|Happy after a successful mediation?|
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").
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.
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.