Alternative Dispute Resolution
The ADRS offers mediation, conciliation, assisted negotiation and expert determination, which may be used in combination with one another or separately.
Operating under the auspices of the EUIPO Boards of Appeal, the Alternative Dispute Resolution Service (ADRS) acts as a modern IP dispute resolution hub offering a full spectrum of ADR tools to businesses and individuals active in the EU and, as the case may be, beyond. The ADRS offers mediation, conciliation, assisted negotiation and expert determination, which may be used in combination with one another or separately.
In the wake of the COVID-19 crisis, all these ADR services are now offered online and, for the benefit of SMEs only, have been extended to cover proceedings before the Opposition, Cancellation and Invalidity Divisions of the EUIPO (ADR SME special service).
In a nutshell, ADR services are directed at:
- all parties involved in inter partes proceedings before the Boards of Appeal and in addition
- exclusively to SMEs involved in inter partes proceedings before the Office in first instance opposition, cancellation and/or RCD invalidity proceedings under the ADR SME special service.
ADR processes carried out within the EUIPO incur no additional fee for the parties, are run fully remotely and can be offered in 12 languages of the European Union
The Alternative Dispute Resolution services have been introduced by the Boards of Appeal to better serve companies and SMEs, and to offer them more choices in effectively resolving their disputes. ADR is attractive because EU IP litigation can be time-consuming, unpredictable and costly. The costs are not just in the professional fees needed to litigate effectively but also extend to the management time diverted to administering any such ongoing legal proceedings – time that could have been devoted to profitable commercial pursuits. Moreover, IP is particularly prone to cross-border disputes for which global solutions are necessary but for which traditional litigation simply encourages battles on multiple fronts.
The ADR tools that we offer to assist disputants in the quest for swift, financially savvy, global settlements that offer predictable legal certainty.
Types of ADR services offered
The ADRS offers the services below, which can be used in combination with one another or separately, according to the needs of the interested parties.
Mediation is a process in which disputants, guided by a mediator, attempt to reach an amicable settlement of their differences pending at the EUIPO and, as the case may be, elsewhere (either within the EU or internationally).
Neutrality and impartiality of the mediator are the cornerstones of this interest-based, not rights-based process, together with the voluntary participation of the parties, the flexibility and confidentiality of the proceedings and the autonomy and attendance of all parties.
Mediation in the EUIPO Boards of Appeal is not limited to the Intellectual Property rights that the Office manages (trade marks and designs) but can include other IP rights (such as copyright, domain names and patents) or any other dispute pending between the parties, if they so wish.
The mediator’s role is to assist the parties in reaching a voluntary and mutually satisfactory settlement. It is not the role of the mediator to give legal advice, to propose his/her own solutions or to represent any party or adjudicate on the merits of the case. Settlement is consensual and has to be agreed to by the parties.
One of the main benefits of a settlement agreement achieved through mediation is that it is more likely to preserve an amicable and sustainable relationship between the parties. These benefits are even more pronounced in cross-border contexts, where global packages can be negotiated and multiple litigation avoided. Mediation may even give rise to new business opportunities.
The EUIPO Boards of Appeal and the Shanghai Commercial Mediation Center (SCMC) have established a co-mediation instrument. This instrument provides an efficient, culturally-cognisant and convenient way to settle disputes between enterprises in Europe and China in the field of intellectual property. (International Commercial Intellectual Property Co-Mediation Rules European Union Intellectual Property Office Boards of Appeal (EUIPO BoA) & Shanghai Commercial Mediation Center (SCM).
Mediation offers a different, constructive and more creative approach to dispute resolution and reflects our commitment to providing a quality service. Putting the needs of the parties at the centre of the process, mediation provides a cost-effective and tailored mechanism for resolving disputes.
Conciliation is a voluntary process in which a conciliator proactively suggests possible solutions to the dispute. These proposals will be discussed, negotiated and fine-tuned with the parties, who remain at all times free to accept or decline the proposed solution.
The conciliator will be in charge of guiding the conciliation process and will submit a proposal for the settlement of the dispute, if he or she considers there is a reasonable prospect that it could be accepted by the parties and an end put to the dispute. It must be stressed that the decision to conciliate is purely voluntary and requires the consent of all parties to the dispute.
The procedure differs from mediation in that the conciliator makes proposals as to how the dispute could be swiftly settled whereas in mediation the mediator usually does not make proposals but works with the parties to assist them in formulating their own proposals.
When suitable, conciliation may be suggested by the Rapporteur of a case pending at the Boards of Appeal. However, it can also be requested by one or both parties, using a unilateral or joint request form. In all cases, the consent of all parties to the dispute will be needed.
Detailed documentation on all aspects of the conciliation process can be accessed by clicking on the links below.
Assisted Negotiation is a process in which a facilitator can support an unrepresented SME by coaching on strategy in the background but without that facilitator engaging in any direct negotiations with another party to reach an amicable agreement.
The principal task of the facilitator is to mentor the appointing SME on how to achieve the best possible settlement. The facilitator’s tasks include assessing the underlying circumstances of the dispute, coaching on appropriate game plans and techniques for negotiating, managing relationships and engaging in effective and constructive dialogue with the other party. However, it is not part of the facilitator’s tasks to provide legal advice to the unrepresented party.
