Yesterday evening the IPKat attended the INTA roundtable on Alternative Dispute Resolution in Trade Mark Disputes, hosted in the scenic London offices of Howrey Simon Arnold & White, with panoramic views overlooking St Paul’s Cathedral. The discussion was led by Piet Schalkwijk (Akzo Nobel’s Director of Intellectual Property) and Sir Robin Jacob, shortly to take his place in the Court of Appeal.

Since INTA has established an international Panel of Neutrals for the purpose of encouraging its members to turn to alternatives to straight litigation, it was not surprising that the two leaders of the discussion strongly supported greater use of ADR, particularly mediation. Piet Schalkwijk described legal disputes as “not a battle to be won but a problem to be solved”, drawing attention to the level of emotional involvement of parties involved in litigation which makes settlement difficult, quite apart from the financial cost. Where straight mediation between the parties failed, “facilitated negotiation” through a trained mediator could often bring about excellent results. Even where it did not, the mediation process could have a highly beneficial effect upon any ensuing litigation by sharpening the issues which remained to be tried.

The IPKat makes the following observations:

(1) While ADR has much to commend it, many trade mark disputes may be less suited to it - and particularly to mediation - than disputes in other areas. For example, in actions against counterfeiters and other infringers, where there is no previous commercial relationship and no trust exists between the parties, it may be unreasonable to expect a mediated settlement to result.

(2) Some trade mark owners rely on an aggressive litigation policy as a way of deterring actual or potential competitors from coming too close to their trade marks or trade dress. The MACDONALD’S policy of taking legal action against almost every third party use of the MAC- prefix, irrespective of the strength of the trade mark owner’s case, is an example of this policy. Where such a policy is commercially successful it is unlikely that the trade mark owner will trade it in for a commitment to mediation.

(3) Many trade mark disputes (for example opposition hearings) are simply too small for the savings which mediation produces over litigation to add up to much.

(4) Failed or successful but protracted mediation may itself add to the overall cost of dispute resolution.

(5) To work properly, mediations should conclude with a proper binding contract which determines the terms of the settlement. Failure to do so can leave the parties with big problems, as happened in the battle between the World Wide Fund and the World Wrestling Federation for control of the WWF trade mark.

More on mediation: INTA Alternative Dispute Resolution here; Centre for Effective Dispute Resolution here; International Court of Arbitration here
Less orthodox ADR here, here, here (rule 7, bullet point 8) and here


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