[Senate Treaty Document 106-41]
[From the U.S. Government Publishing Office]
106th Congress Treaty Doc.
SENATE
2d Session 106-41
_______________________________________________________________________
PROTOCOL RELATING TO MADRID AGREEMENT CONCERNING INTERNATIONAL
REGISTRATION OF MARKS
__________
MESSAGE
from
THE PRESIDENT OF THE UNITED STATES
transmitting
PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS ADOPTED AT MADRID JUNE 27, 1989, ENTERED INTO
FORCE ON DECEMBER 1, 1995. ALSO TRANSMITTED A FEBRUARY 2, 2000, LETTER
FROM THE COUNCIL OF THE EUROPEAN UNION REGARDING VOTING WITHIN THE
ASSEMBLY ESTABLISHED UNDER THE PROTOCOL
September 5, 2000.--The Protocol was read the first time, and together
with the accompanying papers, referred to the Committee on Foreign
Relations and ordered to be printed for the use of the Senate
_______
U.S. GOVERNMENT PRINTING OFFICE
79-118 WASHINGTON : 2000
LETTER OF TRANSMITTAL
----------
The White House, September 5, 2000.
To the Senate of the United States:
I transmit herewith, for the advice and consent of the
Senate to accession, the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks
adopted at Madrid June 27, 1989, which entered into force
December 1, 1995. Also transmitted for the information of the
Senate are the report of the Department of State with respect
to the Protocol and a February 2, 2000, letter from the Council
of the European Union regarding voting within the Assembly
established under the Protocol.
The Protocol will offer several major advantages to U.S.
trademark owners. First, registration of trademarks
internationally will be possible without obtaining a local
agent and without filing an application in each Contracting
Party. If the United States accedes to the Protocol, the
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, and with a single
payment in dollars, at the United States Patent and Trademark
Office (PTO). The PTO will forward the application to the
International Bureau of the World Intellectual Property
Organization (respectively, the ``International Bureau'' and
``WIPO''), which administers the Protocol. Second, under the
Protocol, renewal of a trademark registration in each
Contracting Party may be made by filing a single request with a
single payment. These two advantages should make access to
international protection of trademarks more readily available
to both large and small U.S. businesses.
Third, the Protocol will facilitate the recording
internationally of a change of ownership of a mark with a
single filing. United States businesses experience difficulties
effecting valid assignments of their marks internationally due
to burdensome administrative requirements for recordation of an
assignment in many countries. These difficulties can hinder the
normal transfer of business assets. The Protocol will permit
the holder of an international registration to record the
assignment of a trademark in all designated Contracting Parties
upon the filing of a single request with the International
Bureau, accompanied by a single payment. To carry out the
provisions of the Protocol, identical implementing legislation,
which is supported by my Administration, was passed by the
House of Representatives and introduced in the Senate.
Accession to the Protocol is in the best interests of the
United States. Therefore, I recommend the Senate give early and
favorable consideration to the Protocol and give its advice and
consent to accession, subject to the declarations described in
the accompanying report of the Department of State.
William J. Clinton.
LETTER OF SUBMITTAL
----------
Department of State,
Washington, July 11, 2000.
The President,
The White House.
The President: I have the honor hereby to submit to you,
with a view to its transmittal to the Senate for advice and
consent to accession, the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks
(``Protocol''), adopted at Madrid June 27, 1989, which entered
into force December 1, 1995. Also enclosed for the information
of the Senate is a February 2, 2000, letter from the Council of
the European Union regarding voting within the Assembly
established under the Protocol.
The Protocol traces its genesis to the Madrid Agreement
Concerning the International Registration of Marks (1891),
revised at Brussels (1900), Washington (1911), The Hague
(1925), London (1934), Nice (1957) and Stockholm (1967), and
amended in 1979 (``Madrid Agreement''), which established an
international trademark registration system that is
administered by the International Bureau of the World
Intellectual Property Organization (respectively,
``International Bureau'' and ``WIPO''). As of May 10, 2000,
fifty-two countries are Contracting Parties to the Madrid
Agreement. The United States is not a Contracting Party to the
Madrid Agreement.
Between 1986 and 1989, the International Bureau convened
meetings of governmental experts to develop an international
trademark registration system that could gain wide acceptance.
These experts conceived of a protocol based upon the Madrid
Agreement, but with certain changes to attract a broader
adherence. On June 27, 1989, at a Diplomatic Conference held in
Madrid, the States party to the Madrid Agreement concluded a
Protocol, which was signed by 27 of the 29 States then party to
the Madrid Agreement. The Protocol establishes an international
trademark registration system that is independent of, but in
many respects similar to, that of the Madrid Agreement.
