Mediation

Mediation is a conciliation process between parties to a dispute. The mediator acts as a neutral intermediary between the parties and facilitates a settlement between them. The mediator has no power to decide the case if the mediation has failed. The parties retain control over the way the procedure is handled and its outcome. The parties cannot be obliged to mediate but must voluntarily agree to do so. They can withdraw from the mediation at any time. Similarly, no settlement agreement may be imposed on the parties but must be agreed voluntarily between them. The mediation is a confidential procedure.
Arbitration is a procedure in which law is applied by an arbitrator to determine a dispute between the parties. Adjudication is made by the arbitrator as a decision-maker. It is a rights-based procedure, unlike mediation, which is an interest-based procedure. Whereas arbitration only considers and applies the law, mediation considers the wider interests of the parties (in particular, business interests).

Further information on mediation.
For information regarding rules on mediation.

The Boards of Appeal deal with around 2 500 cases per year. An average case takes one and a half years to resolve and some may also lead to further appeal. This can be an expensive and time-consuming process. Yet in many of the cases, while there are genuine legal conflicts, there is a possibility of reaching an agreement in which the business interests of both parties can be preserved. Mediation, although a faster and cheaper alternative to litigation, still involves skilled mediators that are well versed in IP matters. It is also a guarantee of confidentiality as regards the existence of the dispute, since the dispute is taken out of the public eye. It traditionally has a high rate of success.

Further information regarding rules on mediation.

Mediation before the EUIPO is currently only available at the appeal stage in proceedings between two or more parties. Within 2 months of the notification of the contested decision, the losing party must file a notice of appeal and pay the appeal fee in order to obtain the suspensive effect of the appeal. The appeal will only be admissible if the appellant submits a statement of grounds within 4 months of the notification of the contested decision. Neither period to file the appeal, to pay the appeal fee or to file the statement of grounds can be extended or suspended.

Both parties must sign the request for mediation, or otherwise show that the consent of the other party has been obtained. The appeal proceedings will then be suspended pending the mediation.

Further information available on mediation.

There must first be a decision on European Union trade mark or design matters in inter partes proceedings taken at the EUIPO. That decision must then be appealed before mediation can commence. The subject matter of the mediation may, however, go beyond the scope of EUIPO appeal proceedings and embrace parallel trade mark, design or other IP rights related disputes between the same parties. There are many possibilities, but it may be, for example, that both parties with conflicting rights operate in completely different markets. They could agree to keep it that way. The key to successful mediation is to change the focus from legal arguments to business interests. Mediation in ex parte cases (i.e. where the other party to a contested decision is the EUIPO itself) is not possible.

Further information can be found in EUIPO Boards of Appeal, Mediation, Instructions to Parties.

At present, mediation is only available for appeals. However, this could change in the future.
For further information, please consult EUIPO Boards of Appeal, Mediation, Instructions to Parties.

The EUIPO does not charge a fee for mediation, provided the mediation is held on the EUIPO’s premises in Alicante.
If the mediation is held at EUIPO premises in Brussels, an administrative fee has to be paid to cover the travel, lodging and subsistence expenses of the mediators.

Further information on mediation proceedings and fees.

Further information on mediation rules.

For costs and/or administrative charges, please consult the Mediation in Brussels form and send it (or equivalent information) to the mediator.

For further information on administration charges related to mediation, see Decision No Ex‑11‑04 of the President of the Office of 01/08/2011.

In principle, mediation proceedings will be held in the language of the appeal proceedings. However, the parties are free to agree a mutually convenient language (subject to a mediator being available that masters that language).

Further information on mediation.

The mediation team is made up of qualified mediators drawn from various parts of the Office, not just the Boards of Appeal. They are all very experienced senior staff of the Office who have received special training with the Centre for Effective Dispute Resolution (CEDR) and/or the Chartered Institute of Arbitrators (CIARB) in London and have different language profiles.

Further information on mediation.

There is a full list of mediators on the website, together with their CVs, so that the parties can ask for a particular person if they wish. The parties may be assisted in their choice of a mediator by the Registry of the Boards of Appeal. The parties may prefer someone with a certain background and experience or the ability to carry out the mediation in a specific language. It is important to understand that mediation is a voluntary process and the mediator’s role is not to sit in judgment or make decisions, but to facilitate the two parties in reaching their own settlement. If the case is particularly complex, or if the mediator judges it to be necessary, the appointed mediator may seek the assistance of another mediator or EUIPO staff member. The mediator will first seek the authorisation of the parties in such a case. It is also possible for the parties themselves to appoint co-mediators where the complex nature or other circumstances of the case warrant it.

Further information on mediation.

In principle, mediation is expected to settle matters in 1 day, perhaps after one preliminary meeting. If no outcome has been achieved by then, it can be very difficult to reach a settlement, although particularly complex cases may need more time.

Further information on mediation.

It is important that the principals take part as mediation is not about pure legal issues, but about business interests. Since mediation is a voluntary process, either party can withdraw from it at any time. Of course, if the mediation results in a settlement agreement between the parties, the formal agreement will have to be drawn up by their lawyers in the normal way. Therefore, having professional representatives to assist the principals is essential.

Since mediation is a fairly flexible process, it is hard to specify in advance the precise format a particular mediation will take. Nevertheless, most cases involve initial contact between the parties and the mediator, when a timetable is discussed, as well as the location of the mediation and the need for any prior exchange of documents. The parties then usually sign an agreement on mediation and send it to the mediator as soon as possible.
In most cases, the mediation is held at the EUIPO premises in Alicante and the parties either come alone or together with their legal representatives. Mediation normally lasts 1 day and will involve an alternation of joint sessions (i.e. in which the mediator and parties are both present) and individual sessions (i.e. where the mediator meets with each of the parties separately and privately). The idea of the joint session is to try to draw up a list of issues to be solved, whereas the individual sessions explore further those issues and possible solutions or compromises.
Everything disclosed to the mediator in the individual sessions is private and may not be disclosed to the other party without prior, express authorisation. Proceedings will usually be closed by further joint sessions and the drafting of a settlement agreement. The case then goes back to the Board of Appeal to which it was originally assigned for a formal decision, noting the closure of the appeal proceedings.

For further information, please consult EUIPO Boards of Appeal, Mediation, Instructions to Parties.

The EUIPO encourages parties and their professional representatives to come to Alicante. However, you can also hold mediation proceedings in the EUIPO premises in Brussels, subject to the payment of a fee.

For further information, please consult Rules on Mediation.

Parties are free to withdraw from the mediation process at any time and cannot be forced to reach a settlement agreement. However, parties must intend to make their best endeavours to reach an agreement. When a party withdraws, the mediation is immediately terminated. The mediator may also terminate the mediation where a stalemate or impasse has been reached. In these cases, the appeal proceedings will resume from the point reached prior to the mediation. The mediator will never be involved in the appeal proceedings and is bound to keep the substance of the mediation confidential. No record or files pertaining to the mediation will be retained by the EUIPO.

For further information, please consult EUIPO Boards of Appeal, Mediation, Instructions to Parties.

This is so in many cases and if the parties can reach agreement on their own, they do not need a mediator. Experience shows, however, that rights’ owners show more willingness to settle amicably when they are brought together to focus on the sticking points to any agreement based on their real business interests. In many appeals it seems that this takes place too late in the process.