10. Questions on Appeal and Mediation

A notice of appeal must be filed in writing at the OHIM within two months after the date of notification of the decision appealed from. Within the same time limit, the appeal fee (800 €) has to be paid as otherwise the appeal is deemed not filed. These time limits may not be extended. The notice of appeal shall be filed in the language of the proceedings in which the decision was taken. If the language in which the decision was taken is not the language of the proceedings, the notice of appeal may be filed either in the language of the proceedings or in the language in which the decision was taken. The notice of appeal must contain:

the name and address of the appellant;
where the appellant has appointed a representative, the name and the address of the representative;
a statement identifying the decision which is contested and the extent to which amendment or cancellation of the decision is requested;
details of how the appeal fee is to be paid;
the signature of the applicant or his/her/its representative.

If the notice of appeal does not contain the grounds on which the appeal is based, a statement of grounds must be lodged within 4 months of the notification of the disputed decision. This time limit may not be extended.

The statement of grounds for appeal shall be a succinct but full statement of the appellant's arguments in the appeal. Since, in practice, appeal proceedings are primarily a written procedure, arguments should always be fully developed in writing and not be reserved for possible oral hearings.

10.A.2 Is it compulsory to use the form supplied by the Office to file a notice of appeal?

No, it is not compulsory to use the form. A notice of appeal may be filed by merely submitting a letter, provided that it is filed within the time limit of two months from the date of notification of the contested decision and that it contains the essential elements required for the valid filing of a notice of appeal.

These essential elements are defined in Question 10.1.

10.A.3. Can the deadlines specified for filing a notice of appeal and the written statement setting out the grounds of appeal be extended?

No, these deadlines are laid down by the CTMR and the Boards of Appeal are not competent to extend them. If an appellant is unable to observe one of these deadlines, the only option open to him/her/it is to submit an application for the re-establishment of rights (known as an application for restitutio in integrum ), provided that the requirements for submitting such an application are fulfilled. That is to say, the person concerned must prove that all due care required by the circumstances was taken in order to observe the deadlines, the application for restitutio must be filed within two months of the removal of the cause of non-compliance with the time limit, the omitted act must be completed within this period and the corresponding 200 € fee must be paid.

10.A.4. Can evidence still be submitted after the deadline of four months laid down for the filing of the written statement setting out the grounds of appeal?

The CTMR establishes that the grounds of appeal, that is to say, the arguments of fact and law providing the basis for correcting the contested decision, should be filed within the deadline of four months from the notification of the contested decision. Nevertheless, the Boards may take into consideration evidence or facts which are not submitted in due time by the parties concerned.

10.A.5. Does the examination of appeals by the Boards of Appeal involve oral proceedings?

The Boards of Appeal are not obliged to grant a request by parties to set up a hearing. While they are competent to set up oral proceedings, they only do so if they consider it useful. On the whole, proceedings before the Boards of Appeal take place in writing.

10.A.6. Can I file any observations on communications from the other party to the appeal proceedings?

The defendant may submit observations regarding the appellant's statement of grounds within a time limit established by the Registry of the Boards of Appeal (observations in response). This time limit is usually two months from the notification of the statement of grounds.

If the defendant sends a response, the appellant may file a reply within two months of the notification of the response.

If the appellant files a reply, the defendant may submit a rejoinder within two months of the notification of the reply

10.A.7. May any of the parties ask for an extension of time limits?

For information regarding the deadline for filing the notice of appeal and the statement of grounds, please see Question 10.3.

The time limit for filing observations in response may be extended upon request submitted by the defendant before the original period has expired. The Board may grant an extension.

However, the time limits for submitting the appellant's reply or the defendant's rejoinder are not extendable. If one of the parties is unable to observe one of these deadlines, the only option is to submit an application for restitutio (for information regarding applications for restitutio please see Question 10.3).

10.A.8. Can the defendant request the amendment or annulment of the appealed decision on a point not raised in the appeal?

The defendant may seek a decision annulling or altering the contested decision on a point not raised in the appeal, provided such a request is based on his or her observations in response to the appellant's statement of grounds

10.A.9. May I ask for an appeal to be referred to the Grand Board or devolved to a single member?