Acceding to the Protocol offers significant advantages to
U.S. trademark owners. Registering a trademark internationally
will be possible without obtaining a local agent and incurring
attendant costs. Registration can be accomplished by filing a
single standardized application in English, with a single
payment, in dollars, at the United States Patent and Trademark
Office (``PTO''). Cost savings to U.S. trademark owners are
expected to be substantial.
background
The United States has never belonged to an international
trademark registration system, but has considered it in the
past because of the trade advantages such a system would offer.
Trademarks, representing the good will of a business and
identifying its products and services, are among the most
valuable assets of a business. In most countries other than the
United States,trademark rights are obtained only by
registration. One major obstacle to the international protection of
trademarks is the difficulty and cost of obtaining and maintaining a
registration in each and every country.
In the late 1960s the United States considered joining the
Madrid Agreement, but concluded that it contained provisions
disadvantageous to U.S. trademark owners and was unworkable
under existing U.S. law. Specifically, the following provisions
of the Madrid Agreement were considered undesirable by the
United States:
(1) the requirement that the international
application be based on an Office of origin
registration (given the long pendency of applications
in the United States at that time the requirement for
use of a trademark prior to filing, this requirement
would have required the U.S. trademark owner to wait
beyond a reasonably prudent time before seeking
registration internationally under the Madrid
Agreement);
(2) the provision called ``central attack,'' which
results in the cancellation of the international
registration in all Contracting Parties if the Office
of origin registration is canceled in the first five
years;
(3) requirement that the application be in the French
language;
(4) the provision for a maximum 12-month period
within which the Contracting Party could refuse to
effect the international registration (at that time,
the normal time period for completing the first
examination of an application by the PTO was
substantially more than 12 months; thus, the United
States could not be sure that all refusals could be
raised within the prescribed time period); and
(5) the provision designating low filing and renewal
fees for the national office, which were less than the
comparable national fees in the United States.
The Protocol establishes a separate international trademark
registration system from, and contains significant
modifications to, the Madrid Agreement. These modifications
address and resolve the concerns that led the United States to
reject accession to the Madrid Agreement. Thus, the Protocol
provides:
(1) under Article 2(1), an Office of origin
application may be the basis of an international
application;
(2) if the basis of an international registration is
extinguished during its first five years as set out in
Article 6, then Article 9quinquies allows the
registration to be converted into a national or
regional application in a designated Contracting Party
and retain its original effective filing date;
(3) the working languages, as set forth in the Common
Regulations under the Madrid Agreement Concerning the
International Registration of Marks and the Protocol
Relating to that Agreement (``Regulations'') are
English and French; thus, for example Rule 6(1)(b)
specifies that, ``[a]nyinternational application
governed exclusively by the Protocol or governed by both the Agreement
and the Protocol shall be in English or French according to what is
prescribed by the Office of origin''; in accordance with Rule 6(3)(b),
``the recordal in the International Register and the publication in the
Gazette of the international registration resulting therefrom . . .
shall be in English and French''; Rule 6(4)(a) provides, in turn, that
``[t]he translations from English into French or from French into
English . . . shall be made by the International bureau'';
(4) under Article 5, a Contracting Party may have up
to 18 months to refuse to effect an international
registration, and, with appropriate notice, an
additional 7 months from the beginning of the
opposition period to notify the grounds for opposition
(over the past few years, the average time to issue a
refusal in the examination of a trademark application
at the PTO, has been about 5 months); and
(5) under Article 8, a Contracting Party may charge
the equivalent of its national (or, in the case of an
intergovernmental organization, regional) filing and
renewal fees (renewals are for ten-year periods)
diminished only by any savings resulting from the
international procedure.
As described in more detail below, the Protocol establishes
an international procedure for the filing of trademark
applications. Adherence will not require the United States to
adopt any changes to its substantive trademark laws.
Legislation has been introduced, and has already been passed by
the House of Representatives, to implement the changes in
procedure needed to fulfill the obligations of the Protocol.
the protocol process
In the event that the United States accedes to the Protocol
and Congress passes the necessary implementing legislation, the
Protocol would operate in the United States as follows.
The 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 PTO. Pursuant to Article 3, 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 that test, the PTO must
forward the international application to the International
Bureau. 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 applicant 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, under the Protocol,
renewal of all the of the extensions of protection may be
madeby filing a single request with a single payment under Article 7.
1. Filing of an international application
Pursuant to Article 2, where the owner of a U.S. trademark
application or registration is a national of the United States,
or is domiciled, or has a real and effective industrial or
commercial establishment, in the United States (``U.S.
trademark owner''), that U.S. trademark owner will be able to
file with the PTO, which will be considered the Office of
origin, an application for international registration along
with a request that the international registration be effected
in at least one Contracting Party other than the United States.
