For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 10 April 2014

Presentation of UKIPO and OHIM mediation services (part 2) - an event report

Happy after a successful mediation?
This Kat recently (on 31 March 2014 to be precise and does it not seem like a long time ago) attended a lunchtime "Presentation of UKIPO and OHIM mediation services" at CIPA Hall.  Part 1 of her event report on OHIM's mediation service can be found here.

The second part of this well-attended event focused on the UK IPO's mediation service and started with some initial comments by Steve Probert, the UKIPO's lead mediator. He explained that the UK IPO's mediation service has only recently been revamped and that several new mediators have joined.  Two of the new mediators were present at the event:  Edward Smith (Hearing Officer and mediator specialising on trade marks) and his colleague Nicki Curtis, who specialises in patent mediation.  Andrew Wall, another mediator, was in the audience.

What can be covered? Edward then started his presentation by pointing out that UKIPO mediation service not only cover trade marks, patents and designs but that it can also assist in company names and domain names disputes: "If it relates to an IPR, then it is us!".  In contrast to OHIM's mediation service, the UKIPO mediation service "might" (a caveat, this Kat noted dutifully) also mediate in matters relating to absolute grounds in trade mark oppositions although Edward stressed that such a conflict had so far not arisen.

Why? Edward explained the advantages of mediation, confirming Gordon Humphrey's earlier comments. Mediation at the UK IPO was (usually) geared to a solution in a single day and was cost-efficient, a point which he illustrated by comparing the comparatively low cost of mediation with the potential cost of a trade mark opposition at the UK IPO ("approximately £10,000 to £20,000") or a court case at the Intellectual Property Enterprise Court, short: "IPEC" ("approximately £145,000").  Edward also pointed out that several case had been referred to the UK IPO mediation service from IPEC recently, where the judge proposed mediation at a case management conference.  Edward further stressed that mediation was more flexible than a hearing could ever be and allowed a "breadth of solution" which is far more comprehensive than a court decision since it can serve to avoid (endless) further related disputes. Being "a Hearing Officer by day", Edward - somewhat tongue in cheek - admitted that the outcome of court and UK IPO proceeding's often "unpredictable", especially when it comes to the questions of likelihood of confusion and global assessment ("we flip a coin").  
What is the format? As regards to the format of mediation at the UK IPO, Edward elaborated that it was a faciliative model, confidential and to a high degree influenced by the parties ("they can walk out").  Before mediation takes place the parties usually submit a brief summary, which can be exchanged and sets the background to the dispute, followed by a joint opening session were both parties "see the whites of the eyes". Mediation, in Edward's view allows to move from a legal position to the actual interest of each party and "provides a reality check". Parties are meant to consider what the "best litigated outcome" could be and while considering the facts and background of a dispute "often a solution emerges".

Legal opinion? Preferably and usually UK IPO mediators do not voice an opinion since the parties otherwise "won't tell their secrets."  However, the mediators' legal knowledge gives them leverage in the negotiations and they will voice a legal opinion if both parties expressly ask.

Where? As regards to where a mediation would be conducted: while it is possible to do it via the phone (i.e. if a party is based abroad), it is best done "face-to-face." Locationwise the UK IPO mediators are flexible. Mediation can be held at the IPO in Newport as well as in London or Leeds, indeed they are willing to "go anywhere".  Food, drink and secretarial support as well as soundproof venues are however crucial.  As regards to the fees, he pointed out that they are usually around £10,000 or less for trade mark oppositions. Details are available on the UKIPO's website, see here.
When? While there appears to be no best time, mediation should be conducted as early as possible and/or prior to litigation.  However, if litigation was already underway, Edward recommended that it should be conducted before the matter is substantially heard by the court/IPEC. He pointed out that parties have in the past settled through UK IPO mediation after a nudge by a judge at a case management conference, despite only agreeing to mediation to avoid a negative cost decision .
Who and what about the success rate? The UKIPO currently has five accredited mediators and in first three months of 2014, four mediations have been conducted, all of which were successful. Three of these were referred from the IPEC and one was a trade mark opposition from the UKIPO.  
Question time: the event closed with various questions from the audience.  The UK IPO's mediators confirmed that they would also be willing to conduct mediation via Skype or similar services. As regards to the time gap between a request and the actual mediation taking place, it was confirmed that this can be done very quickly ("within a matter of a few weeks", two weeks if the parties diaries allow) and has once even been organised in less than a week after a request.  Importantly, it was pointed out that no active UKIPO proceedings need to be pending and UKIPO will also mediate if there is a current court claim or after an opposition has settled and the parties are still fighting on further points.  The UKIPO mediators would also mediate in an OHIM opposition matter.  So why, one member of the audience asked, was there was not more information available telling us about the success of the OHIM and UK IPO mediation services? This, we learned was due to the confidentiality of the process and part of the reason why the event was organised ("to spread the good news").  As regards to the UKIPO proceedings, what was the ideal point to conduct mediation and would suspensions be readily available at all stages of the proceedings? In this context it was again confirmed, that the earlier the better. Suspensions would be granted at the discretion of the relevant examiner and Edward was confident that it was in interest of the examiner to do so.

As previously commented, this Kat enjoyed the event and feels much better informed. The only open question that remains is whether a suspension to allow mediation at the UK IPO would also be possible in a situation where a deadline would otherwise not be extendable (this Kat doubts it but she'd like to know for sure...).

Perhaps the answer to this question will be covered at the next and upcoming "Presentation of UK IPO Mediation Services" in Leeds on 27 May 2014?! Details of the Leeds event can be found here.  If you cannot get enough of mediation, then information about OHIM's first ever IP Mediation Conference, which will take place in Alicante on 29 and 30 May 2014, can be found here.  

1 comment:

Anonymous said...

Lovely write up - thanks Birgit. On the specific question of stays or suspension pending mediation, my colleagues in inter-partes are best placed to answer and may like to chip in.

I know I have allowed such a stay when I worked there but it will be dependent on individual circs. The mere prospect of mediation may not be enough.

Do not suppose either that mediation will allow you not to file time critical forms (listed in Schedule 1 of the 2008 Rules).

The tribunal has broad powers of case management (rule 62) and these I would suggest may include the power to 'take account of mediation'.

Just to point out also that IPEC has no special arrangement with us to send cases to the IPO for mediation - we are just one of many providers.

Finally also, the cost of mediation is definitely not £10,000. We have a scale based on the 'size of a claim'. In a TM opposition (and other registry or IPO proceedings) there is no monetary 'claim' and so we price as if the 'claim' were under £10k on oiur scale.

Regards and thanks again

Edward

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