[Senate Executive Report 107-1]
[From the U.S. Government Publishing Office]



107th Congress                                               Exec. Rpt.
                                 SENATE
 1st Session                                                      107-1

======================================================================



 
               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.
                              ----------                              

                          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.

                                  
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