Event Information

This seminar will consider the fundamentals behind arbitration and mediation in the trade marks context.

The morning session will focus on trade mark arbitration, although in practice still quite rare. The sessions will share experiences with arbitrated trade mark disputes. Delegates will hear the perspectives of an experienced arbitrator, a party representative and the Director of the WIPO Arbitration and Mediation Center.

The afternoon session will consider the fundamentals behind mediation of trade mark disputes and when it might be appropriate. Delegates will hear the perspective of both a mediator as well as that of a lawyer representing a client at mediation and how a lawyer can help. How to mediate trade mark disputes in the US will be discussed and a speaker from OHIM will present about using their mediation service.
Register HERE.
Schedule
9.45 hrs Reception and registration of participants
10.15 hrs Welcome
Gregor Versondert – Procter & Gamble International Operations S.A., Switzerland
Vice-Chair of the MARQUES Council
Introduction
Tobias Cohen Jehoram – De Brauw Blackstone Westbroek, The Netherlands
Chair of the MARQUES Dispute Resolution Team
10.30 hrs ARBITRATION
Chair
Markus Frick, Walder Wyss Ltd., Switzerland
Member of the MARQUES Dispute Resolution Team
Part 1:
Fundamentals of arbitration and trade mark disputes
Speaker
Thomas Legler, Pestalozzi, Switzerland
• to what extent are trade marks subject to arbitration
• which countries allow trade mark cancellations erga omnes by arbitral tribunals (US, Switzerland, Belgium, etc.)
• drafting arbitration clauses in trade mark license and co-existence agreements; which rules are best suited for trade mark disputes
• selecting an arbitrator
• what to expect from arbitration
11.05 hrs Part 2:
Practical report on WIPO trademark/IP arbitrations

Speaker
Leandro Toscano, WIPO Arbitration and Mediation Center, Switzerland
• report on WIPO trade mark related arbitrations
• brief overview of WIPO arbitration rules
• costs of arbitration proceedings
• which arbitration places and laws are most often involved in trademark related arbitrations?
11.45 hrs Coffee break

12.00 hrs Part 3:
The legal representative’s perspective

Speaker
Alastair McCulloch, Jones Day, United Kingdom
• war stories, how was the arbitration process
• pros and cons of arbitration vs. state court litigation
• interplay between arbitration and state court litigation, preliminary injunctions
• costs and durations
12.35 hrs Short round table discussion moderated by Markus Frick

Speakers
Thomas Legler, Pestalozzi, Switzerland
Leandro Toscano, WIPO Arbitration and Mediation Center, Switzerland
Alastair McCulloch, Jones Day, United Kingdom
13.00 hrs Lunch

14.00 hrs MEDIATION

Chair
Jeremy Blum, Bristows LLP, United Kingdom
Member of the MARQUES Dispute Resolution Team
Part 4:
The legal representative’s perspective

Speaker
Anna Carboni, Redd Solicitors, United Kingdom
• what is a mediation and an outline of the process
• assessing if mediation is in the interest of the client- the types of trade mark disputes which are suitable
• selecting the mediator
• conducting a mediation
• win/win or walk away: is compromise the only way to mediate
14.35 hrs Part 5:
The mediator’s perspective

Speaker
Michael Silverleaf QC, Barrister, 11 South Square, United Kingdom
• role of the mediator
• what is the mediator trying to achieve and how he goes about that
• structure of the mediation and timings
• the mediator’s view of the role of the lawyers in this process, what are the do’s and don’ts
15.10 hrs Tea break

15.30 hrs Part 6:
Mediating trade marks in the USA

Speaker
Chris Woods, Kilpatrick Townsend & Stockton LLP, USA
• the mediation process in the US
• assessing if mediation is in the interest of the client – the types of trade mark disputes which are suitable
• selecting the mediator
• conducting a US mediation
• recent developments
16.15 hrs Part 7:
Mediating at EUIPO

Speaker
EUIPO speaker (TBC)
• summary of the EUIPO process and when it is applicable
• guidelines for parties
• EUIPO’s approach at the mediation
16.45 hrs Short round table discussion moderated by Jeremy Blum

Speakers
Anna Carboni, Redd Solicitors, United Kingdom
Michael Silverleaf QC, Barrister, United Kingdom
Chris Woods, Kilpatrick Townsend & Stockton LLP, USA
EUIPO speaker (TBC)
17.15 hrs Summary and closing