For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Monday, 17 October 2011

Everything you wanted to know about OHIM's new mediation service....

Everything you wanted to know about OHIM's new mediation service but were afraid to ask... well almost. As many of our readers will already know, OHIM recently announced that it will launch a mediation service:

"....as an alternative to proceeding with an appeal to the Boards of Appeal in trade mark and design cases as an alternative to proceeding with an appeal to the Boards of Appeal in trade mark and design cases".

"To qualify for the new service, an appeal must already have been filed (with payment of the normal appeal fee of €800). If the mediation meetings take place at OHIM’s premises in Alicante there is no further fee to pay. As an alternative, provision has been made for mediation to be offered at OHIM’s Brussels office on payment of a fixed fee of €750 to help defray the mediator’s travel expenses. ... Mediation is a new departure for OHIM and one that is being offered following interest expressed by users."

More information can be found in OHIM's September Alicante News and by clicking here. As the Decision No 2011-1 of the Presidium of the Boards of Appeal of 14 April 2011 on the amicable settlement of disputes (Mediation) was already published in OHIM's Official Journal, see OHIM news item of 3 October 2011, OHIM's mediation service will now be ready to go at the end of October.

This is an interesting service which has piqued this Kat's curiosity and she immediately had some questions. After using her inquisitive whiskers and liaising with an impeccable - albeit anymous - source who is in the know this Kat understands the following ...

1. Are there are plans for other locations than Alicante and Brussels to offer mediation services - not everyone is based there or wishes to travel ?
The IPKat understands that there are currently "no plans and it's too early to say" but the idea is not a shocking one "so let's see if there is any demand for that."

2. Are there any plans to have the mediation service may available at an earlier stage e.g. during the extended cooling off period in trade mark proceedings?
The IPKat understands that this is "an initiative of the Boards of Appeal and therefore an alternative to appeals at present".... if there is demand from the users mediation for "other appropriate stages of inter partes disputes" might happen.

3. Why not reimburse appeal fee altogether if a settlement is reached?
The IPKat understands that "...(i)f someone doesn't lodge an appeal and pays [the appeal fee], the decision they object to will become final after the appeal period (two months) has expired. Paying the fee stops the decision becoming final and allows time for mediation. There's no provision for paying back the fee in the Regulation in case the appeal is settled between the parties, and don't forget we are not charging anything for the mediation itself". 
Hmm, yes that makes sense, but it could make the service even more attractive especially if we add the travel costs, Merpel can't help but adding.

4. How about approving third party mediators in other EU countries?
The IPKat understands that "(t)here's no need for us to approve third party mediators. People can use whoever they wish for mediation as we are not acting as "judges" but facilitators in these cases. It is worth noting that all the mediators that [OHIM] offers are not only very well qualified in trade mark and design matters, but they have also taken the trouble to have additional training and become members of a recognised arbitration institute. 
Also, OHIM does not "charge for mediation (except travel expenses if [OHIM mediators] need to go to Brussels), so there might not be much incentive for third party mediators to get involved". There is some thought that if users "can get access to good mediation elsewhere, [OHIM] would [theoretically] suspend the proceedings" - which is a nice thought, the IPKat thinks.
So what do our readers think? Do they expect that there will be much demand for OHIM's mediation service? Would you recommend it to your clients? Or, how would it have to be changed to be attractive to you?

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