mediation in europe, an alternative to court for the resolution of ip disputes

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MEDIATION IN EUROPE, AN ALTERNATIVE TO COURT FOR THE RESOLUTION OF INTELLECTUAL PROPERTY DISPUTES Pierfrancesco C. Fasano Avvocato in Milano San Diego - May 4, 2015 California Western School of Law

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Page 1: Mediation in Europe, an alternative to Court for the resolution of IP disputes

MEDIATION IN EUROPE, AN ALTERNATIVE TO COURT FOR THE

RESOLUTION OF INTELLECTUAL PROPERTY DISPUTES

Pierfrancesco C. Fasano

Avvocato in Milano

San Diego - May 4, 2015

California Western School of Law

Page 2: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Summary

• Legal framework• Mediation Directive• Implementation of Mediation

Directive in the Member States• In depth country analysis: Italy• Case studies

Page 3: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Legal framework

• EU Directive 2008/52/EC of the European Parliament and of the Council on Certain Aspects of Mediation in Civil and Commercial Matters (Mediation Directive)

Page 4: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Legal framework

• Steps toward Mediation Directive:• Reason: measures in the field of judicial

cooperation in civil and commercial matters are necessary for the proper functioning in the internal market

• Objective: • simplification and improvement of access to

justice• lighten the heavy case loads of the judiciary• reduce the expenses for court infrastructure

Page 5: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Mediation Directive

• Key dates:• Dated: May 21, 2008• In force since: June 13, 2008• Deadline for implementation in

the national laws of the Member States (except Denmark): May 20, 2011

Page 6: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Mediation Directive

• Key issues:• Definition and scope of application• Quality of mediation• Courts and mediation• Enforceability of mediation agreements• Confidentiality• Limitation and prescription periods• Information on mediation

Page 7: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Mediation DirectiveDefinition and scope of application

• Definition:• Mediation means a structured process,

however named or referred to, 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 (art. 3)

Page 8: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Mediation DirectiveDefinition and scope of application

• Definition:• Mediator means any third party

who is asked to conduct a mediation in:

• effective• impartial• competent way

Page 9: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Mediation DirectiveDefinition and scope of application

• Scope of application:• Civil and commercial matters• Cross-border disputes • Voluntary mediation

Page 10: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Mediation DirectiveQuality of mediation

• Soft rules to ensure quality of mediation

Page 11: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Mediation DirectiveCourts and mediation

• Court can invite parties to use mediation or to attend an information session on the use of mediation

• No restriction to Member States to make mediation compulsory, provide for incentives or financial assistance to use mediation and cost sanctions for rejecting mediation without good reason

Page 12: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Mediation DirectiveEnforceability of mediation agreements

• Member States shall ensure enforceability of the agreements resulting from mediation

Page 13: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Mediation DirectiveConfidentiality

• Neither mediators nor persons involved in the mediation proceeding (experts, counsels, translators) shall be compelled to give evidence in judicial proceedings or arbitration on information arised out of mediation

• Parties may agree otherwise• Member States may provide for stricter

rules to protect confidentiality

Page 14: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Mediation DirectiveLimitation and prescription periods

• Member States shall ensure that parties in mediation are not prevented from initiating judicial proceedings/arbitration by expiry of limitiation and prescription periods during the mediation proceeding

Page 15: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Mediation DirectiveInformation

• Member States shall make available information on mediation for the relevant stakeholders

Page 16: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Implementation of Mediation Directive in the Member States

• Substantial differences between the jurisdictions of the Member States different ways of implementation of the Directive into national laws

• Key issues:• incentives• enforceabilty of mediation agreement• court referral to mediation• mediator accreditation system• confidentiality

Page 17: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Implementation of Mediation Directive in the Member States

• Incentives• Modest incentives: Bulgaria, Italy, Latvia,

Lithuania, Poland, Romania, Slovakia, Slovenia, Spain

• No incentives: Austria, Belgium, Croatia, Cyprus, Czech Rep., Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Luxembourg, Malta, Netherlands, Portugal, Sweden, UK

Page 18: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Implementation of Mediation Directive in the Member States

• Enforceability of mediation agreement• Automatically enforceable: Croatia, Italy, Slovakia• Enforced only with court approval: Belgium,

Cyprus, Czech Rep., Denmark, Estonia, Finland, France, Greece, Hungary, Ireland, Latvia, Lithuania, Luxembourg, Poland, Portugal, Romania, Slovenia, Spain, Sweden, UK

• Enforced only through extensive further measures: Austria, Bulgaria, Germany, Malta, Netherlands

Page 19: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Implementation of Mediation Directive in the Member States

• Court referral to mediation• Courts are proactive in referring individual cases

to mediation: Italy, Sweden• Courts encourage mediation: Austria, Bulgaria,

Finland, Germany, Ireland, Latvia, Luxembourg, Netherlands, Poland, Slovakia, Slovenia, UK

• Courts mention possible referral: Belgium, Croatia, Cyprus, Czech Rep., Denmark, Estonia, France, Greece, Hungary, Lithuania, Malta, Portugal, Romania, Spain

