The accession of the United States and the European Union to the Madrid Protocol, on 2 November 2003 and 1 October 2004 respectively, was one of the two major innovations in international trademark law. With the inclusion of these jurisdictions in the protocol, most major commercial areas have joined the Madrid system. The European Union Intellectual Property Office2 treats the EU designation in a slightly different way from the applications submitted directly to them; For more information, visit our separate page. In a recent decision (BGE 134 III 555, 8 July 2008), the Supreme Court analysed and applied the differences between the Madrid agreement and the Madrid Protocol. The Commercial Court of Bern has asked the Bern Commercial Court to invalidate the Swiss part of the international brand FOCUS (owned by Focus Magazin Verlag GmbH and registered on 23 May 1996) for non-use. Basic registration in Germany has been the subject of several appeals. The parties did not dispute that FOCUS had not been deployed to Switzerland. The Tribunal dismissed the appeal on the grounds that the additional five-year period for the start of use had not begun until 8 October 2003, when the last opposition procedure in Germany was formally closed. The Tribunal found that, until that date, the non-use of the mark was justified by the opposition proceedings under way in Germany.
However, the Supreme Court reviewed this decision on appeal and found that the Swiss part of FOCUS became independent of the basic registration in Germany on 23 May 2001. There was no valid reason not to use the trademark in Switzerland as of May 23, 2006. The Supreme Court recalled that it had ruled, in an earlier case between the same parties (BGE 130 III 371), that a centralized attack by an opposition procedure to the basic registration constituted a valid reason for not using the Swiss part of the international mark, irrespective of the consideration of the chances of success of such an opposition procedure. The crucial question, then, was when the five-year term for a non-use decision had expired. The Tribunal found that, contrary to Article 6, paragraph 3, of the Madrid Agreement, there is no explicit reference to an appeal against a basic inscription as a reason for renewing the five-year term. It only mentions complaints (“Action”). Therefore, the Supreme Court found that the provision of Article 6, Section 3 of the Madrid Protocol could not be applied by analogy with the corresponding provision of the Madrid Agreement. In accordance with Article 6, paragraph 2, of the Madrid Agreement, an international registration becomes independent of the national trademark previously registered in the country of origin at the end of a five-year period from the date of registration, subject to provisions 6, section 3.
This provision stipulates that, under the protocol, for example, it is possible to obtain an international registration on the basis of a pending trademark application, so that a trademark holder can apply to a Member State at the same time or immediately after. In comparison, the agreement requires that the trademark holder already have an existing registration in a member jurisdiction, which can often take many months and sometimes years. Moreover, the agreement does not allow for the “conversion” of international records that have been “centrally attacked”. One of the drawbacks of the Madrid system is that any rejection, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration results in the refusal, revocation or deletion of international registration to the same extent.