[Senate Executive Report 110-8]
[From the U.S. Government Publishing Office]
110th Congress Exec. Rept.
SENATE
1st Session 110-8
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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.