A framework for collaboration between the Patent Office of the Republic of Poland (PPO) and the World Intellectual Property Organization (WIPO) has been established upon the signing of a Memorandum of Understanding (MOU) on April 25, 2018. Under the MOU, the PPO and the WIPO Arbitration and Mediation Center (WIPO Center) established a joint dispute resolution procedure to facilitate the mediation of trademark opposition disputes pending before PPO.
The WIPO Mediation option approved by PPO may be especially advantageous for parties seeking to settle trademark opposition related disputes in multiple jurisdictions.
According to article 15219 par. 1 of Industrial Property Law once an opposition to a trademark application is filed, PPO notifies the applicant of the trademark and informs both parties of the possibility of an amicable settlement of the dispute within two months of the date of notification by PPO. Where the date of that notification is different for each of the parties, the two-month period will start at the date of the notification to the party that received it at a later date. The two-month period may be extended up to a total of six months upon the joint request of the parties (article 15219 par. 2).
According to art. 1526a par. 3 of Industrial Property Law the art. 15219 shall apply accordingly to the proceedings relating to the opposition against the designation of the Republic of Poland for the extension of the protection for an international trademark.
During this period, parties trying to reach an amicable settlement may submit a Request for Mediation to the WIPO Arbitration and Mediation Center. The party that wishes to commence a mediation shall submit a Request for Mediation to the Center and its copy to the other party. The WIPO Center will provide parties with the information on next steps of the procedure, fees and, if requested so by the parties, will provide a list of potential mediators. Throughout the procedure, the WIPO Center will liaise with parties and mediator to ensure optimal procedural efficiency.
Before the expiration of the time limit for amicable settlement, the parties inform the PPO of its outcome. In case of settlement, the parties can request the PPO to terminate trademark opposition proceedings. The parties benefit from the reimbursement of 50 % of PPO trademark opposition fee where the settlement has been reached with the two-month (or six-month, accordingly) period for amicable settlement. If the parties fail to reach settlement during the six-months period but they want to continue with the mediations, the opposition procedure before the PPO has to be suspended upon joint request of the parties.
Parties to PPO trademark opposition proceedings (trademark applicants and opponents).
The WIPO Center will then contact the parties regarding the next steps of the procedure, the fees and the appointment of the mediator. The parties are free to identify themselves a suitable candidate for such appointment. The WIPO Center is available to assist with the provision of a shortlist of qualified mediator candidates. In its role as administering institution, the WIPO Center maintains strict neutrality and independence.
Effective proceedings to a large extent depend on the quality of the mediator. The WIPO Center maintains an open-ended Panel, including mediators from Poland with expertise in intellectual property rights, such as trademarks, patents and copyright. They can be appointed in WIPO mediations by parties to intellectual property disputes pending before the PPO but parties are also free to select mediators from outside the WIPO/PPO Panel.
Mediation can only be undertaken with the agreement of both parties. In order to facilitate such agreement, parties use the draft Request for WIPO Mediation in PPO trademark opposition proceedings so that their dispute is dealt with through WIPO Mediation. In the Request, parties can adapt the process to their needs by agreeing for example on the scope of the dispute, the time set aside for the mediation, and the language to be used in the mediation (such matters can also be agreed after the appointment of the mediator).
The WIPO Center believes that mediation should be cost effective. In consultation with parties and mediators, the WIPO Center ensures that fees charged in a WIPO Mediation in PPO Proceedings are appropriate in light of the circumstances of the disputes. Unless the parties agree otherwise, the administration fee, the fees of the mediator and all other expenses of the mediation, shall be borne in equal shares by the parties.
|WIPO Center’s Administration Fee||Mediator’s Fee|
|€ 50 per party||€ 100 per party (includes 4 hours of preparation and mediation)
Additional hours: € 50 per hour per party
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