[Senate Executive Report 110-8]
[From the U.S. Government Publishing Office]



110th Congress                                              Exec. Rept.
                                 SENATE
 1st Session                                                      110-8

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



 
               SINGAPORE TREATY ON THE LAW OF TRADEMARKS

                                _______
                                

                November 27, 2007.--Ordered to be printed

 Filed under authority of the order of the Senate of November 16, 2007

                                _______
                                

          Mr. Biden, from the Committee on Foreign Relations,
                        submitted the following

                                 REPORT

                    [To accompany Treaty Doc. 110-2]

    The Committee on Foreign Relations, to which was referred 
the Singapore Treaty on the Law of Trademarks, adopted in 
Singapore on March 27, 2006 and signed by the United States at 
Singapore on March 28, 2006 (the ``Singapore Treaty'' or 
``Treaty'') (Treaty Doc. 110-2), having considered the same, 
reports favorably thereon with a condition as indicated in the 
resolution of advice and consent, and recommends that the 
Senate give its advice and consent to ratification thereof, as 
set forth in this report and the accompanying resolution of 
advice and consent.

                                CONTENTS

                                                                   Page

  I. Background.......................................................1
 II. Purpose..........................................................2
III. Major Provisions.................................................2
 IV. Entry Into Force.................................................4
  V. Implementing Legislation.........................................4
 VI. Committee Action.................................................4
VII. Committee Recommendation and Comments............................4
VIII.Resolution of Advice and Consent to Ratification.................5


                             I. Background

    The Singapore Treaty was negotiated under the auspices of 
the World Intellectual Property Organization (WIPO), which was 
established by the WIPO Convention in 1967 and is composed of 
184 Member States, including the United States. Negotiations 
were concluded and the text of the Treaty adopted by a 
diplomatic conference on March 27, 2006.
    The Singapore Treaty is a revised and updated version of 
the 1994 Trademark Law Treaty, which the United States ratified 
on May 12, 2000 (the ``TLT'') (Treaty Doc. 105-35; Exec. Rept. 
105-17). The purpose of the TLT was to simplify and harmonize 
administrative procedures for national trademark applications 
and the protection of marks. Specifically, the TLT established 
a maximum list of formal requirements that a Contracting Party 
could impose on trademark applicants and holders. The Singapore 
Treaty contains virtually all of the provisions that are in the 
TLT, but includes additional provisions, which are intended to 
improve upon and update the framework established by the TLT.

                              II. Purpose

    The purpose of the Singapore Treaty is to further harmonize 
and simplify the process of recording trademark licenses and 
applying for and maintaining trademark registrations in those 
countries or intergovernmental organizations that are a party 
to the Treaty. In particular, the Singapore Treaty improves 
upon the TLT by: (1) allowing national trademark offices to 
accept only electronic filings, if they so choose; (2) 
providing relief measures for failures to comply with certain 
time limits; (3) imposing limits on license recordal 
requirements and on penalties associated with a failure to 
record licenses; (4) creating an Assembly to deal with matters 
concerning the Treaty; (5) expanding the scope to include new 
types of marks; and (6) clarifying the role of WIPO's 
International Bureau in administering the Treaty.

                         III. Major Provisions

    A detailed analysis of the Singapore Treaty may be found in 
the Letter of Submittal from the Secretary of State to the 
President, which is reprinted in full in Treaty Document 110-2. 
A summary of the key provisions of the Treaty that go beyond 
the TLT is set forth below.

