What is mediation?
Mediation is a process where the parties to a dispute (in this case, a trade mark opposition) can reach a mutually agreeable solution to their dispute. The aim of mediation is to help the parties to negotiate a settlement. It is not about having the matter determined, but rather each party coming to an appreciation of what they are prepared to live with.
Why mediate trade mark oppositions
Filing a trade mark opposition can be a motivated by many reasons. For example, if a party has filed an identical trade mark to yours for goods and services which you consider to be in conflict with the trade mark you already own or use. The reason may be a party having filed an identical trade mark in a wholly unrelated field of activity and your objective is to work out what they intend to do with that mark and whether any conflict might arise in the future. Parties often file oppositions to look at the evidence filed by the other party so that they can work out what the other party’s activity will do to their own commercial position.
Timing
A mediation can be conducted at any time either before an opposition has been filed—when one has been threatened or alternatively at any time during the process of an opposition. Currently, fully contested trade mark oppositions take two to three years to come to hearing. A mediation could be resolved in a matter of weeks or months depending on the complexity of the dispute in hand.
Winner or loser
One of the downsides of contentious proceedings, including oppositions, is that there is a winner and a loser. In mediation, the parties can leave with a piece each. In the case of a trade mark opposition, it may be that the parties are able to agree to an exclusion zone around their trade mark by negotiating restrictions to the specification of the trade mark application, or alternatively restrictions to the use of the trade mark.
Cost
Whilst trade mark oppositions are often nowhere near as costly as litigation, they can easily get to $30,000 or $40,000 if evidence is lengthy. On the other hand, a mediation could easily be dealt with for $10,000 to $15,000.
Is mediation for everyone?
Obviously where two parties do not see eye to eye at all on a solution then mediation may not be the answer, and it may be best for a third party to make a decision or adjudicate the matter. In our experience, that is rarely the case.
Who should you use?
Mediation is a skill and acquires particular training. There are a number accreditation associations in Australia who offer accreditation and you can find a practitioner through their websites. The leading accreditation association in Australia is LEADR1. The INTA2 has a panel of neutrals who have been assessed as being qualified in mediation and in IP. WIPO3 also has a panel of neutrals with similar qualifications.
Frances Drummond is a partner in the Trade Marks group. She is a LEADR accredited mediator and a member of the INTA Panel of Neutrals.
This article was written by Frances Drummond, Partner, Sydney.
Endnotes
1. LEADR
2. INTA
3. WIPO
More information
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