Changes to the Madrid System (international registrations):

It is commonly known that the Madrid System is based on two international treaties: the Madrid Agreement and the Madrid Protocol. As the system based on two separate treaties is not entirely satisfactory, efforts are currently being made to gradually unify the two treaties into one. As of 1st September 2008, the so-called “safety clause” was abolished and it was agreed that that the all countries, whether they belong to the Madrid Agreement or the Madrid Protocol, should be treated according to the terms of the Madrid Protocol – except as far as official fees are concerned. The following changes to the Madrid System might well be interesting for trade mark owners:

- The individual fee for all countries belonging to the Madrid Agreement is now CHF 100 (previously it was CHF 73). For countries belonging to the Madrid Protocol different individual fees according to the country concerned will still apply.

-    A further change to the system is the possibility to apply for an international trade mark based on a Swiss trade mark application. Registration of the Swiss mark is no longer a formal requirement (except for those countries which adhere to the Madrid Agreement only). This is important in cases where the Swiss PTO issues objections and the registration of the trade mark cannot be assured within the priority deadline. The application date (priority date) is therefore saved if the registration of the trade mark is delayed due to hindrances occurring in the application process. The Swiss trade mark must, however, become registered later on, because the international trade is dependant on what happens to the basic registration over a 5 year period. If the basic registration is deleted in this time, the international registration will also lose its validity.

Trade Mark Protection in Kosovo

The general situation in Kosovo is one of a country marked by instability and which has to contend with many serious problems. However, a trade mark office has started to work there and it is now possible to process national trade marks applications in Kosovo. At the present time it is uncertain whether Kosovo will one day adhere to the Madrid System or whether it will be possible to have international trade marks covering Serbia extended to Kosovo without too many complications. Our team of trade mark experts is now confronted with a dilemma: if we were to recommend filing a national trade mark application in Kosovo, trade mark protection is then guaranteed, if a third party were to profit from the current situation by filing an identical application. However, Kosovo might possibly join the Madrid System in a few months time meaning that trade mark protection would have been gained in Kosovo by means of a costly national trade mark application. Sitting and waiting to see what happens in Kosovo might be dangerous for your trade mark rights, if a third party were to beat you to the post. However, if things do not turn out that way, it might be worth filing a national application. It could be that one day Kosovo will be able to take into consideration the priority of an international registration which is possibly earlier than the application date of national trade mark filed by a third party in Kosovo.

All in all, it is up to the trade mark owner him/herself to decide whether Kosovo is important for his or her commercial activities and what risks he/she is prepared to bear. For us it is important that our clients are aware of the situation so that they can correctly evaluate the risk level themselves.