OHIM IP Mediation Conference 1: the EU Mediation Directive

Note to readers: there won't be more than four posts on this topic today -- and there will be none tomorrow unless this Kat can persuade anyone to guest a piece for him.  If IP dispute resolution is not for you, please bear with us!

Today the IPKat is participating in the first conference on intellectual property mediation to be organised by the Office for Harmonisation in the Internal Market (OHIM), in the beautiful ADDA conference centre. OHIM President António Campinos, sporting a smart new beard, opened the proceedings by welcoming everyone with a succinct summary of IP mediation in the EU and at OHIM over the six years since the little-known EU Mediation Directive came into being.  Independence and confidentiality were the cornerstones of a good mediation service, he emphasised, these being goals to which OHIM's own mediation service -- still little used -- subscribed.  He also mentioned the very positive experience of IP mediation in the Philippines, where over 600 mediations have come to the local IP office, of which some 40% have reached negotiated settlements.  So far as infrastructures for mediation are concerned, he added, citing Field of Dreams, "if you build it, they will come".

Next to speak was Beate Schmidt (President of the German Federal Patent Court), who mentioned that some German judges were trained mediators but regretted that there have not been so many cases of late which require their talents: "there is room for improvement", she noted, adding that we have to get the message of IP mediation across more effectively. Beate was followed by Mihály Ficsor (Chairperson, Administrative Board of OHIM and Vice-President of the Hungarian Intellectual Property Office), who assured us that the advantages of IP mediation speak for themselves. He reminded the audience of the part to be played by mediation in the resolution of international and cross-border disputes and closed by saying that OHIM's policy was geared towards a wider EU objective of improving standards of dispute resolution in all commercial matters, not just IP.

Patricia García-Escudero (President of the Spanish Patent and Trade Mark Office) closed this opening session by explaining Spain's policy of promoting both mediation and arbitration of disputes, so long as these forms of alternative dispute resolution (ADR) are not excluded by the express will of the disputants.

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Is Latin about to
make a comeback?

Following these formalities, the first substantive session opened with a review of the role of the EU Mediation Directive. Francisco Fonseca Morillo (European Commission, Head of Representation) moderated this session, which was opened by a paper, "Mediation quo vadis?" by Diana Wallis (former Vice President of the European Parliament, qualified mediator, Director of the International Mediation Institute, Member of the Civil Mediation Council's Government Affairs Committee and President of the European Law Institute). Diana spoke about mediation in general, rather than IP mediation in particular, and asked if we really know what we're talking about. It's more than "the thing you do before you go to court" -- and there seem to be so many different definitions of mediation for official purposes. It's difficult for a "user", i.e. a would-be litigant, to know which course to pursue when there are so many options. Perhaps this is why mediation hasn't gained the degree of traction that we would have liked.

Where do the problems lie? One relates to information about mediation, Diana suggested. The Directive charges Member States with "encouraging" users, but doesn't explain what that means and it doesn't appear to embrace better information about choices available to prospective users.  She then gave, by way of an example, her own experience of trying to get a rogue website which was using her name, in which she was sent to one authority after another and found herself going round in circles.  "We need to increase the professional capability and the professional standing of mediators", she concluded.

European Parliament: "We're here to serve",
Cecilia reminds us

Next to speak was Cecilia Wikström (Member of the European Parliament since 2009) on "Implementation of the Directive on Mediation in cross border disputes".  Cecilia observed that 18% of cross-border disputes involved IP (the second-largest area of dispute) and that SMEs, which lacked the financial and other resources of larger companies, were ideal customers for the EU Mediation Directive.  The four-tier system of resolving Community trade mark disputes, leading to the Court of Justice of the European Union, can take years and years and, from the business perspective, can be crippling.  Large businesses tend to develop their own dispute resolution mechanisms and veer towards ADR, while SMEs, lacking these resources, tend to opt for litigation -- which is all the wrong way round.

JAMS: a sweetener for dispute resolution?

"Tackling the challenges to mediation, specially in IP" was the title of the presentation by Giuseppe De Palo (President of ADR Center – Member of JAMS International; Professor of Alternative Dispute Resolution Law & Practice at Hamline University School of Law). Giuseppe recognised the limited impact of the EU Mediation Directive, asking whether there should indeed be more mediations.  However, CEDR research has shown if only 19% of disputes went to mediation, there would still be overall savings.  Surveys have shown that most lawyers estimate that the scale of mediations is very low, which is a bit depressing [the fact that the outcome of most ADR doesn't hit the headlines or get reported is bound to have an impact on these impressions].  Assessing the cost savings made per successful ADR, even a small proportional increase in the volume of mediations could leave billions of euro in the pockets of businesses.

Giuseppe then considered the pros and cons of requiring businesses to opt in or opt out, in terms of possible outcomes.  "You can lead a horse to water but you can't make it drink", he reminded us.  Opt-out is a way of leading IP disputants to the 'water' of mediation even if they choose not to drink.  It's also worth experimenting with mandatory partial mediation, as is now the case in Italy. Turning to Article 1 of the EU Mediation Directive, he speculated that EU Member States that don't generate mediations may be in breach of its provisions.  He contrasted the failure of EU Member States to boost mediations with the success of the courts in Manhattan in sending every fifth case for mandatory opt-out mediation (this appears to be an arbitrary figure that just "feels right").