Mediation service on the way at OHIM

OHIM is planning to introduce a mediation service as an alternative to proceeding with an appeal to the Boards of Appeal in trade mark and design cases. The service will be available from the end of next month through a team of specially-trained mediators drawn from the Office’s staff.

To qualify for the new service, an appeal must already have been filed (with payment of the normal appeal fee of €800). If the mediation meetings take place at OHIM’s premises in Alicante there is no further fee to pay. As an alternative, provision has been made for mediation to be offered at OHIM’s Brussels office on payment of a fixed fee of €750 to help defray the mediator’s travel expenses.

Mediation is a new departure for OHIM and one that is being offered following interest expressed by users.

The process itself is not binding on the parties but is expected to lead to the settlement of the appeal procedure, and also to binding contracts between the parties in many cases. The alternative is to proceed with an appeal, which takes on average one and a half years and in some cases is followed by further time consuming and expensive litigation again before the first Instance or at the Court of Justice in Luxembourg .

Philipp von Kapff, special advisor to the President of OHIM’s Boards of Appeal explains that out of the 2,000 or so cases a year dealt with by the Boards quite a few seem to hold the potential for amicable resolution, provided the right environment for discussion is offered to the parties.

“Mediation is not about resolving legal issues, it is about encouraging rights holders to deal with the real conflicts in business interests. When the matter is looked at in this light, sometimes the problem is not so great." “While we would hope to reduce the number of appeals coming before the Boards, we have no illusion that creating a new Mediation Team is going to have a huge impact or indeed save money. This project has been 100% driven by our desire to provide rights holders with a wider range of solutions for resolving their trade mark and designs disputes”, he adds.

“If the parties can reach agreement on their own they don’t need a mediator. In our experience, however, the principals show more willingness to settle amicably when they are brought together to discuss the business issues. In many appeals it seems that this takes place too late in the process. In addition there may be intercultural problems or procedural issues between the parties, where OHIM mediation may help. However, mediation should not be confused with an oral hearing, as the mediator has no decision making power and the content of the mediation negotiations do not become part of the appeal file in any way.”

The decision of the Presidium of the Boards of Appeal setting up the new service is hopefully due to be published in the Official Journal on 3 October and will come into effect 20 days later. While the level of interest among users has still to be tested, OHIM could be dealing with the first requests for mediation towards the end of next month.

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