Questionnaire and FICPI Response

On 16 March 2001, in preparation for the first meeting of the OAMI Enlargement Working Group (see CET/1106), a questionnaire was circulated by the OHIM to participant organisations, primarily seeking views on the degree of risk of conflict between extended CTMs and national trade marks registered in candidate countries before the date of accession of those countries to the EU. In particular, the idea was to ascertain the degree of potential "bad faith" applications submitted before the OHIM, before existing Member States' IP offices and before candidate countries' IP offices. The Questionnaire also sought information about studies, experience or plans to deal with bad faith applications.

On 28 March 2001, FICPI CET Group 1 together with EUCOF prepared the response to the OHIM. We identified a potential risk of bad faith applications, which is made more serious by the narrow definition of "bad faith" adopted by the OHIM Cancellation Division. However we did not expect bad faith applications to be a major problem. We remarked that if a national mark in a candidate country is to coexist with an extended CTM and the owner of the national mark is to be entitled to prevent use of the CTM, careful consideration must be given to the user requirement for the national mark.

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See also paper EXCO/GB01/CET/1111 in connection with this subject.