(Pursuant to Article 3bis, the international registration may
not be effected in the territory of the Contracting Party of
the Office of origin. Thus, the trademark owner whose Office or
origin is the United States could not obtain protection for its
trademark in the United States through the Madrid Protocol
system.)
Pursuant to Article 3, the PTO must certify that the
particulars in the international application correspond to
those in the underlying U.S. application or registration and
forward the international application to the International
Bureau. Non-U.S. trademark owners may obtain protection in the
United States by following the same procedure in their
respective Offices of origin and, pursuant to Articles 3bis and
3ter, specifying the United States as a Contracting Party in
which they are seeking protection.
2. Issuance of international registration
The International Bureau must issue the international
registration if all filing requirements are met, and, pursuant
to Article 3(4), must publish the mark in its International
Gazette, a periodic publication containing all relevant data
recorded during the period concerning international
registrations. Pursuant to Article 3ter, the International
Bureau must forward the request for territorial extension of
the international registration to the Contracting Parties
specified, either at the time of filing or later, if the
applicant requests a territorial extension of its international
registration at some time after the international registration
is effected.
In accordance with Article 4 and 5, those Contracting
Parties will consider the extension request pursuant to the
their applicable legislation. Once the extension request is
either approved through the examination process, or the
applicable time periods set out in Article 5 pass without a
refusal or a successful opposition, the extension of the
international registration to a particular Contracting Party
has legal effect.
Pursuant to Article 6(i), registration of a mark at the
International Bureau is effected for ten years, with the
possibility of renewal under certain conditions discussed
below. Pursuant to Article 4, the effect of such registration
shall be the same as if the mark had been deposited directly
with the Office of the particular Contracting Party to which
the registration is extended.
3. Request for extension of protection to the United States by the
foreign holder of an international registration
When the United States receives a request for extension of
protection of a mark in an international registration, the PTO
must examine the request in the same manner, and pursuant to
the same requirements, as a regularly-filed U.S. application.
When the examination of the extension request is concluded, and
all of the formalities and/or refusals raised in the
examination process are settled, the mark will be published for
opposition.
If the formalities and/or refusals are not settled between
the applicant and the examiner, then the applicant may either
abandon its application or institute an appeal to the Trademark
Trial and Appeal Board, which is consistent with Article 5's
provision that a holder shall have the same remedies in the
event of a refusal as would be available if the mark had been
directly deposited with the PTO. The Trademark Trial and Appeal
Board must determine whether the application should be denied
or should be published for opposition. The applicant can appeal
its determination to the Court of Appeals for the Federal
Circuit or ask for a trial de novo in a U.S. District Court. If
no opposition is filed or is successful, the Director of the
United States Patent and Trademark Office must issue a
certificate of extension of protection, which will have the
same effect and validity as a U.S. registration on the
Principal Register, the official U.S. register of distinctive
marks.
The Protocol, pursuant to Article 5, requires the national
or regional office considering an extension request to notify
the International Bureau of all refusals, which would include
examination refusals and the possibility of opposition, as well
as the ground(s) for opposition, within specified time periods.
Under Article 5, Contracting Parties that make appropriate
declarations (discussed below) may have up to 18 months, from
the date of notification of the extension of protection, to
state the grounds for refusing an extension of protection from
the international registration, and, with appropriate notice,
an additional 7 months from the beginning of the opposition
period to notify the grounds for opposition. Absent timely
refusal, Article 5 requires the national or regional office
(the PTO in the case of the United States) to extend protection
to the international registration.
The United States may require non-U.S. trademark owners
seeking trademark protection in the United States under the
Protocol to declare, at the time the extension of protection is
requested, that they have a bona fide intention to use the mark
in commerce. Rule 7(2) specifies that, ``[w]here a Contracting
Party requires, as a Contracting Party designated under the
Protocol, a declaration of intention to use the mark, it shall
notify that requirement to the Director General. Where that
Contracting Party requires the declaration to be signed by the
applicant himself and to be made on a separate official form
annexed to the international application, the notification
shall contain a statement to that effectand shall specify the
exact wording of the required declaration.''
Rule 9, the rule that sets out the permissible requirements
for an international application, provides in subsection
9(6)(d) that ``[t]he international application shall also
contain, where a designation concerns a Contracting Party that
has made a notification under Rule 7(2), a declaration of
intention to use the mark in the territory of that Contracting
Party. . . .''
