Intangiblia™
Plain talk about Intellectual Property. Podcast of Intangible Law™
Intangiblia™
David-Irving Tayer - Mediation in Trademarks
Unlock the secrets of successful trademark mediation with insights from our esteemed guest, David Tyer. Discover how mediation in intellectual property disputes, especially those involving trademarks, can be a game-changer for businesses seeking to maintain valuable relationships and achieve innovative solutions. David, a seasoned attorney and certified mediator, shares his expert strategies for overcoming common trademark registration hurdles, such as avoiding conflicts and ensuring distinctiveness. Learn how strategic approaches like conducting meticulous prior rights searches and crafting effective agreements can help businesses confidently navigate the trademark maze.
Explore the world of alternative dispute resolution, where David elaborates on the benefits of mediation. We dive into real-life examples like cross-licensing agreements that showcase mediation's power to foster collaboration without the adversarial atmosphere of a courtroom. These stories highlight how businesses can resolve disputes amicably and leverage each other's strengths for mutual benefit. Through compelling narratives, we demonstrate how mediation can be a therapeutic process, allowing parties to express emotions and reach a deeper understanding, ultimately leading to creative outcomes not possible through litigation.
Finally, we emphasize the vital role of protecting and valuing intellectual property as key business assets. Our discussion covers the importance of maintaining active IP rights across territories and addressing modern challenges posed by digital platforms and technology advancements such as artificial intelligence and the metaverse. David sheds light on the proactive measures businesses can take to safeguard their IP assets, ensuring they remain valuable and relevant in today's rapidly evolving landscape. Join us for an enlightening conversation that equips you with the knowledge to maximize your intellectual property’s potential and navigate disputes with a collaborative spirit.
In some way there won't be one winner and one loser. There would be two winners because both parties will have breached an agreement consensus on their own, if I may say so or at least they would believe that, in the idea that they finally signed an agreement where both of them are very happy with it, and that's an important thing when we're talking about mediation.
Speaker 2:You are listening to Intangiblia, the podcast of intangible law playing talk about intellectual property. Please welcome your host, leticia Caminero.
Leticia Caminero:Taking it all for the win is not necessarily a good business strategy. Having always a winner, having always a loser in all your relationships can be taxing, especially if you want to make long term business relationships, To talk about how to find compromise, how to find middle ground. We discuss with our guests today about mediation. Mediation, an amazing tool that can help you find winners in almost every possible scenario. Let's welcome our guest.
David-Irving Tayer:Yeah, very good morning, leticia. I'm David Tyer, I'm a French citizen and I'm 50-ish. I'm an attorney certified by the French Bar as an IP specialist. Just to make a clear or quick presentation of myself, I studied law in the UK before completing my studies in France with an LLM in European comparative laws and then an LLM in IP law. That's my study background, I could say.
David-Irving Tayer:Then I've done some other things like certification in mediation and arbitration in IEP and IET. I'm also an arbitrator in various domain and arbitration center for some years now. I started as a trademark agent for some years and then became a registered barrister or attorney in France. I'm actually working essentially in IEP and I'm saying essentially, it might actually be totally in IEP ie intellectual property and Internet, telecommunication and stuff like this domain name arbitration and mediation and I've been doing this for about 20 years now. This is why I was talking about the 50-ish. My day-to-day is obtaining and execution of filing and trademarks, patents, domain names, designs and stuff, but also negotiating contract agreements. Also, all that is concern issue that you could have in the digital world, including the metaverse and any other verse we can know about now.
Leticia Caminero:Quite an extensive experience in all IP related matters, and today we're going to talk about especially on mediation in trademarks. But before we do that, I would like to ask a broader question regarding the challenges that business may face during trademark registration, the trademark process, the trademark journey. So how would you identify or which would you say are the most common challenges that businesses face when doing a registration process for a trademark, and how would you recommend navigating those common challenges?
