Industrial designs

Mediation in Intellectual property

Author: Preslav Baldzhiev

This article will provide more information about mediation in intellectual property as an alternative method for resolving disputes.

Conflicts between two or more people are common, regardless of the field in which they practice. Disputes that arise do not always resolve successfully through mutual negotiations and concessions, and it is not uncommon to reach a judicial or out-of-court settlement. One of the most common methods of out-of-court resolution is Mediation.

What is mediation

As already mentioned, mediation is an out-of-court way of resolving a conflict between two or more persons. Mediation is the preferred way to deal with disputes because its successful conduct is wasting far less time and money from a lawsuit. Mediation is also associated with confidentiality – everything said during the meetings remains confidential (the mediator cannot be called as a witness in a case related to the dispute, which he considered without the consent of the parties).

The key point is that the mediator is neither a judge nor a lawyer – he must maintain neutrality throughout the process and cannot propose solutions on his own unless the parties so request.

Mediation is not binding on the parties – it can be interrupted at any time if a participant is dissatisfied with the negotiations or doubts the neutrality of the mediator.

Mediation according to Bulgarian legislation

Mediation is a method that is applicable in various fields – including for disputes related to intellectual property. Most often, the parties come to mediation when contesting the registration of a trademark due to similarity or identity. The use of this out-of-court method is not recommended for serious infringements of intellectual property rights such as forgery or plagiarism.

The mediator is free to hold general and individual meetings with the parties, thus aiming at objectivity and understanding of the way in which the parties perceive the facts.

Upon successful conduct of the mediation, the parties enter into an agreement that settles the disputed issues. The agreement is valid only between the participants and is not opposed to third parties who were not part of the mediation. After its signing, the agreement is subject to approval by the district court.

If the mediation is not successful and the parties do not agree on the disputed issues, they can turn to the competent court to resolve the conflict.

Mediation before EUIPO

In the event of a dispute concerning intellectual property rights, the parties may avail themselves of mediation by representatives of the European Union Intellectual Property Office (EUIPO). This option is available only for trademarks and industrial designs in respect of which there is a decision of the Board of Appeal of EUIPO appealed within two months (the appeal is related to the payment of fees – for a trademark, the fee is 720 euros, and for industrial design amounts to 800 euros). The subject of mediation may be the grounds stated in the appeal, but also any other dispute related to intellectual property that has arisen between the two parties.

If the appeal is approved, the parties may seek the assistance of a EUIPO mediator by mutual agreement. This is done by entering an application in which it is necessary to explicitly express their desire to resolve the conflict out of court. In addition, the application must provide information on the trademark/design, contact information of the parties involved, and details of their representatives (if any). The parties may also indicate a preference for the language in which the mediation will be conducted – if such is not chosen, the language of the appeal is decisive. The request may also mention a specific mediator that one or both parties wish to consider in the dispute (it is important to match the preferred language of the parties to the languages ​​spoken by the mediator). If both parties have preferences for different mediators, then they act simultaneously and jointly.

Prior to the mediation process itself, the parties sign an agreement guaranteeing the confidentiality of the talks (any information shared between the parties or between a party and a mediator remains between them and they are not allowed to disseminate any information).

In principle, mediation led by a EUIPO representative takes place in Alicante, Spain. An exception is allowed – mediation can also take place in the offices of EUIPO in Brussels, Belgium for a fee.

Upon successful mediation, the parties conclude an agreement that settles the disputed issues between the parties. By signing it, the competent appellate panel of EUIPO announces the end of the appeal procedure, and the case is considered closed. The parties may share the costs, but they are free to negotiate the financial part at their discretion.

Mediation before WIPO

Mediation can also take place in front of representatives of the World Intellectual Property Organization (WIPO). Here, the parties can take advantage of the out-of-court method at any time, regardless of whether a court has been reached or not.

Once the parties to the dispute have reached a mutual agreement on how to resolve it, they must apply to the WIPO Mediation Center. In the application, it is obligatory to indicate information about the dispute, names of the parties, contact details, and information about their representatives (if any). With the full agreement, the parties may nominate a mediator to consider their dispute. If the parties to the conflict cannot agree on the mediator, a representative of the WIPO Mediation Center proposes the names of several experts.

Together with the proposed mediators, the representative of the WIPO Mediation Center clarifies several details with the parties to the dispute – the venue of the mediation (not necessarily in Geneva, Switzerland) and draws attention to any specific requirements of the parties.

After the mediator is appointed, he/she will hold conversations, usually in absentia, with the participants in order to clarify the details of the procedure itself – meeting time, necessary documents, and so on. Subsequently, they move on to the real part of mediation, namely the general and individual meetings with the parties. The parties can choose one or two languages in which to conduct the mediation (choosing a second language would make the procedure more expensive).

Upon successful conduct of the mediation, the parties conclude an agreement that settles the disputed issues. The parties may share the costs, but they are free to negotiate the financial part at their discretion.

Advantages of mediation

  1. Speed and efficiency – Successful mediation is often conducted within a day, thus avoiding the long, cumbersome and often costly judical procedure.
  2. Confidentiality – The conversations and documents provided to the mediator and the other party are treated in the strictest confidence and cannot be disclosed to third parties.
  3. Suspension of the limitation period – During the mediation the time barring periods is suspended.

This material prepared by Preslav Baldzhiev aims to provide more information about mediation in intellectual property. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of a specialist should be obtained for specific questions and situations. For more information on the above-mentioned issues and individual consultations, please contact the team of the law firm of Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of the website. Since 2017 Preslav Baldzhiev is a law student at Sofia University “St. Kliment Ohridski “, having previously graduated from the High School of mathematics and natural science “Acad. Nicola Obreshkov” in Burgas. In February 2020 he took a course for industrial property representatives at the Patent Office of the Republic of Bulgaria in the field of trademarks, geographical indications, and industrial designs. He is interested in intellectual property, personal data protection, commercial and law on obligations and contracts and also regularly attends conferences, practical courses, seminars, and webinars.

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