Consistent with these rules, the Department of State would,
at the time of deposit of the instrument of accession, have the
United States notify the Director General of its intention to
require, from the date of entry into force of the Protocol in
the United States, a statement of bona fide intention to use a
mark in commerce of all holders of international registrations
requesting extensions of protection to the United States.
4. Maintenance of an international registration and extensions of
protection
Pursuant to Article 3ter(2), an extension of protection to
additional Contracting Parties may be requested at any time
during the life of the international registration. Article 7
provides that an international registration is renewable every
ten years upon payment of the appropriate fee(s) to the
International Bureau. Rule 31(2) of the Regulations specifies
that, ``[t]he effective date of the renewal shall be the same
for all designations contained in the international
registration, irrespective of the date on which such
designations were recorded in the International Register.''
Additionally, for the extension of protection to remain in
force in the United States, the proposed legislation to
implement the Protocol requires the periodic filing of
affidavits of continued use in commerce of the subject mark.
Inasmuch as these affidavits are not considered to be part of
the renewal process, they are not governed by the restrictions
on renewal set out in the Protocol. Indeed, such affidavits of
use have long been required by a few of the current Contracting
Parties to the Madrid Agreement and, therefore, there was
general agreement from the Committee of Experts that such
affidavits fell outside of the restrictions of the Protocol and
were allowed as a national practice.
5. Cancellation or limitation of international registration
If the national or regional application or registration
forming the basis of an international registration is
restricted, abandoned, cancelled, or has expired, pursuant to
applicable law, and any of these effects occur as a result of
an action commenced within five years of the date of
international registration, then, pursuant to Article 6(3), the
Office of origin must notify the International Bureau. It must,
in turn, similarly cancel or limit the international
registration. For example, if, during the five years after
international registration, some goods or services have been
deleted from the identification of goods or services in the
national or regional application or registration that forms the
basis for the international registration, then pursuant to
Article 6(3), those same goods or servicesmust be deleted from
the international registration and any extension requests that exist
for the international registration. Similarly, if the national or
regional application or registration that forms the basis for the
international registration has been abandoned, cancelled or has
expired, either during the five years after international registration
or as a result of an action that commenced during the five-year period,
then, pursuant to Articles 6(3) and 6(4), the International Bureau must
cancel the international registration and each Contracting Party that
has extended protection to that international registration must cancel
the attendant extension of protection. Otherwise, if no such
restriction, abandonment, cancellation or expiration occurs during the
five years after international registration (or as the result of an
action begun in the first five years after international registration),
then, pursuant to Article 6(2), the international registration becomes
independent of its underlying national or regional application or
registration.
However, if such a cancellation occurs, Article 9quinquies
of the Protocol permits transformation of existing extensions
of protection into national (or regional, in the case of
intergovernmental organization Contracting Parties)
applications in the Contracting Parties in which the
international registration had been extended. The holder of the
cancelled international registration may file, within three
months of the cancellation of the international registration,
national or regional applications for the same mark in relation
to the cancelled goods or services in each Contracting Party
that had extended protection to the international registration.
Provided that the applicant complies with the applicable law,
each application will obtain, as a filing date, the date of the
international registration or, if the extension of protection
was sought after international registration occurred, the date
of the recordation of the extension of protection for that
particular Contracting Party.
6. Recordation of assignment or change of ownership
Often, U.S. businesses experience difficulties effecting
valid assignments of their marks internationally due to the
burdensome administrative requirements for recordation of an
assignment in many countries. These difficulties can hinder the
normal transfer of business assets. Pursuant to Article 9,
9bis, and 9ter, the Protocol permits the person in whose name
an international registration stands to record the assignment
of its trademark in all designated Contracting Parties by
making a single payment and filing one document, provided that
the new holder is entitled to file international applications
under the Protocol.
7. Protocol system not exclusive of national and regional trademark
registration systems
Use of the procedures established by the Protocol is
optional for applicants. Applicants may continue to file
individual trademark applications in each Contracting Party in
which they seek trademark protection. In the event that they
also file an international registration,Article 4bis deems the
international registration to replace the national or regional
registration, under certain conditions, but without prejudice to the
rights acquired under the national or regional registration.
Furthermore, the Protocol in no way diminishes the right of priority
and national treatment that applicants are accorded under the Paris
Convention for the Protection of Industrial Property (1883), as revised
and amended.
the assembly of the madrid union
Article 1 of the Madrid Agreement provides that the
countries party to the Agreement ``constitute a Special Union
for the International registration of marks.'' Article 1 of the
Protocol provides that the Contracting Parties to the Protocol
``shall be members of the same Union of which countries party
to the Madrid (Stockholm) Agreement are members.'' Article 10
of the Protocol provides, in turn, that the Contracting Parties
to the Protocol are members of the same Assembly as are the
Contracting Parties to the Madrid Agreement. Article 10(3)(a)
provides that only Contracting Parties to the Madrid Protocol
have the right to vote on matters concerning only the Protocol
(and, of course, only Contracting Parties to the Madrid
Agreement may vote on matters concerning only the Madrid
Agreement).
