Madrid Union members approve repeal of safeguard clause

Member states of the Madrid Union for the international registration of trademarks have approved the repeal of the safeguard clause as contained in Article 9sexies of the Madrid Protocol.

The Madrid system is a cost-effective trademark registration system run by the World Intellectual Property Organization; it comprises 81 member states distributed among all continents. Effective August 2007 there were 471,000 international registrations in force, with over 5.4 million active designations.

The safeguard clause of the Madrid Protocol states that the provisions of the protocol do not apply to countries that are also members of the Madrid Agreement. As from September 1 2008 only the standard provisions of the protocol will apply to states bound by both the Madrid Agreement and the Madrid Protocol - the two treaties which govern the Madrid system. Consequently, from that date international trademark registrations will be governed only by the Madrid Protocol in all member states which are party to the protocol (currently 74), including those which are members of both the protocol and the agreement (currently 50). The agreement will apply only to the member states which are bound solely by the agreement (currently seven).

Currently the following countries are members of both treaties: Albania, Armenia, Austria, Azerbaijan, Belarus, Benelux, Bhutan, Bulgaria, China, Croatia, Cuba, Cyprus, the Czech Republic, France, Germany, Hungary, Iran, Italy, Kenya, Kyrgyzstan, Latvia, Lesotho, Liechtenstein, Macedonia, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, North Korea, Poland, Portugal, Romania, the Russian Federation, San Marino, Serbia, Sierra Leone, Slovakia, Slovenia, Spain, Swaziland, Switzerland, Syria, Ukraine and Vietnam. Uzbekistan is currently a member of both treaties, but has renounced its membership of the Madrid Agreement effective as of January 1 2008.

The practical consequences of the repeal for applicants and holders of international registrations based in a country that is a member of both treaties are as follows:

• An international application can be based on a basic national application in the country of origin and need no longer be based on a registration. As a result, it will be easier to claim priority, since applicants must no longer wait until a national registration issues before filing an international application. It will also make the accelerated registration procedures in some countries (eg, Benelux, Germany and Switzerland) redundant, resulting in lower national fees.
  
  
• The 'cascade' provisions of the Madrid Agreement no longer apply so that an applicant's entitlement to file an international application can be based on either:
  
  
  • the existence of a real and effective industrial or commercial establishment;
    
    
  • domicile in the country of origin; or
    
    
  • nationality of the country of origin.
    
    
• Subsequent designations of countries that are members of both treaties can be filed directly with the International Bureau and do not need to be routed through the national office. The same applies to a declaration of renunciation of protection.
  
  
• An international registration can be wholly or partially transformed into a national application, retaining the registration and priority dates.
  
  
• The period for examining territorial extensions of international registrations remains fixed at 12 months (and not 18 months for protocol-only countries).
  
  
• The fee for designating countries belonging to both treaties or just the Madrid Agreement will be increased from Sfr73 to Sfr100, but higher individual fees will not be payable. The fee increase - the first since 1996 - is modest and keeps the Madrid system cost-effective. By contrast, countries that are members of the Madrid Protocol only can charge higher individual fees.
  
  
• The supplementary fee for designating additional classes in excess of the first three will be increased from Sfr73 to Sfr100.
  
  
• International applications can be filed in English, French or Spanish (depending on the preferences of the national office) and will be published in these three languages.

In summary, applicants and holders of international registrations will benefit from a simplified and more flexible registration procedure, retaining the advantages enjoyed under the safeguard clause as regards the shorter examination period and lower official fees. However, the repeal of the safeguard clause is subject to review by September 2011 as regards the examination period and fees.

Alfred M Strahlberg, Strahlberg & Partners, Wabern