For example, it is possible, under the protocol, to obtain an international registration on the basis of a pending trademark application, so that a trademark holder can, simultaneously or immediately after, file an application in a Member State, effectively apply for an international registration. 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”. The Madrid Agreement and the Madrid Protocol are independent and parallel treaties, with separate but overlapping rules and accessions. The differences between the two treaties are as follows: the Madrid system for international trademark registration consists of two agreements. The Madrid Agreement of 1891 on the International Registration of Trademarks (`the Agreement`) and the 1989 Madrid Protocol (`protocol`) came into force on 1 April 1996. The agreement and the protocol are guarantees, but independent of each other. (The unusual name of “protocol” implies that both agreements have the same structure, so that the sections – with the same number – contain the same points.) The common regulations apply to both all international notifications filed under the Madrid Agreement and the Protocol. It allows the International Office of the World Intellectual Organization to monitor cases whose applications have been filed on the basis of both agreements. The Bern Court had characterized the opposition procedure as an appeal within the meaning of the last sentence of Article 6, Section 3 of the Madrid Agreement. The Supreme Court, which relies mainly on the French text of this provision, which is one of the languages of the Madrid agreement in Switzerland and which is more instructive than the German wording, which is a translation, has concluded that the term “action” includes only civil rights actions and not opposition proceedings. Therefore, the opposition procedures are not covered by Article 6, Section 3, of the Madrid Agreement.
As a result, the Swiss part of the international brand FOCUS has been invalidated in Switzerland. It is one of the few supreme court decisions that interprets the Madrid system. However, since 1 September 2008, Article 9sexies of the Madrid Protocol has been in force in Switzerland. This article gives priority to the protocol if the countries concerned are both members of the protocol and the Madrid agreement. 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.