euipo’s boards of appeal mediation service · definition of mediation article 3 of directive...

EUIPO’s Boards of Appeal Mediation Service

Théophile MARGELLOS (MCIArb) and Sven STÜRMANN (CEDR)

Accredited Mediators

Prague 21 June 2016

DISPUTE RESOLUTION – STRATEGY

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I wish to have more control over the

outcome of my dispute

I wish to have someone else to decide

the outcome of my dispute

I wish to have a trusted third

party expert to decide

technical/ factual issues in

dispute, then the dispute is

resolved; or I may settle; or I

may submit the outstanding

issues to arbitration or

litigation

I wish to have a

trusted third party of

my choice to

facilitate negotiation

between the

opposite party and

me

I wish to keep the

dispute and

outcome

confidential

I wish to have a

public hearing and

public outcome

I wish to involve

only the opposite

party

CHOOSING YOUR DISPUTE RESOLUTION MODE

NEGOTIATION MEDIATION EXPERT

DETERMINATION ARBITRATION LITIGATION

DISPUTE RESOLUTION OPTIONS

• Party control over process and outcome

• Focus on interests & consensus

• Informal

• Confidential/ private

• Lower cost

• More than one disputes

• Third party control over process and outcome

• Determination of legal rights

• Formal

• Public

• Higher cost

• Focused on specific dispute

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DEFINITION OF MEDIATION

Article 3 of Directive 2008/52 EC of 21 May 2008: “Mediation” means: a structured process, however named or referred to, whereby two or more parties to a dispute attempt by themselves, on a voluntary basis, to reach an agreement on the settlement of their dispute with the assistance of a mediator. This process may be initiated by the parties or suggested or ordered by a court or prescribed by the law of a Member State. It excludes attempts made by the court or the judge seized to settle a dispute in the course of judicial proceedings concerning the dispute in question (conciliation). 4

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Preparation

Opening

Exploration

Search of Solution Bargaining

Conclusion

STEPS OF THE MEDIATION

Definition of Mediation

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CHARACTERISTIC S OF THE PROCESS

• Confidentiality of the parties and the mediator

• Attendance of all parties

• Flexibility


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CONFIDENTIALITY OF THE MEDIATION

• What happens in the mediation must be kept confidential.

• Each person involved (the mediator, the parties, their representatives and advisors, any independent expert and any other person present during the meetings) shall sign an appropriate confidentiality agreement before taking part in the mediation.

CHARACTERISTICS OF THE PROCESS


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• No recording of any kind shall be made of any meeting with the mediator

• Participants may not use or disclose any information concerning, or obtained in the course of mediation



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Article 7 of Directive 2008/52 EC of 21 May 2008: 1. Given that mediation is intended to take place in a manner which respects confidentiality,

Member States shall ensure that, unless the parties agree otherwise, neither mediators nor those involved in the administration of the mediation process shall be compelled to give evidence in civil and commercial judicial proceedings or arbitration regarding information arising out of or in connection with a mediation process, except:

(a) where this is necessary for overriding considerations of public policy of the Member State

concerned, in particular when required to ensure the protection of the best interests of children or to prevent harm to the physical or psychological integrity of a person; or the mediation must be kept confidential. Each person involved (the mediator, the parties, their representatives and advisors, any independent expert and any other person present during the meetings) shall sign an appropriate confidentiality undertaking before taking part in the mediation.

(b) where disclosure of the content of the agreement resulting from mediation is necessary in order

to implement or enforce that agreement. 2. Nothing in paragraph 1 shall preclude Member States from enacting stricter measures to protect

the confidentiality of mediation.


BoA MEDIATION BACKGROUND

- Start of conflict: IP rights, oppositions, invalidities, revocations, licence conflicts, etc.

- Cross-border conflicts. - Parallel disputes in different jurisdictions.

