Presentation of UKIPO and OHIM mediation services (part 1) - an event report

Attracted... not by a silver spoon , but by an email sent out to ITMA members by the industrious Gillian Rogers, this Kat on Monday lunchtime attended an event at CIPA Hall relating to the OHIM and UKIPO Mediation services (see here), co-organised by CIPA and ITMA.  The lunchtime event was well attended and despite lasting for roughly two hours, the speakers' engaging styles managed to hold everyone's attention well.  Something my post - sadly - does not quite reflect.

The first part of the event - and the first of  my planned two IPKat posts - focussed on OHIM's Mediation Service:  a so far rather unknown quantity to many trade mark practitioners.  It appears that there has not been much information about this service since it was first launched in 2011 (see IPKat post here) so that at least some of the attendees were wondering how "OHIM was getting on …?".   A second IPKat post on the UK IPO 's meditation service will follow.

Théophile Margellos (President of the OHIM Boards of Appeal and OHIM's Head of Mediation Services, left) gave a quick overview of OHIM's mediation service and emphasised the good working relationship between OHIM and the UKIPO in this field. In a nutshell: mediation at OHIM is a structured and confidential process and the Office's mediators are completely independent.  The cases have been somewhat "slow to come" since OHIM started its service in 2011. OHIM so far had 10 requests for meditation, four of which were refused by the other party,  four mediations have  been concluded, three of which settled and two mediations are currently ongoing.  However, this Kat is quite confident that this will change.

What is it exactly? Gordon Humphreys' (OHIM mediator and member of the Board of Appeal) was next to speak and explained that mediation offered by OHIM was an interest-based, flexible, cost-efficient and confidential (no public record will be kept so no one will become a "soft target") type of ADR.  If successful, it should allow for a mutually satisfactory amicable settlement by avoiding litigation . Attractively, it appears usually possible to wrap it up in one day ("9 am till midnight without much of a break is not unusual").  It can help to preserve business relationships, doesn’t allow any "fishing" and is always "without prejudice", which is important if mediation fails.  Importantly, it is a free service.

What can it be used for?   "Absolutely everything" according to Gordon Humphreys, unless it relates to criminal activities or public interest matters and provided that "CTMs or RCDs are involved in some way".  Being strictly "inter parties" it cannot relate to questions of absolute grounds but can also cover infringement matters and resolve parallel proceedings.  OHIM mediation is well suited for complex and protracted opposition matters and uncertain cases since it allows to break down conflicts to their simplest terms by exposing underlying issues, including potential personality conflicts. 

Where will an OHIM mediation take place?  The options are: Alicante (no charges, the service is free and this is where OHIM is based) and Brussels (which will attract a 750 Euro fee for travel costs, etc.). It is also possible to conduct mediation by video conference, even though "nothing replaces a direct meeting."

When (and why) should OHIM mediation be considered?  OHIM mediation can - currently  - only be conducted at the Board of Appeal stage and will suspend the appeal proceedings.  Gordon's presentation finished with some statistics which underlined why users may wish to consider mediation at OHIM: in short... because it is quick!   In this context, he referred to several long lasting cases, including Arcol v Capol (T-402/07, T-164/02, C-193/09) which took over 14 years until a final decision was reached.  He underlined this with some further statistics showing the large number amicable settlements in OHIM proceedings at the BoA stage; in 2009: 172, 2010: 178, 2011: 236, 2002: 253 and 2013: 219. 

Next to speak was Alexandra Crawcour  (OHIM mediator, left below) who started her presentation by addressing the question of who should be present at the actual mediation?

·        the usual parties before the Board of Appeal

·        plus their legal representatives (or employees), sometimes non-EU counsel a

·        one or two mediators (having a second mediator might keep the first exhausted mediator from fainting!). 

·        It is important that both parties to the dispute are present and - ideally- are fully authorised to settle.  Alexandra explained that the authorisation point was crucial bearing mind that solutions sometimes not only have legal but also direct financial repercussions.   However, havign a second in command present and a phone nearby should also allow to reach a settlement, it may just take a bit more time.

How to start it?

·         Appeal fee and statement of ground need to have been submitted.

·         Appeal has to be admissible.

·         A request for mediation (in writing) either by one or by both sides has to be submitted.  If the request is one-sided, the Board of Appeal will contact the other party with the request.

·         This will suspend the appeal.

·         Both parties need to sign a "mediation agreement," which simply means that both parties submit to mediation.

·         All parties present (including the mediators) need sign a confidentiality agreement.

Who are OHIM's mediators? Alexandra explained that there are currently 19 OHIM mediators (all accredited - see below for more information).   Many speak several European languages, which is ideal for multi-national disputes. .  She also pointed out that further information is available on OHIM's website even though it may "not always be easy to find things" on the site/  

What is the actual process like? In a first round each party usually makes its opening statement and the mediator will take a view whether the parties get on well enough so that the mediation can be conducted in one room or whether "shuttle diplomacy" is required. 

If all works well by the end of the day, at least the heads of an agreement will be drafted and signed. It is however difficult to agree on all details of a settlement agreement and have a complete agreement drafted. Alexandra added that it is a flexible and facilitative process - which tends involve a lot of tea and coffee. Given the often intensive nature  of such negotiations, OHIM's famous Cantina also appears to play an important role in keeping participants well nourished.   

What happens after the mediation process?  Ideally both parties agree on a compromise and sign some type of settlement agreement.  If this is the case, OHIM's Board of Appeal will issue a final decision accordingly without mentioning the mediation process. Importantly, no records are kept of the mediation process.  Should the mediation fail, the Board of Appeal proceedings will resume. Again, no mention of the mediation will be found in the decision issued by the Board of Appeal.

Alexandra wrapped up her part of the presentation with a reference to an upcoming mediation conference to be held in Alicante on 29 and 30 May 2014, (details below).  She also pointed out that OHIM will be happy to answer questions on the service.  

One of the questions already raised at the event was that some mediators also serve on OHIM's BoA - does this not pose a conflict?  OHIM is aware of this and OHIM mediators are always independent and will not have been involved in the respective proceedings.  Another interesting question was why OHIM restricts its mediation to the Board of Appeal level (this is in contrast to the UKIPO).  Mr Margellos answered this by pointing out that meditation at OHIM was still a pilot project and OHIM may in the future also be offering mediation at a first instance level - whether this will happen will largely depend on the demand by its users.

Now, would I consider recommending it to my clients?  Having attended this event, it appears to this Kat that OHIM's mediation may indeed be an attractive option, especially in protracted proceedings involving various interconnected oppositions,  invalidities, etc. and/or where parties come from different parts of the EU.  OHIM's flexibility concerning the scope of the mediation process was something I was previously not aware of.  The fact that OHIM's mediators speak multiple languages and are familiar with the law clearly are advantages that should not be underestimated.  Another key point is that the service is free (unless you meet in Brussels) and quick.  Given that Alicante can be reached by various budget airlines, it may not even be that expensive.  

• Information about OHIM's mediation service can be found here. CVs of OHIM's mediators can be found here.
  
• Information about OHIM's first ever IP Mediation Conference, which will take place in Alicante on May 29 and 30, can be found here.  Registration has now opened and the conference programme is available here.