Repeal of safeguard clause comes into force

The repeal of the safeguard clause, which is contained in Article 9sexies of the Madrid Protocol, came into force on September 1 2008.

The Madrid System is based on two treaties:

the Madrid Agreement concerning the international registration of marks, which entered into force in 1892; and
the Madrid Protocol, which came into operation in 1996.

The system allows for overlapping memberships. Out of the 83 contracting parties to the Madrid System, 49 are bound by both the agreement and the protocol.

The agreement is applicable to the seven states that are bound by the agreement only (Algeria, Bosnia and Herzegovina, Egypt, Kazakhstan, Liberia, Sudan and Tajikistan). However, the agreement used to have great practical importance because of the so-called safeguard clause.

Before September 1 2008, the safeguard clause provided that the provisions of the protocol did not apply to countries that were also party to the agreement. Therefore, the agreement was 'safeguarded' and prevailed over the protocol. For trademark applicants, the main practical consequences were as follows:

The higher individual fees established by the protocol did not apply;
An international registration could not be based on a basic national trademark application, but only on a national registration; and
In case of a successful 'central attack' against an international registration, the agreement did not provide for the possibility of transformation into a national application.

In short, the safeguard clause provided for low-cost trademark protection under the agreement, but blocked all modern, flexible features of the protocol.

In a session that took place in Geneva from September 24 2007 to October 3 2007, the Assembly of the Madrid Union approved the repeal of the safeguard clause, as well as related amendments. These changes, which became effective on September 1 2008, can be summarized as follows:

The new Article 9sexies of the protocol provides that the relations between countries that are bound by both the agreement and the protocol will be governed by the protocol only. In case of conflict, the protocol will prevail over the agreement.
However, not all features of the protocol will apply to the countries that are bound by both the agreement and the protocol. Article 9sexies (as amended) renders inoperative any declaration made by a member state regarding the extension of the period for notifying a provisional refusal under the protocol. Thus, in countries that are party to both treaties, the one-year time limit for notifying a provisional refusal will remain applicable. More importantly, Article 9sexies (as amended) renders inoperative any declaration of a member state regarding the payment of individual fees. As a consequence, applicants must pay only the standard supplementary and complementary fees (and not the higher individual fees).
The standard supplementary and complementary fees have been increased slightly from Sfr73 to Sfr100. This amendment applies to all parties to the Madrid System.
The amendments to the Common Regulations provide for a trilingual regime (English, French and Spanish) under both the protocol and the agreement. However, the office of origin may restrict the choice to one or two of these languages.

The repeal of the safeguard clause implies that the agreement has lost some of its practical importance. The agreement will be applicable only if an international application originates from or designates one of the seven states that are bound by the agreement only. It remains to be seen whether these countries will eventually join the protocol.

From the perspective of applicants in states that are bound by both the agreement and the protocol, the recent amendments will have various positive consequences. First, an international application can now be based on a basic national application in the country of origin and need no longer be based on a national registration. Further, it is now possible to transform an international registration into a national application. Therefore, as far as the relations between states that are bound by both treaties are concerned, the repeal of the safeguard clause and its related amendments now allow applicants to benefit from the advantages of the protocol – without having to pay higher individual fees. Consequently, it is now advised to file international applications through an office of origin that is bound by both treaties.

Malte Nentwig, Boehmert & Boehmert, Bremen

Repeal of safeguard clause comes into force

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