1. Electronic Processing

    The Singapore Treaty makes it possible for a national 
trademark office to rely exclusively on electronic processing, 
rather than paper processing. Specifically, Article 8 provides 
that any Party to the treaty may choose whether it accepts 
communications on paper, communications in electronic form, or 
any other form of communication. By contrast, several 
provisions of the 1994 TLT, which are not included in the 
Singapore Treaty, require domestic trademark offices (such as 
the U.S. Patent and Trademark Office (the ``USPTO'')) to accept 
trademark applications submitted in paper form.
    The Singapore Treaty does not, however, mandate that 
Parties implement electronic filing systems or other automation 
systems. This is made clear in Section 3 of the Resolution by 
the Diplomatic Conference Supplementary to the Singapore Treaty 
on the Law of Trademarks and the Regulations Thereunder (the 
``Supplementary Resolution''), the text of which is set forth 
at pages 42-43 of Treaty Document 110-2, and in Rule 6 of the 
Regulations.
    In testimony before the committee regarding the USPTO's 
plans to move towards electronic filing, Ms. Boland explained 
that over 90 percent of trademark applications are currently 
filed electronically with the USPTO. At present the United 
States does not plan to mandate electronic filing but may 
revisit this question within the next decade.

2. Relief for Failure to Comply with Certain Time Limits

    The Singapore Treaty provides relief under particular 
circumstances to applicants for their failure to comply with 
certain time limits. Specifically, Article 14 requires Parties 
to provide one or more specific relief measures for trademark 
applicants who apply for such relief after having failed to 
comply with certain time limits during the trademark 
application process. Relief measures can take the form of: (1) 
an extension of the time limit concerned for the period 
prescribed in the Regulations; (2) continued processing with 
respect to the application or registration; or (3) a 
reinstatement of the rights of the applicant, holder, or other 
interested person with respect to the application or 
registration if the trademark office finds that the failure to 
comply with the time limit concerned occurred in spite of due 
care having been taken or, at the option of the Contracting 
Party, that the failure was unintentional.

3. Limit on the Requirements for the Recording of a License and on 
        Associated Penalties

    Certain countries (not the United States) require that 
trademark licenses that are issued by trademark owners be 
recorded with their national Offices. Articles 17 and 18 of the 
Singapore Treaty impose limits on the types of requirements 
that a Contracting Party can impose with respect to recording a 
license, in an effort to minimize the formalities associated 
with this process, which can be costly, time-consuming, and 
complex. Articles 19 and 20 provide additional protection by 
prohibiting Contracting Parties from depriving trademark owners 
or licensees of certain legal rights simply because of a 
failure to record a license. For example, Article 19(1) 
provides that the lack of recording a license in a Party's 
national Office shall not affect the validity of the 
registration of the mark that is the subject of the license or 
the protection of that mark.

4. The Assembly

    The Singapore Treaty establishes an Assembly of the 
Parties, which is expected to help facilitate the development 
and implementation of the treaty regime. Specifically, Article 
23 establishes an Assembly to amend the Regulations under the 
Treaty, including the Model Forms, and determine the conditions 
for the effective date of such amendments; address matters 
concerning the development of the Treaty; and perform other 
appropriate functions related to treaty implementation.

5. Scope

    The Singapore Treaty expands the scope of marks covered by 
the Treaty beyond those covered by the TLT. Specifically, the 
scope provision in Article 2 of the Singapore Treaty goes 
beyond visible signs to non-visible signs such as sound, taste, 
scent, or feel, in addition to non-traditional marks, such as 
three-dimensional marks and holograms. These marks are being 
increasingly protected in jurisdictions around the world, such 
that it is useful to have them covered by the Treaty. Further, 
Section 3 of the Supplementary Resolution makes it clear that 
the Treaty does not impose an obligation on Contracting Parties 
to register new types of marks.

6. WIPO's International Bureau

    Article 24 of the Singapore Treaty clarifies the 
administrative tasks to be performed by WIPO's International 
Bureau in relation to the Treaty. Among other tasks, the 
International Bureau is responsible for preparing and staffing 
meetings of the Assembly and other committees or working groups 
established by the Assembly, as well as revision conferences.