The decision to refer a case to the Grand Board is made either by the Presidium of the Boards or by the Board to which the case was originally allocated.

The decision to devolve a case to a single member is taken by the Board dealing with the case.

The possibility for the parties to request a referral or devolution of a case is not envisaged.

10.A.10. Where can I consult the decisions taken by the Boards of Appeal?

All decisions are made available as soon as they are taken and in the original language version on the Office's Internet site. Furthermore, selected decisions have been published in the five languages of the Office in the Official Journal of the Office from 1998 to 2003.

10.A.11. Are there any guidelines on appeal?

According to the new Rules of procedure of the Boards of Appeal, which entered into force on 27 December 2004 , the Presidium of the Boards of Appeal is competent to lay down practical instructions of a procedural nature for parties involved in proceedings before the Boards. Please see Decisions concerning instructions given by the Presidium

10.B.1. Questions on Mediation

10.B.1 What is mediation? How does it differ from arbitration?

Mediation is a conciliation process between parties to a dispute. The mediator acts as a neutral intermediary between the parties and facilitates a settlement between them. He has no power to decide the case if the mediation has failed. The parties retain control over the way the procedure is handled and its outcome. The parties cannot be obliged to mediate but must voluntarily agree to do so. They can withdraw from the mediation at any time. Similarly, no settlement agreement may be imposed on the parties but must voluntarily be agreed between them. The mediation is a confidential procedure.

Arbitration is a procedure in which law is applied by an arbitrator to determine a dispute between the parties. Adjudication is made by the arbitrator as a decision-maker. It is a rights-based procedure, unlike mediation which is an interest-based procedure. Whereas arbitration only considers and applies the law, mediation considers the wider interests of the parties (in particular, business interests).

10.B.2 When can I mediate?

Mediation before OHIM is currently only available at the appeal stage in proceedings between two or more parties. Within two months of the notification of the contested decision, the loosing party must file a notice of appeal and pay the appeal fee in order to obtain the suspensive effect of the appeal. Only if the appellant submits a statement of grounds within four month of the notification of the contested decision, the appeal is admissible. Neither period to file the appeal, to pay the appeal fee or to file the statement of grounds can be extended or suspended. Both parties must sign the request for mediation, or otherwise show that the consent of the other party has been obtained (see further para. 4.1, 4.2 and 5.1 Mediation Instructions to the Parties). The appeal proceedings will then be suspended pending the mediation.

10.B.3 What kinds of subject-matter can I mediate before OHIM?

There must first be a decision on Community trade mark or design matters in inter partes proceedings taken at OHIM. That decision must then be appealed before mediation can commence. The subject-matter of the mediation may, however, go beyond the scope of OHIM appeal proceedings and embrace future and present commercial and economic interests of the parties. There are many possibilities but it may be, for example, that the two parties with conflicting rights operate in completely different markets. They could agree to keep it that way. The key to successful mediation is to change the focus from legal arguments to business interests. Mediation in ex parte (i.e. where the other party to a contested decision is OHIM itself) cases is not possible

10.B.4 How much does it cost?

There is no fee charged by OHIM for mediation, provided the mediation is held at OHIM’s premises in Alicante. A fee of EUR 750 is payable where the mediation is held at OHIM’s Brussels premises, to cover the travel, lodging and subsistence expenses of the mediators.

10.B.5 Why mediate?

The Boards of Appeal deal with around 2,500 cases per year. These cases take on average one and a half years to resolve and some may also lead to further appeal. This can be an expensive and time-consuming process. Yet in many of the cases, while there are genuine legal conflicts, there is a possibility of reaching an agreement in which the business interests of both parties can be preserved. Mediation provides a swift and less costly alternative to litigation but uses the skills of mediators that are well versed in IP matters. It is also a guarantee of confidentiality as regards the existence of the dispute, since the dispute is taken out of the public eye. It traditionally has a high rate of success.

10.B.6 What about mediation in opposition or cancellation decisions?

At present, there will only be mediation for appeals. However, this could change in the future depending on the success of this service.

10.B.7 Will mediation be provided by OHIM staff? Are they trained mediators?

