[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.

                               
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