Important Changes to International Trademarks Repeal of the "Safeguard Clause" when Applying for International Trademarks Under the Madrid Agreement and the Madrid Protocol Since only seven countries (i.e., currently Algeria, Bosnia and Herzegovina, Egypt, Kazakhstan, Liberia, Sudan and Tadzhikistan) are exclusively members of the Madrid Agreement, this Agreement will lose practical significance in the future. The "safeguard clause" previously ensured that, in the relationship between two countries for which trademark protection existed or was to be applied for and which were members of both the Madrid Agreement and the Madrid Protocol, the provisions of the Madrid Agreement were primarily applicable. As of the cut-off date of 1 September 2008, countries with dual-membership will now be subject exclusively to the Madrid Protocol. The vast majority of the 83 countries with current membership, i.e. 49 countries including Germany, are members of both the Madrid Agreement and the Madrid Protocol. 27 countries, including, for instance, the European Union, the United States, Great Britain and Japan, to cite only a few examples, are exclusively members of the Madrid Protocol. The exclusive application of the Madrid Protocol will have the following advantageous effects: - International trademark applications that involve none of the countries which are members solely of the Madrid Agreement can be filed not only – as previously – on the basis of a registered national trademark, but can also be filed on the basis of an applied-for trademark (advantage: time is saved). - International trademark applications that are not based on a trademark from a country which is a member solely of the Madrid Agreement can, if the basic national application should not be registered later, be converted to national applications that retain the filing date (with the exception of any claimed country which is a member solely of the Madrid Agreement) (advantage: no loss of protection in the designated countries if the basic national trademark is cancelled/expires, e.g. in the case of a so-called "central attack"). - The national offices that are members of both the Madrid Agreement and the Madrid Protocol must, as before, inform the OMPI/WIPO of a provisional refusal of protection within 12 months (advantage: the shorter handling time under the Madrid Agreement is maintained). - The inexpensive standard fees according to the Madrid Agreement, which have only been slightly raised, continue to be applicable. The countries involved thus do not charge the individual, sometimes considerably higher, fees that are due from countries that are members solely of the Madrid Protocol (advantage: the low fees under the Madrid Agreement are maintained). - Correspondence can now in many cases be addressed directly to the OMPI/WIPO instead of taking a detour via the national office (advantage: shorter handling times than previously and no costs for national attorneys). - These amendments are also applicable to "old" international trademarks as well as to applications filed before 1 September 2008. · back