A convincing case

22nd Feb 2022

For Cherrie Stewart, a recent mock mediation webinar moved the needle.

For me, considering mediation raises many questions, such as: If you have a strong case, why mediate? Is an offer of mediation an admission of weakness to the other party? Does mediation sometimes lead to high emotions and angry confrontation between the parties, with little being resolved?

So, when I heard that CITMA was holding a live mock mediation in November 2021, I saw it as an opportunity to deepen my knowledge of this subject and dispel any misconceptions I may have held.

Case recap

The mediation event was based upon a fictional scenario previously used in a mock case management conference and hearing staged by CITMA in September 2020 (a report of which appeared in CITMA Review, Issue 462).

To briefly summarise this fictitious case, Busy Ltd – the owner of a small café – had traded for 15 years and had secured a registration for its trade mark BUSY in respect of “cafés”.

It had polled regular customers regarding the proposed use of the name BUSY BAKER relating to the supply of homemade cakes and sandwiches.

Upon checking the UK trade mark register, it discovered that one Andrew Baker had recently filed a trade mark application for BUSY BAKER covering “cakes; chocolates; chocolate sculptures” in class 30 and “mail order services relating to cakes, chocolates and chocolate sculptures” in class 35.

Busy Ltd duly filed an opposition on s5(2)(b) grounds. Having discovered that Mr Baker was a regular visitor to Busy Ltd’s café and had responded to the poll carried out by Busy Ltd, a request for the insertion of s3(6) grounds was made and accepted.

While the s5(2)(b) grounds were dismissed, the s3(6) grounds were upheld and the registration was refused.

On the understanding that the Hearing Officer did not believe there to be a likelihood of confusion, Mr Baker created a website and started selling cakes under the mark “Busy Baker”.

He also took out some advertisements that defamed Busy Ltd. Busy Ltd sent a Letter of Claim to Mr Baker alleging infringement under s10(2)(b) and s10(3).

In response, Mr Baker threatened a counter-claim for a declaration of invalidity against Busy Ltd’s trade mark registration for the mark BUSY on the grounds that it lacked distinctive character.

The letter sent by Busy Ltd, being compliant with the Pre-Action Conduct and Protocols of the Civil Procedure Rules, suggested that the parties go through the process of mediation.

Safe space

During the live mock mediation webinar, we were shown a truncated version of a facilitated mediation.

It was explained that mediation was a safe space in which the parties were invited to explore common ground in a confidential, non-binding and without-prejudice forum facilitated by a neutral mediator who would have a wider perspective and who could ask questions, challenge assumptions and ultimately assist the parties in identifying their needs and achieving a mutually beneficial agreement.

Opening statements from the parties themselves were made, setting out the situation from their own perspective.

The parties were then placed into private rooms, with the mediator moving between each party to discuss proposals and counter proposals, gleaning information from each party but only sharing that which she had express consent to, and discussing potential reciprocal arrangements.

The session concluded with all parties being present in the same space once more. An agreement for further, more detailed discussion to take place in the following week was reached in principle.

Wider scope

It was fascinating to see that mediation involves much more than just the legal aspects of the case. Wider commercial aspects were brought into play, including the potential consequences of legal actions on the parties’ businesses and finances, as well as on mental and physical health.

While Busy Ltd potentially had the stronger case, it admitted to the mediator that it did not have the financial resources to take action.

Therefore, for Busy Ltd, reaching an agreement was a necessity. Planned changes to its business also had an impact upon its ability to compromise and dictated where it had to stand firm.

Mr Baker, while being aware that he possibly had greater financial resources but a weaker legal position, needed to fully secure the mark BUSY BAKER to enable him to enter a lucrative contract.

His commercial needs had a major role to play in his decision-making and willingness to compromise.

With both parties of a mindset to achieve agreement, the mediator worked to explore common ground and attempted to bridge the gap between the expectations and needs of each party, thus enabling progress to be made and creating the foundations for a mutually beneficial agreement.

This left details to be worked out between the parties in the weeks following mediation, but these were much wider in scope than may have been suggested by the legal issues.

Attorney role

The role of the trade mark attorneys present was interesting.

The mediator tended to address the parties themselves, but their trade mark attorneys were present to provide legal guidance or context in relation to any individual point or the bigger picture, and to suggest discretion or additional points which their client may otherwise have overlooked.

The bulk of the discussion was, however, carried out by the parties themselves and not their representatives.

At the end of the session, June Ralph, an Assistant Inter Partes Hearing Officer at the UK IPO who acted as mediator for the scenario, did admit that the parties in this fictitious case were “much franker” than is usual.

Even so, it is easy to see how mediation can draw additional information to the fore which may otherwise be overlooked but which could make a significant difference to the direction and outcome of a case.

As the session drew to a close, not only was there an end in sight for the litigation, reducing the stress and financial burdens on the parties, but each of the parties also had the potential to gain something that would significantly aid its business.

I was left to draw the conclusion that the option of mediation should not be dependent upon the strength of a case. Instead, it can be a useful tool in any trade mark attorney’s repertoire.

It is certainly an option I shall more readily take into consideration going forward.

Read the full edition