Articles 10 and 13 establish the functions of the Assembly.
Under Article 10(2), these are: dealing with all matters
concerning implementation of the Protocol; giving directions to
the International Bureau concerning preparation for revision
conferences; adopting and modifying provisions of the
Regulations; and performing such other functions as are
appropriate under the Protocol.
In addition, as is a common practice in multilateral
intellectual property treaties that include provisions for an
assembly to facilitate treaty implementation, certain
provisions of the Treaty may be amended by a super-majority of
the Assembly, without the need for a revision conference (see,
e.g., Paris Convention for the Protection of Industrial
Property of March 20, 1883, as revised and amended (Stockholm,
July 14, 1967) (Article 17); Patent Cooperation Treaty of June
19, 1970, as amended and modified (Article 61); Strasbourg
Agreement Concerning the International Patent Classification of
March 24, 1971, as amended (Article 11); Berne Convention for
the Protection of Literary and Artistic Works Paris Act of July
24, 1971, as amended (Article 26); and Budapest Treaty on the
International Recognition of the Deposit of Microorganisms for
the Purposes of Patent Procedure of April 28, 1977, as amended
(Article 14)). Under Article 13(1), proposals for the amendment
of Articles 10 (Assembly), 11 (International Bureau), 12
(Finances), and 13 (Amendment of Certain Articles of the
Protocol) may be initiated by a Contracting Party or by the
Director General of WIPO.
According to Article 13(2), adoption of any amendment to
Article 11, 12, or 13 requires a three-fourths majority of the
votes cast at the Assembly at which it is addressed. In
addition, under Article 13(2), any amendment to Article 10 or
Article 13(2) itself, requires a four-fifths majority of the
votes cast at the Assembly.
In each case, in accordance with Article 13(3), amendments
adopted by the requisite super-majority of the Assembly enter
into force for all Contracting Parties to the Protocol one
month after written notifications of acceptance, effected in
accordance with their respective constitutional processes, have
been received by the Director General from three-fourths of
those States and intergovernmental organizations that, at the
time the amendment was adopted, were members of the Assembly
and had the right to vote on the amendment. The large size of
the super-majorities and the requirement that notifications of
acceptance be effected in accordance with constitutional
processes combine to provide substantial assurance that the
amendment process will be used sparingly and in a manner that
will not disserve U.S. interests.
From the perspective of the United States, the most
controversial aspect of the Protocol has been the voting
provision contained in Article 10(3)(a), which provides that
``[e]ach Contracting Party shall have one vote in the
Assembly.'' Since, in accordance with Article 14, not only
States but also intergovernmental organizations may become
Contracting Parties, this provision has the effect of allowing
an intergovernmental organization (such as the European
Community (``EC'')) to have an additional vote separate and
independent from that of its member States if it were to become
a Contracting Party to the Protocol. The United States has
consistently opposed such voting as an unwarranted expansion of
the voting power of intergovernmental organizations and their
member States--and a correspondingly unwarranted dilution of
U.S. voting power.
The United States harbored significant concerns that the
Protocol would establish an unfavorable precedent and that
comparable voting provisions would be adopted in other
treaties, to the detriment of U.S. interests. In the aftermath
of the negotiations that led to the Protocol, in the field of
intellectual property alone, the European Union (``EU'')
proposed concurrent voting for the EC and its Member States in
the negotiating texts of numerous proposed treaties. During the
negotiation of the Trademark Law Treaty, EU insistence on an
independent vote forced negotiators to accept a compromise
arrangement whereby all provisions relating to voting were
dropped from the agreement--a development that significantly
constrains the ability of the parties to effect necessary
revisions.
The United States was an observer, not a participant, in
the negotiations leading to the Protocol. More than a decade
has passed since that negotiation was concluded. Throughout
this period, the United States has forcefully and successfully
opposed every attempt by the European Union to include
comparable voting provisions in other treaties. Last year, in
the context of negotiations for the Hague Agreement Concerning
the International Deposit of Industrial Designs, the EU and its
Member States did not press for an independent vote for
intergovernmental organizations such as the EC. That marked a
watershed because in prior years the EU had repeatedly
described the Hague Agreement context as involving concurrent
competenceanalogous to that in the Protocol and warranting
analogous voting provisions. We are now satisfied that the United
States opposition to such voting provisions has been heard and that the
Protocol cannot be considered a paradigm for voting provisions in
multilateral treaties.