David-Irving Tayer:That's one of the hardest time for the entrepreneur in the process of trademark registration. I'm saying hardest time it is essentially due to the fact that finding a proper trademark or a trademark that is not in conflict with a prior one, it is to determine whether, first, the trademark is not describing the goods or the services that you want to protect, ie the one you are going to sell and what I'm saying. The non-descriptive means that the name or the logo that you are going to sell and what I'm saying the non-descriptive means that the name or the logo that you are using is not describing, in whichever manner, the goods or services you're selling. In other words, I cannot file a trademark chair for selling chairs, which is the common example we can use. But once we have determined the good trademark or the one that talks to me as the entrepreneur and for which I've got a storytelling for it, whether it is an important one or a short one, we have to determine whether there exists any prior rights, ie other trademarks or domain names or commercial names that would be used by someone else and doing exactly the same activity. So the first step we have to do is go for a prior right search In the territory you want to file a trademark. If the trademark is aimed at being used in several countries, it is wise to proceed with that trademark search in all the concerned countries. The point of that is to determine whether you will find other people's trademark that obviously would be filed before yours and that may be an obstacle to proceed with the project. The challenge there is that once you proceed with the prior right search, if we do not find any prior rights, then that's fine. If we do not find any prior rights, then that's fine, you can go on.
David-Irving Tayer:If you find one that may be an obstacle, then we have to determine whether you have a strategy to overcome the prior right. First would be maybe they don't have the exactly same activity, so we will draft the list of goods and services to avoid any conflict. Or, if there is some overlap, let's try, for example, to contact the owner and obtain an agreement with them. The difficulty there is that if you look for an agreement, that means that you are informing the other party that you intend to do something that is considered by yourself as similar. So it might be touchy to do that, because you're informing the person where maybe there won't be any real conflict. After all, Once we overcome the first issue on the prior right search, then we proceed with the filing of the trademark and there may be some objection, in other words refusal from the intellectual property office, in the sense that they may consider that the specification of goods is not sufficiently clear or should be adapted or slightly modified.
David-Irving Tayer:Generally I mean, as we have some kind of experience we normally avoid at the maximum that kind of objection. There used to be some objections raised on the non-distinctiveness of the trademark. The non-distinctiveness is what I was talking about early on is the idea that the trademark describes the goods or the services. It becomes more rarely to have that kind of objection. Well, in my experience, essentially because, as a trademark attorney, we are normally examining whether the trademark would be liable to be a non-distinctive trademark and if this is the case, then we will recommend the clients not to file the trademark. So that's the second step that could be involved in the process of the filing of a trademark.
David-Irving Tayer:The last one is once your trademark is being accepted, it will be published and once published, any third party may file an opposition. In the event he had a trademark that he considers as similar or close to the one you just find. Well, if you've done the prior right search, normally you shouldn't face that issue. Or it is someone that believes that the trademark is very close to his. In that case he may find an opposition, which is an administrative proceedings generally, and we start either counter argue the opposition or and that's one of the approach that I would privilege is the negotiation of an agreement, Because generally what happens is that someone believes you are reproducing his trademark. Okay, fair enough.
David-Irving Tayer:You have to think at what stage there is a real risk of confusion, because that's the main idea you have in trademark matter is is there a possibility that the consumer, when he sees one's mark, believes it's the other one's trademark? If this is the case, then there is a risk of confusion. But that can be either overcome, because there is no actual risk of confusion and we have to demonstrate it, or because the goods and services are sufficiently different to be sure that the consumer would not be the same. If I'm selling, for example, sweets, this is definitely not similar to what can I say easily would be cars, but something that would be eaten, or alcoholic beverages, for example. You do not buy sweets and alcoholic beverages in the same market or in the same place in one market. That's what I could say in the process, but generally it's fairly straightforward.
Leticia Caminero:So the key is selecting the right trademark according to prior research, according to advice, of what is considered distinctive in this type of product or this type of services. So it's choosing right on the first instance in order to minimize any risks.
David-Irving Tayer:Yeah, exactly, that's exactly the point we are looking for is to make sure that, when we are going to do something, the place is sufficiently clean, if not totally clean, to go for it clean, if not totally clean to go for it to avoid any risk that, in the event, would be costly, time consuming and with no interest, because necessarily you would have to, at some stage either change your trademark. So that means that all we are preparing prior to finding a trademark and the explanation of the trademark is exactly to say what I'm investing now is just to make my trademark sufficiently valuable and to carry on and make on my business.