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Appeal

General Court

(GC)

Boards of Appeal

(EUIPO)

First Instance

(OD - EUIPO)

Appeal

Action

EUTM/CD Court

(2nd Instance)

EUTM/CD Court

(1st Instance)

Preliminary Ruling

Supreme Court (3rd Instance)

Court of Justice (CJ)

Appeal

Appeal

MEDIATION

SERVICES

INFRINGEMENTS APPLICATIONS - REGISTRATION

Cancellation/invalidity

Cancellation/invalidity

JURISDICTIONAL SYSTEM OF PROTECTION OF EUTM/CDR

APPLICATIONS - REGISTRATION

National IPO

(1st Instance)

Appeal

Court

(2nd Instance)

Appeal

Supreme Court (3rd Instance)

Preliminary Ruling

Low risk, cost effective and quick extrajudicial resolution of disputes

Arcol / Capol

3 April 1996 CTM Application ARCOL

20 October 1998 Notice of opposition, CAPOL

30 June 2000 Opposition decision

24 July 2000 Notice of appeal

4 March 2002 BoA decision in Case R 782/2000-3

24 May 2002 Application before the General Court (GC)

10 November 2004 Judgment of the GC in Case T-164/02

25 January 2005 OHIM appeal against GC Judgment before the Court of Justice (CJEU)

13 March 2007 CJEU Judgment, C-29/05 P

1 August 2007 BoA decision in Case R 782/2000-2

16 November 2007 Application before the GC, Case T-402/07

25 March 2009 Judgment of the GC in Case T-402/07

4 March 2010 Order of the CJEU in Case C-193/09

TOTAL

14 YEARS

Why?

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ALPHA D3 / ALPHAREN

EUTM Application No 4 320 297 of 3 March 2005

Notice of Opposition 6 March 2006 Article 8(1)(b) CTMR

Opposition Division Decision 9 October 2007 Opposition allowed

Notice of Appeal 29 November 2007 By Applicant

2nd Board of Appeal Decision R 1897/2007-2, 24 March 2009 Decision confirmed

Application for Annulment 1 June 2009 By Applicant

General Court EU Judgment T-222/09, 9 February 2011 Decision partially annulled: breach of Art. 76

CTMR Internet search results do not constituting

well-known fact (within assessment of similarity

of goods)

1st Board of Appeal Decision R 1235/2011-1, 2 November 2011 Opposition entirely upheld (similarity of goods

based on proof submitted by the parties)

Application for Annulment 3 July 2013 By Applicant

General Court Judgment T-106/12, 3 July 2013 Decision annulled based on Art.1(d)(2) regulation

216/96: same Member was Rapporteur in both

BoA decisions

Application for Annulment

before ECJ

C-490/13P, 17 July 2014 Appeal dismissed

TOTAL +9 YEARS

Why?

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Stabilo (Beifa Group Co., Ltd vs Schwan-Stabilo Schwanhäußer GmbH & Co. KG)

27 May 2005 RCD Application No 352315-0007

23 March 2006 Application for declaration of invalidity of design pursuant to Art. 25(1)(b) and (e) CDR based

on DE fig. mark No 300 454 708 and DE 3D mark 2 911 311

24 August 2006 Invalidity Div. decision C 2426, Design declared invalid pursuant to Art. 25(1)(e)

19 October 2006 Notice of appeal by Beifa Group pursuant to Art. 55 to 60 EUTMR

31 January 2008 BoA decision in Case R 1352/2006-3, Appeal dismissed

21 April 2008 Application before the General Court (GC)

12 May 2010 Judgment of the GC in Case T-148/08, BoA decision annulled

9 August 2001 BoA decision in case 1838/2010-3, Appeal dismissed

30 November 2011 Application before the General Court (GC)

27 June 2013 Judgment of the GC in Case T-608/11, Appeal dismissed. Plea alleging right to be heard

rejected

TOTAL 8 YEARS

Why?

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R10 / R10 (Nike International Ltd. / Aurelio Muñoz Molina

2 January 2006 CTM Application No 4 813 713 for R10

24 October 2006 Notice of opposition, based on non-registered mark R10, Article 8(4) EUTMR

19 February 2008 Opposition decision B 1 054 123, Opposition rejected

28 March 2008 Notice of appeal by Nike pursuant to Art. 57 to 62 EUTMR

21 January 2009 BoA decision in Case R 551/2008-1, Dismissed as inadmissible

6 April 2009 Application before the General Court (GC)

24 November 2010 Judgment of the GC in Case T-137/09, BoA decision annulled

7 February 2011 Two pleas raised by OHIM against GC Judgment before the Court of Justice (CJEU)

19 January 2012 CJEU Judgment, C-53/11 P, GC Judgment annulled

12 June 2014 Judgment of the CG in Case T-137/09, Appeal dismissed

TOTAL 7 ½ YEARS

Why?