Assisted negotiation differs from mediation and conciliation in that, in assisted negotiation, the facilitator only coaches one of the parties on the settlement strategies and is not involved in direct negotiations between the parties.
Assisted Negotiation at the EUIPO Boards of Appeal can be requested in writing at any stage of inter partes proceedings using the request form. Parties select a facilitator employed at the EUIPO who is a senior lawyer with considerable experience in both negotiation and trade mark and design matters. The list of facilitators is available here.
Detailed documentation on all aspects of the assisted negotiation process can be accessed by clicking on the links below.
Expert determination is a process in which an expert appointed by the parties to a dispute gives a binding or non-binding opinion on the matters that have been submitted for determination. It is mainly designed to be offered to disputants that are unable to agree on specific legal, commercial and/or technical issue(s) in the context of some other ongoing ADR process, most typically mediation.
Normally, the matters brought for expert determination are technical or legal issues that form part of the overall dispute, but on which the parties are unable to agree.
The determination will be made in writing and the decision to appoint an expert is purely voluntary and requires the consent of both parties to the dispute.
Expert determination may be requested by the parties at any stage of a mediation or any other ADR process related to proceedings before the Office. It may also be suggested upon the initiative of the mediator or other ADR facilitator. However, in order to request Expert Determination, the parties must submit a joint request and it is thus a purely consensual process. The list of experts is available here
Detailed documentation on all aspects of the expert determination process can be accessed by clicking on the links below.
Model ADR contractual clauses
The ADRS provides model ADR contractual clauses to facilitate party agreement to settle potential disputes amicably.
Parties wishing to refer to EUIPO ADR are encouraged to include an appropriate ADR clause into any commercial contract in connection with IP rights. This allows contracting parties to agree that, in case any future dispute arises, they will use an alternative form of dispute resolution (such as mediation) as a step prior to court proceedings.
The recommended clauses have been drafted with the support of the ADR Stakeholder Advisory Board (SAB), reflecting best practices for mediation and other dispute resolution modalities.You can download the model contractual clauses here
As part of the efforts to promote the services offered, several networks have been established with groups that play an active, participative and advisory role in the initiatives the ADRS intends to take.
|Stakeholders Advisory Board (SAB)||Show|
The SAB network draws together public institutional and private business representatives to work on holistic and coordinated lines of action in furthering dispute prevention, de-escalation and resolution with the aim of ensuring that the services offered are first-rate and meet real commercial needs and interests, in particular those of SMEs.
Stakeholders include representatives from IP user and EU business associations, Member State IP offices offering or intending to offer ADR, the EU Commission, international ADR centres, EU bar associations and other entities with relevant expertise.
The ADR-SAB holds meetings twice a year, organises working groups and follows up through regular reports and feedback on the effectiveness of initiatives taken.
|Chambers of Commerce||Show|
Chambers of Commerce play an important role in helping companies to make their voices heard. Ensuring that ADR services meet the particular needs of SMEs is crucial, since SMEs are one of the main focuses of the EUIPO’s Strategic Plan 2020-2025. To make sure these services are accessible to the greatest number of SMEs, a network has been set up to bring the EU Chambers of Commerce together in order to explore how best to raise awareness about ADR opportunities and create support mechanisms allowing companies involved in IP disputes to use these services to obtain optimal conflict resolution.
Currently, around 30 Chambers of Commerce from all over Europe participate in the network and together they have agreed on a common statement of intent in which they set out the most important points of their cooperation and collaboration.
|Network of IP Judges of the EUTM and RCD Courts on mediation||Show|
The ADRS established a cooperation with courts in the European Union that have jurisdiction in intellectual and industrial property cases, aiming to create a network of courts which promote mediation in IP disputes.
This cooperation programme is highly advantageous for strengthening the use of mediation in IP proceedings pending before national Courts and EU/national IP Offices and for generating close cooperation with the various national and European mediation and other ADR providers.
Some of the goals of the cooperation programme are: to increase the impact of mediation in IP, to raise awareness among IP right owners involved in multiple disputes in order to arrive at sustainable global settlements, to foster mediation by establishing a road map by which judges will refer IP cases to ADR, to achieve better and more durable agreements than those reached just through negotiation and to allow the creation of close links with mediation-friendly judges and draw in new members of the judiciary.
The ADRS has drafted ADR Mediation Pledges designed for different addressees: user associations, business associations, companies and law firms.
The idea is that pledgees seek to encourage the use of mediation and other ADR mechanisms whenever possible with a view to reducing the negative consequences of disputes involving IP.
Therefore, the pledge is essentially a statement of intent on the part of the pledgee to explore and consider, whenever appropriate, use of mediation or other ADR mechanisms before pursuing other dispute resolution processes.
EUIPO ADR Pledge for IP disputes for Law Firms
EUIPO ADR Pledge for IP disputes for Companies
EUIPO ADR Pledge for IP disputes for Business Associations
EUIPO ADR Pledge for IP disputes for User Associations
Are you considering ADR? Do you have questions? Contact us for more information about the ADR services offered by the EUIPO Boards of Appeal.
Alternative Dispute Resolution Service