Leticia Caminero:The first thing that we will recommend, then, is take advice from someone who knows, and follow the advice in the process of creating your trademark, because it often happens that the entrepreneur or the person who's trying to do the process of registration has already a trademark in mind, or even is already using this trademark in commerce, before going and trying to file for registration.
Leticia Caminero:So this is one of the things that entrepreneurs and any other person who is navigating this trademark registration needs to keep in mind that it is important to do your research. It's important to do the lead work beforehand in order to avoid unnecessary payments or in order to avoid unnecessary legal risk that may occur. So, with this in mind this legal risk that may happen throughout a trademark being used in commerce, or a registered trademark as well, or any other type of company that may arise from doing business with a trademark or with a specific brand we can shift to the resolution of those type of companies. As you mentioned before about your mediation background, you are an arbitrator and a mediator for IP matters, specifically in the WIPO Arbitration and Mediation Centre. Could you tell us the significance and the difference between having a legal conflict, an IP-related legal conflict, and solving or seeking to solve that conflict before arbitration or mediation, instead of going the natural road which is going to the judicial system, going to the courts.
David-Irving Tayer:Arbitration and mediation are really two different cases. Arbitration is a, I would say, private justice or legal action, in a sense that you do not go to court, you go before an arbitrator in a private place where the both parties will actually litigate the case and the arbitrator will cast the case at the end. This is one side. So it looks like legal action before a tribunal, except that you may bring more evidence more easily and all is covered by secrecy. So all that is being provided in the arbitration will remain totally secret for third parties, which is one of the advantages of arbitration. The second one is the fact that it may be cost effective. Even if arbitration may be, I would say, expensive in the mind of the person that launched it, that launch it, it nevertheless could be more cost effective in some countries where the legal costs are extremely high and also the cost for all the due diligence, for investigation and stuff, which obviously make the cost extremely increased compared to arbitration. But, for example, in Europe the arbitration is not much developed except for domain names. But that's another aspect of the arbitration, just because in most of the countries in the European Union the costs legal costs, I would say are not very expensive. So we will tend to go to a tribunal, with in mind, again, the idea that there won't be more secrecy before the tribunal, before the tribunal, sorry.
David-Irving Tayer:Now if we turn to mediation, mediation is really something that where people will well, as the name is mediate, they will share things and in the case the mediator is not here to cast the case. He is there to make both parties reach an agreement, make both parties reach an agreement. So the approach of the case is more of not saying much, but help the one that is considering that there is, for example, a counterfeit case, explain all his anger, his difficulties with the other one's trademark and stuff. And on the other hand, the other party will also explain his case, not legally speaking but more commercially speaking, and the mediator will make sure, or will attempt to make sure, that both parties, by discussing, by exchanging matters, finally reach an agreement. The advantage of mediation, again, is, well, the cost compared to legal action, but also the fact that in some way there won't be one winner and one loser. There would be two winners because both parties will have breached an agreement consensus on their own, if I may say so, or at least they would believe that, in the idea that they finally signed an agreement where both of them are very happy with it.
David-Irving Tayer:And that's an important thing when we're talking about mediation is that the parties essentially may be competitors, I would say in the real life, and they may want to carry on working together to some extent. For example, you have either, if they're not competitors but one could be a provider of something and the other one is the buyer they like working together for some time and then they start fighting on the subject matter, but they still want to work together and mediation will solve the issue and probably make both companies carry on their business happily. You see, I would say I mean, if I'm exaggerating the case it's like if you're going as a analyst and you accept the mediation with it because you finally found the issue, that are making one angry to the other, and then everything goes peacefully settled and then they carry on their life.
Leticia Caminero:So you would say that mediation is more likely to amend the relationship after the conflict is solved?
