Ignacio de Castro of the World Intellectual Property Organization (WIPO) urged trademark owners to consider using mediation and arbitration before facing costly litigation at the ECTA 2013 conference in Bucharest.
de Castro, deputy director of WIPO's Arbitration and Mediation Center, told the conference that the centre has helped resolve 70 percent of mediation cases and 40 percent of arbitration disputes since forming in 1994.
About 14 percent of all disputes have dealt with trademarks and about 31 percent with patents, while Uniform Domain Name Dispute Resolution Policy cases account for a large share of the remainder.
de Castro explained that mediation is the first step to settling a trademark dispute but, if the case remains unresolved, the parties can continue to arbitration. Arbitrators can make a binding decision, while mediators can only try to encourage a settlement between the parties.
One of the main reasons for choosing mediation or arbitration over litigation, de Castro said, is that they are typically much cheaper options than going to court.
"Parties want to move on with their business and avoid litigation," he said.
WIPO has more than 1500 neutral experts, de Castro said, some of who deal with a range of trademark mediation and arbitration cases, with the types of dispute including trademark licences, coexistence agreements and joint ventures.
The Center is now working Singapore's IP office to settle trademark disputes through mediation. "It is working well," he said.
WIPO is also collaborating with the IP office (INPI) in Brazil, where there is a "booming market with lots of trademark applications and a huge backlog’.
The INPI is set to introduce a new mediation system for trademarks and will deal with disputes between two Brazilian parties, while WIPO will handle disputes involving a foreign party.
"Given the volume of pending applications, we think it [the system] will be very good," he said.
De Castro was speaking after Katherine Basile, partner at Novak Druce Connolly Bove & Quigg LLP in California, who provided some tips about mediation, the results of which are enforced by contracts.
First, Basile said, decide whether "subject matter expertise" is necessary, for example by using a judge as a mediator. Many of the successful cases she has overseen have been mediated by judges.
Another tip was to "determine your interests and those of the other side as best as you can", because "if you can't understand the other side", resolving a dispute will be tough. "Have some flexibililty ... Consider your best and worst alternatives."
Not overstating a case and coming across as reasonable are other important elements, Basile noted, saying that "most of my success has been because I have been reasonable".
She concluded: "Mediation is really an excellent way to address your clients' needs."
The ECTA Annual Conference in Bucharest finishes tomorrow.
This article was first published on 20 June 2013 in World IP Review
ECTA, WIPO, mediation, Bucharest, conference