INTA Roundtable—Resolving IP Disputes Through Mediation in France

The advantages of the mediation process as an institutional procedure and the role of the mediator in this voluntary proceeding was discussed at an INTA roundtable in Paris, France on February 27.

The event featured Rémi Garros-Quinn, a Legal Case Manager at the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center, and Berengère Clady, Case Manager – Head of ADR Department, at the Centre for Mediation and Arbitration of Paris (CMAP). It was hosted by local IP law firm Dreyfus & Associés.

In contrast to arbitration, mediation is a voluntary proceeding in which the parties try with the assistance of a mediator to find an amicable settlement to their dispute. The mediator works as an intermediary and does not settle the litigation.

Speaking broadly about mediation, Mr. Garros-Quinn and Ms. Clady addressed the advantages of the mediation process as an institutional procedure, which guarantees professional guidance and transparency in costs, and provides a clear time frame. They also talked about the creative contribution of the mediator. As the two experts discussed, mediation in intellectual property disputes offers a number of unique advantages by:

• Preserving confidentiality and the relationship between the parties, who may be business partners, licensees, etc.;
• Maintaining control of the dispute settlement process instead of going before a court; and
• Usually offering a swifter settlement over the judiciary process.

Interestingly, mediation can be planned by contract since the parties are working together, and when the case allows it, can be suggested by a judge. The speakers took issue with recent legal developments in France allowing a judge to force the parties to mediate, noting that they believe mediation should remain a voluntary process.

One of the challenges in mediation is the fact that contentious proceedings that may be pending before national trademark offices may not be suspended for a sufficiently long period for mediation to take place.

When one of the two parties requests mediation from CMAP or WIPO, that party will then extend the request to the other party. If the two parties consent, a mediator is designated and the mediation will proceed.

According to the speakers, finding the right mediator can be difficult. Mr. Garros-Quinn explained how-even though WIPO has approximately 2,000 mediators-there are cases in which the parties require specific expertise. He gave the example of a mediator requiring knowledge of European law combined with a capacity to intervene between two parties with different cultural norms, such as between Americans and Japanese parties. Soft skills, such as being authoritarian or diplomatic, are also often required.

In general, both parties are invited to express preferences regarding the experience and expertise of the mediator they wish to intervene, and the institution makes some proposals. The institution will also ensure that there is no conflict of interest on the part of the mediator.

The costs of institutional mediation are easily determined prior to commencement and mostly depend on the amount in dispute.