David-Irving Tayer:Yeah, exactly, and in most cases where the mediation was successful, either the client or the parties are happy because they feel they did something positive, which is not the case when you go to a legal action not saying that you never have to go to legal action before tribunal or even arbitration, but necessarily there will be one loser of the case and one winner of the case, and both of them would not be sufficiently happy or they would be extremely angry with the situation. Why I'm saying that is that the person that wins considers that he never wins enough and the one that loses consider they lost too much. So obviously the judge is just casting the case on the legal basis you did something wrong, you have a sanction Okay, that's fine. But when you go to mediation, sometimes you have things that could be more innovative in the matter, that a judge cannot decide when he's judging the case.
David-Irving Tayer:I've got one example, without betraying the professional secrecy, but two were not directly competitors, but they were in the same field of activity to some extent one producing and selling objects to make sports and the other one selling clothes for sports. So you see, it's not directly the same consumer, but that might be an overlap. One has trademark rights in one country prior to the other and in another country had prior rights to the other. So there was sort of mix of trademark rights throughout the world. So, technically speaking, if we look at it, company A was blocked in one country and it's company B that is blocked by the company A in another country. So there is a blocking situation all over the place.
David-Irving Tayer:But finally, in the mediation we reached the possibility of making crossed license agreements, so actually both companies can carry on their own activity but also were selling goods of the other, which was the adverse party at the origin and was becoming actually a partner. So you see that something that the case before the judge would never happen because they cannot force party to make that cross-license agreement. But in this mediation case we found something that was innovative and the parties went out of the mediation or came out of the mediation with a nice agreement, happy to make business together. So you see there's something that is there for mediation and so you see there's something that is there for mediation not saying that mediation is the exclusive and the best solution.
David-Irving Tayer:It is one tool that we, as an entrepreneur or an entrepreneur, should think about and not always think I'm going to fight. I've got to fight.
Leticia Caminero:Yeah, you win more by compromising sometimes. David, can you further explain the cross licensing agreement and what it entails in general terms?
David-Irving Tayer:is that. I'm just to make the example. I'm selling a motorbike, motorcycle, and I've got a trademark for motorcycle. The other one has a trademark for clothes for bikers.
David-Irving Tayer:In that situation what I put in place was that the one that has the trademark for motorcycle has signed a license agreement to sell the goods of clothes for bikers, and the one that is selling clothes for bikers actually signed an agreement, a license agreement, to be able to sell motorbikes. So you see, the owner of each trademark gave the authorization to the other one to use its trademark, which this is why I'm talking about cross-license. It is not just a license agreement where one gives the right to another one to use the trademark, but it's an inverted mechanism where both parties authorize the other one to use the trademark. This is why I'm calling it cross-license, just to make the partnership fairly positive in the situation.
Leticia Caminero:Well, that sounds like a great and perfect outcome. So they resolve their issue, their conflict, but also they gain a partnership and with that they expand the respected markets, because now they can reach to the competitor or the other party market as well while keeping their own. So I think that would be an ideal solution. I know it will be hard to replicate in every case, because not every case have the same facts or the same kind of involvement, but it will be great that you start with a conflict and end up with a partnership.
David-Irving Tayer:Exactly.
Leticia Caminero:So, in your experience, what are the more common scenarios that may lead to a trademark conflict among businesses, and how do these conflicts typically manifest in legal terms?
David-Irving Tayer:Well, the conflicts generally comes up when someone sees that someone else is using a sign when I'm saying sign, it's a trademark, but it could be a trade name or anything like this, or a domain name he sees that someone is using this sign, identical or similar to his, for goods or services that are either identical or very close, ie similar to his. In that case, the owner of the trademark wants to and excuse the expression but get rid of what he called the counterfeiter, which is not necessarily the case. But the idea is that if someone coming to my land, I've got to get rid of him and push it out of my territory. What happened generally is that if you are in that position or if you want to attack someone else, you send a cease and desist letter asking the other person to suppress the trademark, use another name, whatever, but before doing that, you have to be sure that the other party does not have a prior right somewhere else or even in the same countries, because, for example and you were talking about someone that is using a trade name for years and in that case decides to find a trademark or decides something, but he to some extent has a prior right or prior existence. He doesn't have a prior right as a trademark but at least is known under that name. What I'm saying there is, for example, trade names by the Union Convention of Paris that dates back to 1883, gives rights to the owner of a trade name, for example, but just not on the counterfeit aspect, but rather on the parasitism or commercial responsibility. We can say like this it would be called in some countries unfair competition. This aspect has to be taken into account before sending a cease and desist letter. Again, searches should be conducted prior to do that. If the cease and desist letter is welcomed by the other party and says oh, I mean, I'm simplifying the matter, I'm sorry, I didn't know, I promise I'm changing it, I would say this is 70 percent of the cases. We can reach immediately a reply which is simple I stopped being a pain in the neck and I stopped using the trademark.
