STATEMENT OF SENATOR LEAHY ON
SENATE JUDICIARY COMMITTEE MARK-UP OF S. 407,
THE MADRID PROTOCOL IMPLEMENTATION ACT
July 19, 2001

The Madrid Protocol Implementation Act, S. 407, that I introduced with Senator Hatch in February will both advance and protect American interests both here and abroad. Today, we offer a substitute amendment that makes certain technical and clarifying changes recommended by the U.S. Patent and Trademark Office to the underlying bill.

Senator Hatch and I have worked together both successfully and productively in the past on intellectual property matters, and I am pleased to do so again with this bill. I originally introduced this legislation in the 105th Congress and again in the last Congress, when this Committee unanimously reported the legislation. Unfortunately, the Senate did not consider either this bill or the Madrid Protocol last year.

The Protocol would help American businesses, and especially small and medium-sized companies, protect their trademarks as they expand into international markets. Specifically, this legislation will conform American trademark application procedures to the terms of the Protocol in anticipation of the U.S.’s eventual ratification of the treaty. Ratification by the United States of this treaty would help create a “one stop” international trademark registration process, which would be an enormous benefit for American businesses. This bill is one of many measures I have introduced and supported over the past few years to ensure that American trademark holders receive strong protection in today’s world of changing technology and complex international markets.

Senator Hatch and I worked together in the 105th Congress on passage of legislation to implement the Trademark Law Treaty. This legislation, S.2193, simplified trademark registration requirements around the world by establishing a list of maximum requirements which Treaty member countries can impose on trademark applicants. The bill passed the Senate on September 17, 1998, and was signed by the President on October 30, 1998. I am proud of this legislation since all American businesses, and particularly small American businesses, will benefit as a result.

I have in the past supported legislation critical to keeping our trademark laws up-to-date. For example, in the 105th Congress, I introduced S.1727, which authorized a comprehensive study of the effects of adding new generic Top Level Domains on trademark and other intellectual property rights. This bill became law as part of the Next Generation Internet Research Act, S.1609, which was signed into law on October 28, 1998. I also supported the Federal Trademark Dilution Act of 1995, enacted in the 104th Congress to provide intellectual property rights holders with the power to enjoin another person’s commercial use of famous marks that would cause dilution of the mark’s distinctive quality.

In the last Congress, Senator Hatch and I worked together to address the problem of cybersquatting, with introduction of S. 1461, the “Domain Name Piracy Prevention Act of 1999." The text of this bill was later passed by the Senate under another bill number and was subsequently enacted.

Together, these measures represent significant steps in our efforts to ensure that American trademark law adequately serves and promotes American interests.

S. 407 makes no substantive change in American trademark law but sets up new procedures for trademark applicants who want to obtain international trademark protection. This bill would ease the trademark registration burden on small and medium-sized businesses by enabling businesses to obtain trademark protection in all signatory countries with a single trademark application filed with the Patent and Trademark Office. Currently, in order for American companies to protect their trademarks abroad, they must register their trademarks in each and every country in which protection is sought. Registering in multiple countries is a time-consuming, complicated and expensive process -- a process which places a disproportionate burden on smaller American companies seeking international trademark protection.

The House version of this bill, H.R. 741, has already passed the House of Representatives, as it has for the past three Congresses. It is time for the Senate to take action on this important bill, which is supported by the American Intellectual Property Law Association, the International Trademark Association, the United States Business Council for International Business, and the National Association of Manufacturers. I would like to insert their letters of support in the record.

Since 1891, the Madrid Agreement Concerning the International Registration of Marks (Agreement) has provided an international trademark registration system. However, prior to adoption of the Protocol, the U.S. declined to join the Agreement because it contained terms deemed inimical to American intellectual property interests. In 1989, the terms of the Agreement were modified by the Protocol, which corrected the objectionable terms of the Agreement and made American participation a possibility. For example, under the Protocol, applications for international trademark extension may be completed in English; under the original Madrid Agreement, applications were required to be completed in French. It should be noted that the Protocol would not require substantive changes to American trademark law, but merely to certain procedures for registering trademarks.

The Administration originally resisted accession to the treaty because of differences with the European Community over the voting rights of intergovernmental members of the Protocol. Under the Protocol, the European Commission receives a separate vote, in addition to the votes of the Member States of the European Community.

This dispute over the voting rights of intergovernmental groups in this intellectual property treaty appears to have been resolved in accordance with the U.S. position. Specifically, on February 2, 2000, the Assembly of the Madrid Protocol expressed its intent “to use their voting rights in such a way as to ensure that the number of votes cast by the European Community and its member States does not exceed the number of the European Community's Member States."

The Administration thereafter forwarded the Madrid Agreement and Protocol to the Senate for ratification in September, 2000. The bill would not become effective until the U.S. joins the Protocol.

United States membership in the Protocol would greatly enhance the ability of any U.S. business, whether large and small, to protect its trademarks in other countries more quickly, cheaply and easily. That, in turn, will make it easier for American businesses to enter foreign markets and to protect their trademarks in those markets. I urge the Senate to move promptly to consider the Protocol and give its consent to accession and the implementing bill, S. 407, as amended by the Leahy-Hatch substitute amendment.