The EUIPO’s recent expansion of its Mediation Services represents a significant shift in how EU trademark disputes can be resolved. Instead of relying solely on adversarial proceedings, parties now have access to a confidential, flexible and business-oriented alternative that allows them to pause formal deadlines, negotiate without pressure and work toward tailored, mutually beneficial agreements.
Trademark oppositions before the European Union Intellectual Property Office (EUIPO) are a frequent occurrence, affecting approximately one in every five EU trademark applications. Traditionally, these disputes are resolved through adversarial proceedings, often resulting in win-lose decisions and potential appeals.
However, in June 2024 the EUIPO expanded its mediation services to cover all first and second instance opposition and cancellation proceedings. This marks a significant shift in how intellectual property disputes can be addressed, offering parties a confidential and flexible alternative to litigation.
In practice, this means that, in an EU trademark opposition or cancellation case, both parties may jointly request the suspension of the formal proceedings and engage in mediation under the auspices of the EUIPO’s mediation centre.
While there has been some hesitation in adopting mediation in trademark opposition cases—mainly due to concerns about additional costs due to the time required for preparation and sessions, as well as the fact that parties to a regular opposition procedure often already engage in informal negotiations—, the EUIPO’s efforts to promote its pool of 50 qualified mediators and the benefits of its structured mediation process have led to a growing number of disputes being resolved through this route.
One of the key advantages of mediation is that all procedural deadlines are automatically suspended while the process is ongoing, allowing parties to negotiate without time pressure. Moreover, mediation is entirely voluntary: parties may withdraw at any stage and resume the formal proceedings as if mediation had never occurred. All discussions held during mediation remain strictly confidential.
Perhaps the greatest benefit of mediation is the opportunity for parties to meet directly and explore business-oriented solutions, rather than relying solely on legal or technical arguments. Mediation is particularly well-suited for complex disputes or those involving unique circumstances, where the companies themselves are best positioned to define the terms under which their businesses can coexist—or even collaborate.
Unlike formal opposition decisions, which apply a one-size-fits-all approach, mediation allows for tailored outcomes that reflect the mutual interests of the parties. This means that the resolution is not imposed by a third party but negotiated and agreed upon by those directly involved.
Mediation is also highly effective in resolving multi-jurisdictional conflicts. In such cases, each party may hold prior rights in different territories, and mediation can help avoid lengthy and costly litigation across multiple jurisdictions. Additionally, if winning an opposition would result in a hollow victory due to enforcement challenges—such as the losing party having no assets in the EU or enforcement needing to occur abroad—mediation may offer a more practical and enforceable solution.
Importantly, while EUIPO mediators do not issue binding decisions, any settlement reached and signed during mediation is legally enforceable between the parties. In contrast, an opposition decision may resolve the registration issue but leave the underlying conflict unresolved, potentially leading to appeals and further litigation.
As more parties explore this route, mediation may well become the preferred method for resolving specific types of complex trademark disputes in the EU. It should be considered a powerful strategic tool when advising clients on how best to protect or enforce their trademark portfolios.