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Advantages of mediation: A low risk; Cost-effective; Quick extrajudicial resolution of trade mark and design disputes; Process tailored to the needs of the parties; Agreements resulting from mediation are more likely to be complied with voluntarily and are more likely to preserve an amicable and sustainable relationship between the parties.

MEDIATION – EFFECTIVE DISPUTE RESOLUTION

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EUIPO‘s MEDIATION SERVICE – WHEN?

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MEDIATION – EFFECTIVE DISPUTE RESOLUTION

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- Conflict between same parties but regarding different IP rights.

EUIPO’s MEDIATION SERVICE - WHEN?

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IP Disputes not suitable for mediation: Mediation should not apply to rights and obligations on which the parties are not free to decide themselves under the relevant applicable law (Recital No 10 of the Mediation Directive 2008/52/EC). Where trade mark disputes concern the distinctiveness of the mark. Where the disputes are ex parte in general. Where invalidation proceedings address absolute grounds.

Only available in EUTM/RCD inter-partes proceedings (oppositions and cancellations based on relative grounds / invalidities); Only possible before Boards of Appeal; Need to file notice of appeal, statement of grounds and pay appeal fee; No mediation fee.

EUIPO’s MEDIATION SERVICE – WHEN?

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Presidium decision of Board of Appeal No. 2013-3 on Mediation. OHIM President decision EX-11-04 on administrative charges. Presidium Rules on Mediation. Instruction to parties.

EUIPO’s MEDIATION SERVICE – LEGAL FRAME

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EUIPO’s MEDIATION SERVICE – WHERE?

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EUIPO’s MEDIATION SERVICE – WHERE?

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EUIPO’s MEDIATION SERVICE – WHO?

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DEFINITION OF MEDIATOR

“Mediator“ means any third person who is asked to conduct a mediation in an effective, impartial and competent way, regardless of the denomination or profession of that third person in the Member State concerned and of the way in which the third person has been appointed or requested to conduct the mediation.

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25 Mediators EUIPO staff Chartered Institute of Arbitrators (CIArb) or Centre for Effective Disupte Resolution (CEDR) accreditation. European Code of Conduct for Mediators Co-Mediation


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ISO 9001 ISO 27001

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EUIPO’s MEDIATION SERVICE – HOW?

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EUIPO’ s MEDIATION SERVICE – HOW?

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EUIPO’ s MEDIATION SERVICE – HOW?

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Identical or similar proceedings in other countries (national/EU/worldwide). Conflicts between the same parties but with regard to other IP rights: patents, designs, copyright, domain names, etc. Longstanding relations between the parties: licensee – licensor; agent/representative – trade mark owner, manager – company owner, family relations, etc. Parties has already negotiated but without success. Each party has strong and weak legal points. Parties are doing business in different areas.

EVALUATING MEDIATION SUITABILITY

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25 mediations: • 10 mediations have resulted in the parties jointly signing documents with

a view to terminating proceedings.

• In 4 mediations, the mediation is closed without agreement, but the mediation helped the parties to better understand their business interests.

• 11 mediations are still pending 57 mediation requests which were not accepted by one of the parties. Positives Feedback via satisfaction surveys.

EXPERIENCES

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• Disputes between EU based companies relating to similar product labels registered as trade marks at EU and national level by both parties. Issue of scope of protection of weak marks and level of protection of colour marks.

• Potential Result Litigation: Parties would have mutually destroyed their trade marks by filing of cross-invalidity and revocation actions. Dispute would have lasted at EU and several national Member States for many years with huge costs involved.

Result Mediation: Agreement to delimit product labels by modifying the trade marks. Payment of compensation. Both parties maintain their trade mark rights. All EU and national proceedings closed.

CASE STUDY: LITIGATION VS MEDIATION

• Dispute between cultural event provider and book author before OHIM and EU Member State.

• Potential Result Litigation: Parties would have litigated for years at OHIM and national level. Conflict could have effected negatively the reputation of book author. Many years of dispute with huge costs involved.

Result: Coexistence agreement. Parties maintain their trade marks and agreed to cooperate in cultural events.

CASE STUDY: LITIGATION VS MEDIATION

euipo’s boards of appeal mediation service · definition of mediation article 3 of directive...

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