EFFECTIVE APPEAL PROCEEDINGS Théophile Margellos President of the Boards of Appeal Sven Stürmann Chairperson of the 2nd Boards of Appeal Bucharest, 6 March 2018

Long lasting appeal cases before the Boards. INTRODUCTION Drastic evolution: 1999 -> 881 appeals were filed and 246 decisions taken; 2016 -> 2 446 appeals were filed and 2 884 decisions taken by 18 members. Boards’ mission: to set the practice for EUIPO’s first instance and serve as a reference point beyond the Office (nearly 90% of appeals are finally resolved by the Boards). Maintaining a first-rate track record: over 93% of ex parte cases and 77% of inter partes Board decisions are confirmed by the General Court. Long lasting appeal cases before the Boards.

Peek & Cloppenburg: 14 years INTRODUCTION BABY-DRY: 21 years Trade mark filed in 1996 , case still pending at the Boards FREIXENET: 16 years Trade mark filed in 1996 and registered in 2012 ARCOL/CAPOL: 14 years Trade mark filed in 1996 and registered in 2010 Peek & Cloppenburg: 14 years Trade marks filed in 2000, last judgment in 2014 BasmaLi/BASMATI: 13 years Trade mark filed in 2003, application withdrawn in 2016

ALPHAREN/ALPHA D3: 10 years First decision on opposition in 2007, final judgment of GC in 2017 Sitting figure : 9 years RCD registered in 2005, appeal before GC withdrawn in 2014 Loudspeaker : 8 years 3D mark filed in 2003, final appeal dismissed and trade mark rejected by GC in 2011

EDR Project

Rapid resolution: ‘Justice delayed is justice denied’. EDR PROJECT Empower the parties: Options are offered under the guidance of the decision-taker in the resolution of the dispute. Global solutions: try to offer a solution for parallel disputes involving the same parties. Rapid resolution: ‘Justice delayed is justice denied’.

ACTIVE CASE MANAGEMENT SYSTEM Rapporteur analysis: rapporteur decides on the most effective dispute resolution mechanism and guides the parties accordingly. Combat undue cost and delay: judicious use of resources. Procedural intervention: Rapporteurs have an active role in the speedy resolution of issues involving the scope and timetable of the procedure. Demand better indexation of documentation; grant minimum deadlines and one round of pleadings per party.

EDR Options

Single Member decisions Full panel decisions EDR OPTIONS Single Member decisions Full panel decisions Expedited appeal proceedings Grand Board decisions

Conciliation

Rapporteur encourages parties to put an end to the dispute; CONCILIATION (Presidium Decision No 2014-2 31/01/2014) Rapporteur encourages parties to put an end to the dispute; Submits proposals for a friendly settlement of the case; Calls parties individually or via a conference call and/or e-mail; Rapporteur must remain impartial and give equal treatment; Rapporteur refrains from expressing any opinion on the outcome of the case;

Mediation

European Code of conduct for Mediators (2 July 2004) Legal framework Directive on mediation 2008/52/EC of 21 May 2008, on certain aspects of mediation in civil and commercial matters European Code of conduct for Mediators (2 July 2004)

Reach an agreement on the settlement of the dispute Scope and characteristics of the mediation Structured Process Scope of the Mediation Reach an agreement on the settlement of the dispute Not a judicial or extra-judicial decision

Mediation can provide: A low risk cost-effective and Scope and characteristics of the mediation Mediation advantages Mediation can provide: A low risk cost-effective and quick extrajudicial resolution of disputes in TM and Design issues (and generally in civil and commercial matters) through processes tailored to the needs of the parties. Agreements resulting from mediation are more likely to be complied with voluntarily and are more likely to preserve an amicable and sustainable relationship between the parties. These benefits become even more pronounced in situations displaying cross-border elements.

Voluntary participation Party autonomy Characteristics of the mediation Structured process Voluntary participation Party autonomy Assisted by a third neutral (impartial) person called mediator Agreement focused resolution process Alternative to judicial proceedings 16

Nobody can be forced to participate in a mediation. Scope and characteristics of the mediation Voluntary participation Not compulsory Nobody can be forced to participate in a mediation. Any of the parties may withdraw from the mediation at any time (including the mediator). We can only offer mediation by showing and explaining mediation to the parties. It is then up to the parties to decide whether they start a formal mediation process or not. Later on I will give you more details about how to offer mediation. 17

Confidentiality of the parties and the mediator Characteristics of the process Confidentiality of the parties and the mediator Attendance of all parties Flexibility 18

IP disputes suitable for mediation

Trade mark oppositions on relative grounds. IP disputes suitable for mediation Trade mark oppositions on relative grounds. Trade mark invalidation on relative grounds. Disputes over trade mark / designs ownership. Disputes about the licensing of IP rights. Disputes concerning the infringement of IP rights. Particularly where the marks are not identical but similar and there are similar goods (except non use). Where such a dispute is pending in various countries with the same parties, then conflicting decisions in different countries may arise. Mediation can be helpful in these circumstances to find a global solution which applies to all countries. Art 8 (3) CTMR => CTM filed by an agent Regarding infringement, please note that deliberate and bad faith infringement and counterfeiting are unlikely to be suitable for mediation. 20

Directive 2008/52/EC of 21 May 2008 (Recital No 10) IP disputes not suitable for mediation Mediation should not apply to rights and obligations on which the parties are not free to decide themselves under the relevant applicable law.

Where trade mark disputes concern the distinctiveness of the mark. IP disputes not suitable for mediation Where trade mark disputes concern the distinctiveness of the mark. Where the disputes are ex parte in general. Where invalidation proceedings address absolute grounds. Non use: Mediation may not be a viable option: Public interest requires not having unused trade marks on the register. Mediation serves individual interests not public interest. When settling an intellectual property dispute by mediation, it is necessary to consider whether either party’s conduct falls within the appropriate criminal provisions of the relevant statutes. It is this broad scope which may affect some IP mediations because many of the ordinary civil infringements are also criminal offences. Where the disputes are over requests for extensions of time. 22

Mediation checklist Identical or similar proceedings in other countries (national/EU/worldwide). Conflicts between the same parties but with regard to other IP rights: patents, designs, copyright, domain names, etc. Longstanding relations between the parties: licensee – licensor; agent/representative – trade mark owner, manager – company owner, family relations, etc. Parties have already negotiated but without success. Each party has strong and weak legal points. Parties are doing business in distinct areas.