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MEDIATING DISPUTES INVOLVING SMES

MEDIATING DISPUTES INVOLVING SMES. Pierfrancesco C. Fasano Mediation Case Manager. EUIPO – IP Mediation Conference Alicante, 30 th May 2019. About us. Milan-based international Dispute Resolution Center with focus on IP disputes 20 years of track record Accreditations :

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MEDIATING DISPUTES INVOLVING SMES

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  1. MEDIATING DISPUTES INVOLVING SMES Pierfrancesco C. Fasano Mediation Case Manager EUIPO – IP Mediation Conference Alicante, 30th May 2019

  2. Aboutus • Milan-based internationalDispute Resolution Center with focus on IP disputes • 20 years of track record • Accreditations: • 2001 – “.it” Domain Name Dispute Resolution Service Provider – accredited by Registry “.it” (CNR IIT – National Council of Researches – IT Institute) • 2012 – IP Mediation Center – authorized by the Italian Ministry of Justice • 2013 – IP Mediation Academy – authorized by the Italian Ministry of Justice • 2015 – Uniform Rapid Suspension System (URS) Domain Dispute Resolution Service Provider – approved by ICANN

  3. ADR Controlled by the parties Consensual Evaluative Controlled by a third party Adversarial Adjudicatory Not-binding Flexible Informal Binding Structured Formal

  4. MediationDefinition Structured process, however named or referred to, whereby two or more parties to a dispute attempt by themselves, on a voluntary basis, to reach an agreement on the settlement of their dispute with the assistance of a mediator (art. 3 EU Directive 2008/52/EC) “Helps willing parties to get to the table”

  5. MediationFavourablecircumstances High court fees, disproportianate to the value of the dispute Necessity of fast and flexiblesolution The complexity of the issues of law, the facts and the relationshipbetween the parties willlikelylead to long litigation Multiple court actionsbetween the parties in differentcountries Uncertainity of the outcome of the court action Commercial relationshipamong the parties and general interest to continue such relations

  6. MediationFavourablecircumstances Necessity of confidentiality Relative grounds for invalidity of an IPr Fear of a decisionthatmight set a legalprecedent Inventions of employees Lack or insufficientevidence to initiate a court action

  7. MediationUnfavourablecircumstances Intentional or badfaithinfringement, piracy A party isunwilling to negotiate or anchored to positions of principle Necessity of urgent interim measure Need to set a legalprecedent Need of publicity Absolute grounds for invalidity of an IPr The subjectmatter of the dispute is the payment of a sum and the debtorisinsolvent

  8. MediationLegal framework EU Directive 2008/52/EC of the EuropeanParliament and of the Council on CertainAspects of Mediation in Civil and Commercial Matters (Mediation Directive) Italian Legislative Decree 28/2010, itssubsequentmodifications by Law Decree 98/2013 RelatedMinisterialdecrees and circulars Rules of Mediation and Code of Conductof mediation centers approved by the Ministry of Justice

  9. Mediation Procedure and outcome 1/2

  10. Mediation Procedure and outcome 2/2

  11. Case study SILK COMPANY vs. WOOL COMPANY

  12. Case studyPosition and request of Silk company Limitation of the list of products of TM the “WIL” to exclude: Cl 24: fabrics in silk or mixed silk or otherwise containing silk Cl 25: ties, scarfs, foulards Cl 25: clothing in silk or otherwise containing silk To avoid likelihood of confusion of the marks or the products

  13. Case studyPosition and proposal of Wool company Likelihood of confusion is remote, because its products are made of wool or may contain a very low percentage of silk Focus of the negotiation on the use of the TMs and not on the registration Not to limit the TMs’ list of products, but agreement of coexistence Undertakes to not to use the TM “WIL”: for ties and foulards for scarfs made of silk for more than 50% or silk-like Silk company undertakes to not to use the TM “SIL” for clothing made of wool for more than 50% or wool-like

  14. Case studyCounter-proposal of Silk company Wool company undertakes: to not to use the TM “WIL” for ties and foulards to not to manufacture and/or sale scarfs with the TM “WIL” made of silk for any percentage or silk-like to not to manufacture and/or sale fabrics or clothing with the TM “WIL” made of silk for more than 30%

  15. Case studyMediationagreement Wool company undertakes: to not to use the TM “WIL” for ties and foulards to not to manufacture and/or sale scarfs with the TM “WIL” made of silk for any percentage or silk-like to not to manufacture and/or sale fabrics or clothing with the TM “WIL” made of silk for more than 30% The agreement is valid Italy and in the EU, also for the licensees, subsidiaries, heirs and related companies and binding (enforceable)

  16. Pierfrancesco C. FASANO MFSD IP Dispute Resolution Center Via Washington, 50 – 20146 Milano – Italy T: +39 0245506622 – F: +39 0291471087 mediation@mfsd.it - www.mfsd.it

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