David-Irving Tayer:Sometimes what happens is that when you send a cease and desist letter, the other party says well, yeah, I understand your issue, but I'm doing something that is slightly different. Or maybe I can do. I can limit the use, just amend the logo I'm using, because we don't have to forget that a trademark could be a word, but could be also a design in the sense of a drawing, for example, or a logo. So there is a period of negotiation that is open and sometimes we could reach a consent because, yeah, ok, the trademark were some kind of similar, but not sufficiently similar to cause a real issue or real problem in the exploitation of my own trademark being prior. So we conclude a coexistence agreement or an undertaking, whichever the legal form it takes, undertaking, whichever the legal form it takes.
David-Irving Tayer:Now, having said that, it is also necessary to always have in mind that but maybe we will be talking about it later on but it's the notion of protecting your what I call your land, your trademark, your rights, because this is definitely something very specific that you have to take care of. So that means that sometimes, if you have a I mean a pre-litigation case, just to think why you're doing it, what's the purpose of it, is there any objective or idea of making it a very strong case or something that is just, if I may say so, take off some scurries on your land just to make it clean, so you're not losing the value of your assets, ie your trademark assets the value of your assets, ie your trademark assets.
Leticia Caminero:So the most common one would be you find out that someone is using a trademark that is very identical or very similar to yours, but before you jump ahead and start legal proceedings, it is recommended to first find out like what is this business, how long they have been doing business under this trademark Do they have more time than myself using this trademark in the commerce? And then, after you do this research, the second one is to approach the person with a formal letter and, according to your experience, these letters usually in a majority of cases, tend to solve the case even before it evolves into an actual legal conflict. So it's worth knowing that it is important not to jump right away to legal action and to take things slowly to make sure that you're not doing a mistake that can make you cost more, or it can even take you yourself out of the market if you're not careful as well.
David-Irving Tayer:Yeah, exactly, that's exactly the case.
David-Irving Tayer:And, if I may add something, is when you, you have to plan, it's like a, it's strategic all the time, strategic in saying do I have to be a strong shoulder muscles, or can be soft.
David-Irving Tayer:Maybe I can just already say, well, I've got an issue, but I may suggest some kind of agreement or an amicable settlement. So you, you sort of coming up with a solution, with a solution it's my way of thinking in my mediation mind, or something like this, where I always try to think that the adverse party is not necessarily a bad guy. If I can say that, and maybe, if you come up with already a solution or something that may be acceptable for the other, then he will not feel being aggressed by someone, but rather we've got a little problem, or you minimize the problem, even if it's an important problem, but as you bring a solution, the adverse party will not think or react aggressively and would say, yeah, actually that's not bad and then accept it. So that's also, you know, it's all this strategy, the mind map you have in your mind to accept and understand the other party's position, which is generally more positive for the one that is actually attacking.
Leticia Caminero:Oh, that sounds like great and sound advice and it really goes with the next question on the trademark dispute. Can become as any legal dispute can become crazy complex, can be very time consuming, resource consuming and also can drag along a lot of other related issues. Because one of the things that of course, if you have to go to court, you have to go to court. There's some cases that are so conflictive or so unique or they do require some court intervention because of specific matters that cannot be done outside the court. But in the case that the legal conflict is suitable for mediation, is suitable for finding a path, a common path between the parties. What are the advantages of having a mediation? I know we talked a little bit before, but what would you say will be the top advantages of doing a mediation process instead of going ahead straight to the courts?
