99–115

107TH CONGRESS EXEC. RPT.

1st Session " ! SENATE 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

REPORT

[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

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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 PresiVerDate 11-MAY-2000 23:38 Nov 15, 2001 Jkt 099115 PO 00000 Frm 00002 Fmt 6659 Sfmt 6602 E:\HR\OC\ER001.XXX pfrm07 PsN: ER001
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dent, 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.

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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.

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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.

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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

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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 COM- MUNITY 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.

(9)

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

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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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