Alternative dispute resolution (ADR) processes have indeed become increasingly important over time. This is not only because litigation has its own downsides – ranging from uncertainty of the outcome to time and costs – but also because of some key attractive features of ADR processes in general, including their flexibility, generally less expensive and confidential character, and expertise of those involved. 

    It is thus no surprise that ADR processes have gained in popularity. Their use has been mandated or encouraged in recent legislation too within the context of the European Union (EU). For example, when it comes to contracts of authors and performers, the 2019 EU copyright directive requires EU countries to provide in their laws for a voluntary ADR procedure that contractual parties can revert to in order to solve relevant disputes between them. The EU Trade Mark Regulation (Regulation EU 2017/1001) also encourages ADR for conflicts between parties involving EU trade marks (EUTMs) and designs, and with this in mind, entrusts the European Union Intellectual Property Office (EUIPO) with the establishment of a Mediation Centre. Moreover, in the EU legislative pipeline of new initiatives within the IP field, the great majority of proposals also includes chapters specifically dealing with embedded ADR mechanisms.

    The advantages of mediation

    Mediation is a form of ADR that has all the advantages highlighted above.

    First of all, it is flexible because it allows parties to discuss issues outside of strictly legal arguments and achieve solutions that accommodate diverging interests. Second, mediation is generally less expensive than traditional litigation in terms of fees and time. Third, unlike the publicity of court proceedings and resulting judgment, mediation is a private procedure, which allows parties to preserve confidentiality around the dispute between them and the terms of the solution achieved through mediation. Fourth, unlike what might be the case in some situations –  for example, in countries that do not have specialist IP courts – parties that choose to mediate their disputes can select IP experts as evaluative mediators.

    It is essentially for the reasons above that mediation has become more and more relevant in the IP field too. Relevant mediation services are offered, amongst others, by national IP offices and international organizations, as well as the EUIPO.

    Mediation as offered by the EUIPO Alternative Dispute Resolution Service

    The EUIPO Alternative Dispute Resolution (ADR) services (mediation, conciliation and expert determination) are offered both online and in person and are addressed at all parties involved in inter partes proceedings before the EUIPO Boards of Appeal. For the benefit of small and medium-sized enterprises only, there is an additional “ADR SME special service” available, which covers the EUIPO’s first instance inter partes proceedings before the Opposition, Cancellation and Invalidity Divisions of the EUIPO. Mediation at the EUIPO involves no additional charges to the appeal, cancellation, opposition of design invalidity request fee, as the Office offers these services through internal staff, that are IP experts and trained in mediation.

    Upon launching the EUIPO Mediation Centre (foreseen for the last quarter of 2023) that will consolidate the service offering at the level of appeals, ADR services for first instance proceedings (EUTM cancellations, designs invalidities and EUTM oppositions) will be rolled out in a phased approach during 2024 and 2025. All this will be supported through an online ADR platform that will facilitate the interactions of the parties and the mediators in a safe and confidential environment.

    As detailed, mediation is a voluntary process in which the parties, guided by a mediator, attempt to reach an amicable settlement of disputes between them pending at the EUIPO (but likely also elsewhere!). The process, which is characterized by flexibility and confidentiality, is based on the appointed mediator’s own neutrality and impartiality.

    Importantly, the mediation service offered by EUIPO is not necessarily limited to the IP rights that the Office manages (trade marks and designs) but may also cover – at the request of the those involved – other rights, for example copyright, domain names and patents, as well as other disputes pending between them. In addition, conflicts are often spread over several jurisdictions and countries. Through mediation, it is easier to group these disputes and solve them in the best commercial and business interest of the parties, in one go.

    The end goal is to reach an outcome that the parties deem mutually satisfactory, also with the perspective of maintaining an amicable and sustainable relationship between them.

    A panacea for all IP disputes?

    There may of course be disputes for which mediation or other ADR processes may not be however suitable options. That is for example the case of: disputes involving key points of law, especially those not yet tested in court, situations in which the claimant requires emergency injunctive or protective relief; or one of the parties has declared their objection to ADR.

    That said, ADR processes and mediation offer clear advantages for businesses and IP right owners. As such, even though ADR mechanisms might not be suitable in each and every case, on most occasions when the parties engage in mediation, they can help provide solutions that are quick and effective. When we speak about IP rights, which are naturally concerned with fast-paced innovations, both speed and efficiency of the dispute resolution system as a whole are key. Mediation and ADR in general contribute to delivering such features, for the benefit of users of the IP system and society at large.

    A full perspective on the status of mediation and ADR in the field of IP will be discussed in the IP Mediation Conference held at the EUIPO on 19 and 20 October 2023, as well as online. Participants will include representatives from IP offices, EU institutions and policy makers, lawyers, in-house counsels and other IP practitioners, judges, leading mediation institutions, international industry sectors, owners of small businesses, international IP users, and ADR training providers and academia. The Conference will focus on the pragmatic and practical aspects of mediation as an incentive for businesses and their legal counsels, in particular relevant of IP disputes.

    Source:EUIPO