Mediation before OHIM
For inter partes appeal proceedings before OHIM, mediation services are offered to allow the parties trying to reach an amicable solution to settle the matter without the requirement of a decision of the Board of Appeal. Mediation is usually faster and less costly than an appeal procedure before the Board and a possible further appeal. Additionally, not only legal issues may be part of the discussion but also business interests. All discussions during the mediation process between the parties and the mediator are confidential because mediation is not a public procedure.
The task of the mediator is trying to find a reasonable compromise for both parties as basis for a potential amicable agreement. However, it is not the role of the mediator to act as judge or to offer its own opinions on the rights and wrongs of the parties’ arguments. The mediator is bound to keep the content of the mediation confidential, regardless of whether the mediation is successful or not.
There exist Rules on Mediation by OHIM regulating the request for mediation, the role of the mediator and the parties, confidentiality, place and costs of such mediation.
According to Rule 1.1 of the Rules on Mediation, mediation is a structured process whereby two or more parties to a dispute attempt by themselves, on a voluntary basis, to reach an agreement on the settlement of their dispute with the assistance of a mediator. The parties may withdraw from the mediation at any time.
The mediator has to be seen as a neutral intermediary who has no power to decide the matter in case the mediation fails. The team of mediators are from different parts of OHIM. All of them completed successfully a special training with the Chartered Institute of Arbitrators (CIARB) in London and serve different languages. The full list of mediators is published on the OHIM website under http://oami.europa.eu/ows/rw/pages/CTM/regProcess/mediators.en.do introducing them by CV. The parties may choose a particular person of this list based on a certain background and experience, or the ability to provide the mediation in a specific language. They may get support for that decision by the Registry of the Boards of Appeal.
Mediations may take place after the decision of the first instance or parallel to appeal proceedings (which should be suspended if appropriate). Thus, there must be a decision of the first instance of OHIM on CTM or Design matters in an inter partes proceeding.
Nevertheless, the affected party has to file an appeal (including submitting the statement of grounds within four month after the notification of the contested decision) and pay the respective fee to avoid that the decision becomes final but to obtain the suspensive effect of appeal. Only after the decision is appealed, mediation can commence.
Both parties have to sign the request for mediation. The mediation services are free of charge and usually held in Alicante. There is only a fee of EUR 750 if the parties request the mediation to be held in Brussels instead of Alicante to cover the travel, living and subsistence costs of the mediator.
The language of the mediation usually is the same as the language of the appeal proceedings. Nevertheless, the parties may agree to another language.
The mediation is not limited to the ongoing (but suspended) proceedings but may include future and present commercial and economic interests of both parties. Usually mediation is most successful when the focus can be expanded to the business interests and less the legal ones. The result of the voluntary mediation, e.g. an agreement, mostly prepared by the lawyers of the parties, is binding as any other agreement between parties.
After the parties agreed to enter the mediation, they pick a mediator from the list and contact him. Before the actual mediation takes place the mediator and the parties have to discuss place and date, the timetable and whether any documents should be exchanged in advance to prepare the mediation and make it more effective. The parties have to sign an agreement on mediation and send it to the mediator. The mediation is usually expected to be no longer than one day because afterwards it is mostly difficult to find an agreement. However, very complex cases may need more than one day. The parties may come alone or with their legal representatives. If the aim is to find an amicable solution on legal and business matters, we always recommend bringing the representative to avoid any unnecessary “surprises” on a later stage. The mediation consists of an alternation of joint sessions as well as individual sessions between the mediator and each party. Information disclosed in the individual sessions are private and secret, which means that the mediator is not allowed to disclose them to the other party without explicit authorization. Proceedings usually will be closed by further joint sessions and the drafting of a settlement agreement. This is a confidential agreement, too. The parties only inform the Board of Appeal that they signed an agreement (without notification about the content of the agreement) and the Board will come to a decision only noting the disclosure of the appeal proceedings.
If the mediation fails the parties will withdraw from the mediation process and the mediation is immediately terminated. Also the mediator may terminate the mediation if a stalemate or impasse has been reached. After termination, the appeal proceedings are continued, starting from the point where the proceedings have been stopped and the mediation process has been inserted. The mediator is no longer involved.