Mediation at the EUIPO

Mediation can be used in pending procedures concerning EU trademarks, such as:

• oppositions
• cancellation procedures
• invalidity procedures
• appeals at the EUIPO

Mediation is only possible if both parties agree to it. During the mediation, the pending procedure is suspended.

Parties can also agree to include other pending disputes between them in the mediation. This is particularly useful when the same parties are involved in multiple conflicts.

The major advantage is that all pending conflicts concerning the same trademarks (sometimes dozens) can be resolved in one go.

The process generally consists of the following steps:

1. Request or proposal for mediation — One or both parties apply for mediation at the EUIPO, or the EUIPO itself proposes mediation based on the circumstances of the case.
2. Suspension of the procedure — The pending case is temporarily paused. Any procedures not at the EUIPO are not automatically suspended and require separate action.
3. Start of the mediation — Parties sign a brief mediation agreement and jointly agree with the mediator on how the process will be conducted.
4. Communication via the mediator — Parties consult through the mediator: there is no direct contact between them unless agreed otherwise.
5. Written consultation — The dispute is often first mapped out in writing and parties look at what solution they are working towards.
6. Consultation meetings — If needed, joint meetings between parties and the mediator take place. This can be done with both parties present or in separate sessions.
7. Completion — If the parties reach an agreement, it is recorded and the procedure ends or is modified. If no agreement is reached, the suspended procedure resumes.

Mediation offers scope for tailor-made solutions that are often not possible within a normal EUIPO decision, such as:

• agreements on the use or delimitation of a trademark
• adjustment of goods and services
• territorial restrictions
• coexistence arrangements
• withdrawal of a trademark application with agreements on costs

EUIPO mediation in principle involves no additional costs when:

• the mediation takes place online
• the mediation takes place at the EUIPO office in Alicante

An exception applies to mediation in Brussels. In that case the total contribution amounts to €1,200 per party.

In addition, account must be taken of:

• costs for legal assistance
• internal time and preparation

In practice, mediation is usually cheaper and faster than continuing with legal proceedings.

Mediation is particularly suitable:

• when speed and costs play an important role
• when parties need to continue doing business after the dispute
• when multiple procedures or conflicts are pending
• when you want to retain influence over the outcome

If you are unsure whether mediation is useful in your case, it is almost always worth considering seriously. If mediation does not lead to an agreement, the procedure simply continues as if nothing happened.

We have coordinated a number of mediation processes for our clients and are positive about this route. Mediation often leads to practical solutions that a formal decision cannot provide.

Mediation can only be used when a procedure is already pending. Often we have already attempted to reach an informal agreement beforehand. If that does not succeed, mediation can be a valuable second step before a full procedure is conducted.