In a recent decision (BGE 134 III 555, 8th July 2008) the Supreme Court analysed and applied the differences between the Madrid Agreement and the Madrid Protocol.
Lancôme Parfums et Beauté & Cie asked the Berne Commercial Court to declare the Swiss part of international trademark FOCUS (owned by Focus Magazin Verlag GmbH and registered on 23rd May 1996) invalid due to non-use. Several oppositions were filed against the basic registration in Germany. The parties did not dispute that FOCUS had not been used in Switzerland. The court dismissed the lawsuit on the grounds that the five-year grace period for commencing use started only on 8th October 2003 - the date on which the last opposition procedure in Germany was formally closed. The court held that until that date, non-use of the mark was justified because of the pending opposition procedures in Germany.
However, on appeal the Supreme Court revised this decision and held that the Swiss part of FOCUS became independent from the basic registration in Germany on 23rd May 2001. There was no valid reason for non-use of the trademark in Switzerland from 23rd May 2006 onwards.
The Supreme Court recalled that, in a previous case between the same parties (BGE 130 III 371), it had ruled that a central attack through an opposition procedure against the basic registration constituted a valid reason for non-use of the Swiss part of the international trademark, independent from examining the chances of success of such an opposition procedure. Therefore, the decisive question was when the five-year term justifying a ruling of non-use had elapsed.
The court observed that contrary to Article 6, Section 3 of the Madrid Protocol, Article 6, Section 3 of the Madrid Agreement does not expressly mention an opposition against a basic registration as a reason for prolonging the five-year term. It mentions only lawsuits (“action”). Therefore, the Supreme Court concluded that the provision of Article 6, Section 3 of the Madrid Protocol could not be applied analogously to the corresponding provision of the Madrid Agreement.
According to Article 6, Section 2 of the Madrid Agreement, an international registration becomes independent of the national mark previously registered in the country of origin upon expiration of a period of five years from the date of that registration, subject to Provision 6, Section 3. This provision states:
“The protection resulting from the international registration… may no longer be invoked… if, within five years from the date of the international registration, the national mark, registered earlier in the country of origin in accordance with Article 1, no longer enjoys, in whole or in part, legal protection in that country. This provision shall also apply when legal protection has later ceased as the result of an action begun before the expiration of the period of five years.”
The Berne court had qualified the opposition procedure as an action in the sense of the last sentence of Article 6, Section 3 of the Madrid Agreement. The Supreme Court - based mainly on the French wording of this provision which, being one of the languages of the Madrid Agreement, is authoritative in Switzerland and is more revealing than the German wording which is a translation – concluded that the term “action” embraces civil rights actions only, and not opposition procedures. Thus, opposition procedures do not fall under Article 6, Section 3 of the Madrid Agreement. Therefore, the Swiss part of international trademark FOCUS was declared invalid in Switzerland.
This is one of very few Supreme Court decisions interpreting the Madrid System. However, since 1st September 2008 Article 9sexies of the Madrid Protocol has been in force in Switzerland. This article gives primacy to the protocol when the countries concerned are members of both the protocol and the Madrid Agreement.