysis submitted with the letter of
submittal from the Secretary of State, which is set forth at
pages 1-14 of Treaty Doc. 105-35.
VIII. Text of the Resolution of Ratification
Resolved, (two-thirds of the Senators present concurring
therein), That the Senate advise and consent to the
ratification of the Trademark Law Treaty done at Geneva October
27, 1994, with Regulations, signed by the United States on
October 28, 1994 (Treaty Doc. 105-35), subject to the
declarations of subsection (a), and the proviso of subsection
(b).
(a) DECLARATIONS.--The advice and consent of the Senate is
subject to the following declarations:
(1) LIMITED RESERVATIONS PROVISIONS.--It is the Sense
of the Senate that a ``limited reservations''
provision, such as that contained in Article 21, has
the effect of inhibiting the Senate in its exercise of
its constitutional duty to give advice and consent to
ratification of a treaty, and the Senate's approval of
this treaty should not be construed as a precedent for
acquiescence to future treaties containing such a
provision.
(2) TREATY INTERPRETATION.--The Senate affirms the
applicability to all treaties of the constitutionally
based principles of treaty interpretation set forth in
Condition (1) of the resolution of ratification of the
INF Treaty, approved by the Senate on May 27, 1988, and
Condition (8) of the resolution of ratification of the
Document Agreed Among the States Parties to the Treaty
on Conventional Armed Forces in Europe, approved by the
Senate on May 14, 1997.
(b) PROVISO.--The resolution of ratification is subject to
the following proviso, which shall be binding on the President:
SUPREMACY OF THE CONSTITUTION.--Nothing in the Treaty
requires or authorizes legislation or other action by
the United States of America that is prohibited by the
Constitution of the United States as interpreted by the
United States.