While certainly desirable, revising Article 10(3)(a) of the
Protocol is not a feasible prospect at this juncture. However,
the United States, the EC (which, like the United States, is
not yet a Contracting Party to the Protocol), and its Member
States have been able to reach an accommodation regarding the
voting issue.
At the request of the United States, the EC and its Member
States have 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 of the Madrid Union. They have also
indicated that, in the event that a vote is called for, they
will endeavor to conduct consultations with the United States
and, where appropriate, with other like-minded participants.
The February 2 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.
Consensus-based decision making has long been used in the
Assembly of the Madrid Union. Indeed, we understand that no
issue has been put to a vote since the early 1970s.
Accordingly, we have concluded that, although the unilateral
statement of intent reflected in the Council of the European
Union's February 2, 2000, letter is not an ideal resolution of
the voting issue and is certainly not an acceptable model for
future agreements, it does provide sufficient protection for
U.S. interests in the unique context of the Protocol to allow
me to recommend that the United States now become a Contracting
Party.
functions of the international bureau
Article 11 deals with the duties of the International
Bureau of WIPO as they relate to the Protocol. The
International Bureau maintains the International Register;
makes preparations for the conferences of revision of the
Protocol; is authorized to consult with intergovernmental and
international non-governmental organizations concerning
preparations for such conferences of revision; and carries out
any other tasks assigned to it in relation to the Protocol.
Pursuant to Article 11(2)(c), the Director General and his
designees take part, without the right to vote, in discussions
at any conferences of revision. As noted above, this Article
can be amended by a three-fourths majority of the Madrid
Assembly members that are Contracting Parties to the Protocol.
finances
Article 12 provides that, as far as Contracting Parties to
the Protocol are concerned, the finances of the Union shall be
governed by the same provisions as those inthe Madrid
Agreement, except that the Protocol provides an alternative for the
collection of national or regional fees rather than the complementary
and supplementary fees (and the resulting fee-sharing arrangement) set
out in the Agreement. As noted above, this Article, which concerns only
the finances of the Union and its budget for administering the Madrid
Agreement and the Protocol, can be amended by a three-fourths majority
of the Madrid Assembly members that are Contracting Parties to the
Protocol. (In contrast, Article 8, which concerns fees for
international application and registration, cannot be amended by the
Assembly.)
The finances of the Madrid Union include a working capital
fund (established by Article 12(6) of the Madrid Agreement,
which applies to Contracting Parties to the Protocol by virtue
of Article 12 of the Protocol). Article 12(6)(a) of the Madrid
Agreement specifies that this fund shall be constituted by a
single payment made by each country of the Union, and permits
the Assembly to increase the fund if it becomes insufficient.
However, Article 12(6)(d) further authorizes the Assembly to
suspend the application of the payment provision, so long as
the Assembly authorizes use of the reserve fund of the Union as
a working capital fund. Such a suspension has, in fact, been in
place for over 20 years. The working capital fund was
constituted at the level of 2,000,000 Swiss francs in 1979 by a
transfer of funds from the reserve fund of the Madrid Union.
Accordingly, no payment into the working capital fund has been
requested of any Contracting Party that has become a member of
the Madrid Union since 1979. A senior WIPO official has advised
that it is not now envisaged that any such payments would be
required in the future pursuant to Article 12(6) of the Madrid
Agreement or Article 12 of the Protocol.
The PTO expects to incur some relatively modest initial
costs (e.g., to modify forms and update computer programs) to
enable it to process applications under the Protocol. However,
every request for an extension of protection will be charged
the same fee as is charged for a regular U.S. trademark
application. That fee should cover the cost of processing the
Protocol application. Moreover, the PTO already accepts
electronic filing of applications over the Internet. Thus, much
of the Protocol process (e.g., relaying international
applications and requests for extensions to the International
Bureau and reviewing similar requests for extensions of
protection in the United States) could be run with a variation
of the current electronic system.
participation by intergovernmental organizations
Article 1 of the Protocol provides that Contracting Parties
to the Protocol may be either ``Contracting States'' or
``Contracting Organizations.'' Under Article 14, each
Contracting State must be a party to the Paris Convention for
the Protection of Industrial Property of March 20, 1883, as
revised and amended. The same article authorizes an
intergovernmental organization to become a Contracting Party to
the Protocol if: (1) at least one of the member States of the
organization is a party to the Paris Convention; and, (2) the
organization has a regionalOffice for the purposes of
registering marks with effect in the territory of the organization and
that this regional Office is not operating as a common Office to
replace one or more of the national Offices of its member States.