                          IV. Entry Into Force

    In accordance with Article 28, the Treaty will enter into 
force three months after ten States or intergovernmental 
organizations referred to in Article 26(1)(ii) of the Treaty 
have deposited their instruments of ratification or accession. 
If the United States is among those initial States that 
deposited their instruments of ratification, the Treaty will 
enter into force for the United States three months after the 
tenth instrument of ratification or accession is deposited. If 
not, the Treaty will enter into force for the United States 
three months after the date on which it deposits its instrument 
of ratification.

                      V. Implementing Legislation

    No further implementing legislation is required for the 
Treaty. Current law suffices to implement the Treaty.

                          VI.Committee Action

    The committee held a public hearing on the Treaty on July 
17, 2007 (a hearing print of this session will be forthcoming). 
Testimony was received by Ms. Lois E. Boland, Director of the 
Office of International Relations, U.S. Patent and Trademark 
Office. On September 11, 2007, the committee considered the 
Treaty, and ordered it favorably reported by voice vote, with a 
quorum present and without objection.

               VII. Committee Recommendation and Comments

    The Committee on Foreign Relations believes that the Treaty 
is an important tool to further promote and protect the rights 
of U.S. Trademark owners on a worldwide basis. The committee 
therefore urges the Senate to act promptly to give advice and 
consent to ratification of the Singapore Treaty, as set forth 
in this report and the accompanying resolution of advice and 
consent.

                            TACIT AMENDMENTS

    Articles 22 and 23 of the Singapore Treaty make clear that 
the Regulations can be amended by a super-majority vote of the 
Assembly and such amendments will take effect for all even 
absent the explicit consent of all Contracting Parties, unless 
the particular amendment requires unanimity in accordance with 
Article 22(3).
    The committee recognizes that such a tacit amendment 
procedure for amending regulations annexed to a treaty is 
fairly common in multilateral intellectual property treaties 
negotiated under the auspices of WIPO, many of which have been 
ratified by the United States. Allowing the Assembly to amend 
the Regulations in this manner makes it possible for the 
technical implementation of the treaty to evolve without going 
through the more formalized and standard amendment process, 
which involves a revision conference and frequently takes years 
to effect. Amendments effected through this mechanism may not, 
as a matter of law, rise to the level of those that require the 
advice and consent of the Senate. The executive branch has 
assured the committee that there is an inherent limitation on 
any amendments to the Regulations the Assembly can consider, 
because the Regulations cannot exceed and can only implement 
the Singapore Treaty's provisions. An amendment to the 
Regulations so limited should not, in the normal course, 
require advice and consent. If there is any question, however, 
as to whether an amendment to the Regulations goes beyond the 
implementation of specific provisions in the Singapore Treaty, 
the committee expects the executive branch to consult with the 
committee in a timely manner in order to determine whether 
Senate advice and consent is necessary.
    The committee has included a condition in the resolution of 
advice and consent to ratification, which requires the 
Secretary of State to transmit to this committee, and to the 
Committee on the Judiciary, the text of an amendment to the 
Regulations no later than 60 days after the Assembly has agreed 
to the amendment. This reporting requirement is not intended to 
be a substitute for consultation regarding the character of an 
amendment, as described above.

         VIII. Resolution of Advice and Consent to Ratification

    Resolved (two-thirds of the Senators present concurring 
therein),

SECTION 1. SENATE ADVICE AND CONSENT SUBJECT TO A CONDITION

    The Senate advises and consents to the ratification of the 
Singapore Treaty on the Law of Trademarks adopted in Singapore 
on March 27, 2006 and signed by the United States at Singapore 
on March 28, 2006 (Treaty Doc. 110-2), subject to the condition 
of section 2.

SECTION 2. CONDITION

    The advice and consent of the Senate under section 1 is 
subject to the following condition:
          Report on Amendments to the Regulations. Not later 
        than 60 days after the Assembly has agreed to an 
        amendment to the Regulations pursuant to Article 22 and 
        Article 23 of the Treaty, the Secretary of State shall 
        transmit the text of the amendment to the Committee on 
        Foreign Relations and the Committee on the Judiciary of 
        the Senate.

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