51–115

110TH CONGRESS EXEC. REPT.

1st Session " ! SENATE 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

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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 electroniVerDate 11-MAY-2000 09:55 Nov 27, 2007 Jkt 000000 PO 00000 Frm 00002 Fmt 6659 Sfmt 6602 H:\DOCS\SINPOR.TXT sfrela2 PsN: sfrela2
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cally 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

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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).

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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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