There is a team of eight qualified mediators drawn from various parts of the Office, not just the Boards of Appeal. They are all very experienced staff of the Office who underwent special training with the Chartered Institute of Arbitrators (CIARB) in London and have different language profiles.

10.B.8 What language will mediation be held in?

In principle, mediation proceedings will be held in the language of the appeal proceedings. However, the parties are free to agree a mutually convenient language (subject to a mediator being available with mastery of that language).

10.B.9 How will mediators be allocated to cases?

There is a full list of mediators on the website, together with their CVs so that the parties can ask for a particular person if they wish. The parties may be assisted in their choice of a mediator by the Registry of the Boards of Appeal. The parties may prefer someone with a certain background and experience or the ability to carry out the mediation in a specific language. It is important to understand that mediation is a voluntary process and the mediator’s role is not to sit in judgment or make decisions, but to facilitate the two parties in reaching their own settlement. If the case is particularly complex, or if the mediator judges it to be necessary, the appointed mediator may seek the assistance of another mediator or member of OHIM’s staff. If that happens, the mediator will first seek the authorization of the parties. It is also possible for the parties themselves to appoint co-mediators where the complex nature or other circumstances of the case warrant it.

10.B.10 How long will mediation take?

In principle, mediation is expected to settle in one day, perhaps after one preliminary meeting. If no outcome has been achieved by then it can be very difficult to reach a settlement, although particularly complex cases may need more time.

10.B.11 Who should take part in mediation? Is it binding?

It is important that the principals take part as this is not about pure legal issues, but about business interests. Since mediation is a voluntary process, either party can withdraw from it at any time. Of course, if the mediation results in a settlement agreement between the parties, that will have to be drawn up by their lawyers in the normal way. Therefore, having professional representatives to assist the principals can be useful, particularly when it comes to legal drafting.

10.B.12 What will happen in a typical mediation?

Since mediation is a fairly flexible process, it is hard to be dogmatic about the precise format it will take. Nevertheless, most mediations would involve initial contact between the parties and the mediator in which a timetable was discussed as well as the location of the mediation and the need for any prior exchange of documents. The parties would then sign an agreement on mediation and send it to the mediator as soon as possible. In most cases, the mediation would be held at OHIM’s Alicante premises and the parties would either come alone or together with their legal representatives. The mediation will normally last one day and will involve an alternation of joint sessions (i.e. in which the mediator and parties are both present in the room) and individual sessions (i.e. where the mediator meets with each of the parties separately and privately). The idea of the joint session is to try to draw up a list of issues to be solved whereas the individual sessions explore further those issues and possible solutions or compromises. Everything disclosed to the mediator in the individual sessions is private and may not be disclosed to the other party without prior, express authorization. Proceedings will usually be closed by further joint sessions and the drafting of a settlement agreement. The case will go back to the Board of Appeal to which it was originally assigned, for a formal decision, noting the closure of the appeal proceedings.

10.B.13 Can we mediate elsewhere other than Alicante?

OHIM encourages parties and their professional representatives to come to Alicante. However, you can also hold mediation proceedings in the OHIM’s premises in Brussels subject to the payment of a fee of EUR 750.

10.B.14 What happens if the mediation fails?

Parties are free to withdraw from the mediation process at any time and cannot be forced to reach a settlement agreement. However, parties must intend to make their best endeavours to reach an agreement. Where a party withdraws, the mediation will immediately terminate. The mediator may also terminate the mediation where a stalemate or impasse has been reached. In these cases, the appeal proceedings will resume from the point reached prior to the mediation. The mediator will never be involved in the appeal proceedings and is bound to keep the substance of the mediation confidential. No record or files pertaining to the mediation will be retained by OHIM.

10.B.15 Don’t lawyers already “mediate” all the time?

This is so in many cases and if the parties can reach agreement on their own they do not need a mediator. Experience shows, however, that rights owners show more willingness to settle amicably when they are brought together to focus on the sticking points to any agreement based on their real business interests. In many appeals it seems that this takes place too late in the process.

OHIM

Trade Marks

10. Questions on Appeal and Mediation