Such conditions for an intergovernmental organization to
become a Contracting Party are somewhat unusual in that they do
not contain the traditional requirements that the organization
be duly authorized to become a party and that it submit a
declaration of its competency vis-a-vis its member States with
respect to matters covered by the Protocol. Nevertheless, given
the Article's requirement for a regional Office, coupled with
actual experience under the Protocol to date, as described
below, these conditions for intergovernmental organization
participation in the Protocol appear to be an acceptable
substitute to the more traditional standards.
To date, no intergovernmental organization has yet become a
party to the Protocol, and the only one that appears likely to
do so in the near future is the EC. The EC has a trademark
office, independent of that of its Member States, which
processes requests under the EC's applicable trademark law.
Thus, Member States of the EC and the EC itself each have
separate competence to examine a trademark application
according to the laws and regulations in its own legal system.
This concurrent competence has been in place for some time in
Europe, is well defined, and is not causing problems in the
trademark area. The Protocol does not create or alter this
system of competence for trademark registration in Europe. It
merely facilitates that ability of U.S. trademark owners to
obtain trademark protection under the systems of each
Contracting Party. Accordingly, the United States would welcome
the EC's participation in the Protocol.
Since the Protocol's negotiation in 1989, moreover, there
has been no prospect of any other intergovernmental
organization membership that would pose concerns for the United
States. With the benefit of this experience, we are satisfied
that, given the Protocol's procedural nature and the fact that
membership is open only to intergovernmental organizations that
actually have a regional Office for the purposes of registering
marks in effect in the territory of the organization, Article
14's description of the conditions for an ``intergovernmental
organization'' to become a Contracting Party need not preclude
or delay our becoming a Contracting Party to the Protocol.
In accordance with Article 14(4), the Protocol entered into
force on December 1, 1995, three months after the requisite
number of instruments of ratification had been deposited. The
language of Article 14(4) would have permitted an
intergovernmental organization and its member States to be
counted separately toward bringing the Protocol into force, and
thus was objectionable to the United States as an unwarranted
expansion of the power of intergovernmental organizations and
their member States without basis in international law. U.S.
concerns about this language have been resolved satisfactorily
because: (1) the Protocol entered into force solely on the
basis of instruments deposited by States, without participation
ofintergovernmental organizations; and (2) the language has not
become a precedent and has not recurred in subsequently negotiated
treaties.
industry support for accession by the united states
Accession by the United States to the Protocol has been
endorsed in principle by the Section of Patent, Trademark and
Copyright Law of the American Bar Association; the
International Trademark Association; and the Trademark, Trade
Identity and Unfair Competition Committee of the American
Intellectual Property Law Association. These endorsements
contain the caveat that the United States should accede to the
Protocol only if non-U.S. trademark owners seeking trademark
protection in the United States under the Protocol are required
to declare, at the time the extension of protection is
requested, that they have a bona fide intention to use the mark
``in commerce,'' as that term is defined in Section 45 of the
Trademark Act, as amended, 15 U.S.C. 1127. As described above,
the Protocol does not prohibit such a requirement by the United
States, and the Regulations specifically contemplate it.
Industry support for U.S. accession has increased as the
number of Contracting Parties to the Protocol has grown, which
has enhanced the economic benefits of U.S. participation--and
has increased the disadvantages of non-participation. Japan's
recent accession to the Protocol, in March 2000, is
illustrative.
Currently, the pendency from application filing to the
registration of a trademark in Japan is several years. However,
as a Contracting Party to the Protocol, Japan must process, and
register, requests under the Protocol for extension of
protection within the Protocol's strict time limits. As a
result, those filers who cannot use the Protocol will be in the
unfortunate position of waiting years for a registration in
Japan, while applicants under the Protocol will receive
consideration and registration within 18 months (barring the
filing of an opposition).
Comparable situations may arise regarding other Contracting
Parties. U.S. industry is keenly aware of the increasing
importance of the Protocol and has expressed concerns that U.S.
trademark owners seeking international protection may be
seriously, and increasingly, disadvantaged unless and until the
United States becomes a Contracting Party.
implementing legislation
To carry out the provisions of the Protocol, identical
implementing legislation has been introduced in both the House
of Representatives (where it has been passed) and the Senate.