Page 20: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Implementation of Mediation Directive in the Member States

• Mediation accreditation system• Accreditation based on statutory standards:

Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Rep., Greece, Hungary, Italy, Luxembourg, Romania, Slovakia, Slovenia

• Accreditation based on market standards: Denmark, Ireland, Netherlands, Poland, Spain, UK

• No accreditation system: Estonia, Finland, France, Germany, Latvia, Lithuania, Malta, Portugal, Sweden

Page 21: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Implementation of Mediation Directive in the Member States

• Confidentiality• Guaranteed in all cases: Austria, Bulgaria, Croatia,

Denmark, Italy, Lithuania, Romania, Slovakia, Slovenia

• Assured with few exceptions: Belgium, Cyprus, Czech Rep., Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Latvia, Luxembourg, Netherlands, Poland, Portugal, Spain, Sweden, UK

• Assured with several exceptions: Malta

Page 22: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Implementation of Mediation Directive in the Member States

• Current state of mediation in EU • After 7 years from adoption

insufficient use of mediation, notwithstanding known advantages over litigation (in particular, duration and cost)

• Proposals to enhance use of mediation

Page 23: Mediation in Europe, an alternative to Court for the resolution of IP disputes

In depth country analysis: Italy• Legal framework: Legislative Decree 28/2010• Definition: “mediation: an activity, however named,

carried out by an impartial third party aimed at the assistance of two or more parties in the research of a settlement agreement for the resolution of their dispute, as well as in the formulation of a proposal for the resolution of such dispute” (art. 1, para. a))

• Application: in cross-border and domectic disputes to claims and rights which are at the disposal of the parties

• Duration: maximum 3 months (originally 4 months) (extendable by the agreement of the parties)

Page 24: Mediation in Europe, an alternative to Court for the resolution of IP disputes

In depth country analysis: Italy

• Key issues:• Mandatory and voluntary mediation• Incentives and sanctions• Confidentiality• Court referrals to mediation• Enforceability of mediation agreement• Accreditation of mediation institutions• Training of mediators• Legal assistance in mediation and attorneys’

duty to inform client

Page 25: Mediation in Europe, an alternative to Court for the resolution of IP disputes

In depth country analysis: Italy

• Mandatory and voluntary mediation• mandatory information session for

certain disputes• voluntary mediation: all other

disputes, e.g intellectual property disputes

Page 26: Mediation in Europe, an alternative to Court for the resolution of IP disputes

In depth country analysis: Italy

• Incentives and sanctions• tax benefits for parties• sanctions

Page 27: Mediation in Europe, an alternative to Court for the resolution of IP disputes

In depth country analysis: Italy

• Confidentiality• regulated by law

Page 28: Mediation in Europe, an alternative to Court for the resolution of IP disputes

In depth country analysis: Italy

• Court refferrals to mediation• invitation• order

Page 29: Mediation in Europe, an alternative to Court for the resolution of IP disputes

In depth country analysis: Italy

• Enforceability of mediation agreement

• automatically• with court approval

• In 27 Member States of the EU (no Denmark)

Page 30: Mediation in Europe, an alternative to Court for the resolution of IP disputes

In depth country analysis: Italy

• Accreditation of mediation institutions

• by Ministry of Justice

Page 31: Mediation in Europe, an alternative to Court for the resolution of IP disputes

In depth country analysis: Italy

• Training of mediators• Requirements to qualify as

mediator:• 50 hours of training• 18 hours of refresher courses

every two years

Page 32: Mediation in Europe, an alternative to Court for the resolution of IP disputes

In depth country analysis: Italy

• Legal assistance in mediation and attorneys’ duty to inform clients

• Mandatory legal assistance in mandatory mediation

• Duty to inform clients about the option of ADR (including mediation) for the resolution of the disputes and specify tax benefits as well as possible sanctions

Page 33: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Case studiesCase 1 – Domestic dispute

• Parties: Italian companies• Conflict: trade name and portfolio of

trademarks versus use of confusingly similar trademark

• Before mediation: cease and desist letter without result

• Outcome of the mediation procedure: recognition of the originality of the distinctive signs (trade name + TMs) and commitment to cease infringing activities

• Duration: 5 weeks

Page 34: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Case studiesCase 2 – Cross-border dispute

• Parties: UK company - Italian distibutor• Conflict: trade name and portfolio of trademarks and

domain names versus use of identical domain name under ccTLD .it

• Before mediation: cease and desist letter and 2 years of negotiation through solicitors without result

• Outcome of the mediation procedure: recognition of the originality of the distinctive signs (trade name, TMs, domain names) and commitment to transfer the domain name and cease infringing activities

• Duration: 2 weeks• Advantages: business relationship between parties

maintained, agreement enforceable in EU

Page 35: Mediation in Europe, an alternative to Court for the resolution of IP disputes

Pierfrancesco C. FASANO

FASANO – AVVOCATI

Piazza Bottini, 1 – 20133 Milano – Italy

T: +39 0245506621 – F: +39 0240708747

[email protected] - www.fasano.pro