October 2011
The Office for Harmonisation in the Internal Market (OHIM) is the body that examines applications for Community trade marks and designs, and decides on post-grant oppositions and appeals. OHIM has now introduced a mediation service as an alternative way for parties to resolve their disputes. The service is intended to provide a swift, efficient and voluntary method of settling conflicts amicably.
The new service came into effect on 23 October 2011, and will use a team of specially-trained mediators drawn from OHIM's staff.
In an appeal against an OHIM decision on a trade marks or design opposition, revocation, or invalidation action, the parties may request mediation, if they both agree to do so. The purpose of the service is to help resolve disputes that may otherwise lead to costly and time-consuming court proceedings.
Once the appeal has been filed at OHIM, the parties should jointly request mediation by OHIM. This will suspend the appeal proceedings, pending the mediation outcome. If mediation fails, the appeal proceedings resume as normal.
Mediation meetings will usually take place at OHIM, in Alicante, although, if the parties request, they can be held, at extra cost, at OHIM's Brussels office.
The discussions during mediation remain confidential between the parties and mediator, and the content of the negotiations do not become part of the public appeal file. A mediation meeting is not the same as an oral hearing, because the mediator has no decision-making power.
Mediation will allow the parties to engage in open discussion of the concerns underpinning the dispute. The mediator facilitates the negotiations, to help the parties achieve a quick settlement. The process will rarely take more than one or two days. A skillful mediator will explore alternative solutions that the parties may not have considered, or are not available through the courts. However, unlike litigation or arbitration, the mediator cannot impose a settlement upon the parties, and the trade mark or design owners keep full control of negotiations.
An unsuccessful mediation will not prejudice any legal rights of the parties, and will not significantly delay the appeal proceedings.
OHIM is waiting to see the extent to which parties will use the new mediation service. At the moment it has no plans to extend the service to other types of dispute, such as oppositions. However, if the service proves popular, we believe that OHIM will extend the service to all disputes.
If you would like any further details about the OHIM mediation service, or any other way we can assist you in protecting your trade mark or design rights, please contact Kara Bearfield at kbearfield@forresters.co.uk.