To ensure that our domestic laws conform with our expanded
international obligations, the United States would not deposit
its instrument of accession to the Protocol until enactment of
all necessary implementing legislation and until after a period
of time sufficient to allow the PTO to promulgate implementing
regulations and to complete the necessary administrative
changes.
declarations to accompany u.s. accession
As noted above, the Protocol contemplates that Contracting
Parties may make declarations with respect to certain Protocol
articles. The Department of State recommends that U.S.
accession to the Protocol be accompanied by three declarations,
pursuant to Protocol Articles 5(2)(b), 5(2)(c), and 8(7)(a),
respectively, as described below.
The first declaration, authorized under Article 5(2)(b),
permits 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.
Article 5(2)(a) requires the PTO to notify its refusal to
extend protection to a mark in an international registration,
along with a statement of all grounds for the refusal, before
the expiry of one year from the date on which the notification
of the extension request was sent to the PTO by the
International Bureau. Article 5(2)(b) provides, however, that
the Article 5(2)(a) time limit of one year may be extended, by
a Contracting Party's declaration, to 18 months. The PTO has
ascertained that a declaration is necessary to ensure that
sufficient time exists for the request for extension of
protection to be examined in the PTO and, in the majority of
cases, published for opposition.
Accordingly, the Department of State recommends that the
following declaration be included in the U.S. instrument of
accession:
Pursuant to Article 5(2)(b) of the Protocol, the
United States declares that, for international
registrations made under this Protocol, the time limit
referred to in subparagraph (a) of Article 5(2) is
replaced by 18 months.
The second declaration, authorized under Article 5(2)(c),
concerns the possibility of a refusal of protection with
respect to any given international registration, as a result of
third party opposition to the granting of protection. If a
declaration is made under Article 5(2)(c), the PTO may notify
the International Bureau, before the expiry of the 18-month
time limit for refusal, of the possibility that an opposition
may be filed beyond this time limit and a subsequent refusal
may then be notified by the PTO to the International Bureau
after the expiry of the 18-month time limit. However, Article
5(2)(c) requires such a refusal to be notified within a time
limit of not more than seven months from the date on which the
opposition period begins. (If the opposition period expires
before this seven-month time limit, the notification must be
made within one month from the expiry of the opposition
period.) The PTO has ascertained that a declaration is
necessary to ensure that sufficient time exists for a mark that
is the subject of a request for extension of protection to be
published and for a third party to exercise its right to oppose
and specify the grounds for opposition.
Accordingly, the Department of State recommends that the
following declaration be included in the U.S. instrument of
accession:
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 third declaration, authorized under Article 8(7)(a),
concerns the fees to which the United States is entitled in
connection with an extension of protection of an international
registration. Article 8(1) of the Protocol permits the PTO,
when it is the Office of origin, to fix and collect fees in
connection with the filing of an international application or
renewal of an international registration.
Article 8(2) through (6) provides for a system of
collection and distribution of the international fees for
registration and renewal of a mark with the International
Bureau according to a formula, which would divide revenues
equitably among Contracting Parties. The Article 8(2) through
(6) formula essentially reproduces the system of fees that
exists in the Madrid Agreement so that a Contracting Party that
elects to be a member of both the Agreement and the Protocol
will be able to adopt the same fee arrangement for both.
However, Article 8(7)(a) permits any Contracting Party to
receive, instead, in connection with each international
registration for which an extension of protection is requested,
and in connection with the renewal of any such international
registration, individual fees that do not exceed the national
orregional application filing fee and registration renewal fee,
respectively, in effect at the time of declaration.
Article 8(7)(a) requires that, in arriving at the
appropriate fee amounts, the national fee be diminished by the
savings, if any, resulting from the international procedure.
The PTO does not anticipate any savings as a result of the
Protocol's international procedure. The PTO has ascertained
that a declaration is necessary to ensure that the PTO receives
sufficient fees to support the costs associated with its
obligations under the Protocol.
Accordingly, the Department of State recommends that the
following declaration be included in the U.S. instrument of
accession:
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 that the United States Patent and Trademark
Office charges at that time to a domestic applicant or
registrant of such a mark.
Conclusion
The Protocol is of direct and immediate importance to the
United States. It will facilitate the entry of U.S. industry
into foreign markets by simplifying the acquisition of
trademark protection abroad and reducing attendant costs. As
described above, it will accomplish this by allowing a U.S.
trademark owner to file for registration or renewal with any
number of Contracting Parties through a single form filed with
the PTO, accompanied by a single payment, and without the need
to retain local agents or file individual applications in each
Contracting Party in which protection is sought. The Department
of Commerce and the Office of the United States Trade
Representative join the Department of State in requesting that
the Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks be transmitted to the
Senate for its advice and consent to accession as soon as
possible, subject to the declarations previously described.
Respectfully submitted,
Alan Larson.