David-Irving Tayer:When I was listening to the question I said well, it's an easy question. That is actually not easy at all. Why I'm saying that is that the main advantages of mediation and I voluntarily put an S to the word would be the first one, the cost-effectiveness, because mediation would most likely be less expensive than a trial in most countries. The second advantage is the time frame. For example, I would say in France, you have to count about a year to 18,. Well, 12 to 18 months for a first instance case in counterfeit, which is a long time, and it's also something that the entrepreneur or the trademark owner will have in mind all the time, because the lawyer will come back. Well, I need to have some evidence, I need to have that the element. Do you have this? And the entrepreneur, instead of doing his business, is somehow, uh, spending some time in an issue that is not his, uh, day-to-day business, whereas mediation, if it's a positive mediation, could be made in a very short time. Sometimes it's just considered that, okay, we have 48 hours, 72 hours, to find a solution, and even if we spend part of the night in doing CERT, but we are in a short, concise time frame to find a solution, so it's a concentration in, I would say in a one, like a needle you just do it once and that's it and you go for it. This is the second point that is interesting.
David-Irving Tayer:Third one is secrecy. Again, because there are things that you can provide within the mediation that will remain secret all the time, and that's what the both parties undertakes is that they may have. Maybe, for example, see the books, the accounting books. They could see information that are very important but that you would never, ever give out in a tribunal, because that means that the other party will have commercial insight of your company which you will not give out. But in mediation it's sort of we need to give all this information to show the other party what is the problem, what is the issue.
David-Irving Tayer:And in discussing that, having all the documents, maybe that could balance the situation to a proper case, to a solution, to an amicable settlement, bearing in mind that all those documents cannot be used once the mediation is over. They have to destroy it, not to think about it and lack if they never had it in hand. Finally, the fourth advantage I will see, and that's the one I was mentioning early on, is that both parties, if mediation is successful. I had some mediation that were very, extremely tense, some words that I would not say now but not very nice, and finally, once they have, let's say, take that out of from their heart, the entrepreneur finally smile, discuss and find a solution. But you have that step that is generally necessarily happening. But both parties come out happy and that's, I guess I would say this is more of a personal comment, but I'm very happy to see when both parties are happy.
Speaker 2:You are listening to Intangiblia, the podcast of intangible law playing talk about intellectual property.
Leticia Caminero:So it can even be therapeutic in a way.
David-Irving Tayer:In a way, mediation is something like a therapist with you.
Leticia Caminero:Yeah, because you can release all the anger you've been accumulating since the beginning of the conflict. Okay, now I said my piece, we can start talking like persons again. Yeah, exactly.
Leticia Caminero:Okay, okay, it seems like also like quite a responsibility for the mediator to make sure that, okay, you give them space to express themselves, but also not to be disrespectful in a way that you can take things that you set back or things get escalate in the conflict itself because of what the other party is saying, what the other person is expressing in the moment. So it's a science and an art, in a way, to be a mediator a mediator.
David-Irving Tayer:To be honest, we have three actors, generally speaking, is the mediator and the counsel of each party that may be present in the mediation. The hardest part because I was sometimes the mediator and sometimes the counsel of one party the most difficult thing is that, as an attorney, you have to forget that you are an attorney and you are not doing litigation. You have to help your client and the other party to express themselves, to express themselves. The mediator has the hard task to make each party come to the middle place, even if they say well, you can shout, you can insult, but be respectful, you can express whatever you want. And all that work, if I may say so and you were talking about therapy, but that's roughly.
David-Irving Tayer:The idea is to make people feel comfortable, say what they have to say and, as I say, even if it's in shouting, because that's the first necessary step is my anger. Why am I angry? And then what will solve my angriness against the other? And when we have that triptych, well, the solution, like not saying mercuriously, will come out easily and softly and without any not saying that there is no discussion or negotiation, but it is clearly more soft than in other places, less cozy, if I can say so, even if I was talking about finding, but it is a specific place, like if you were outside the time, outside the world, outside everything. It's a bubble. We're all together and we've got to strive to find something that is equity for both, justice for either, and the worst, or the most difficult part is, I would say it's generally the attorney that is not keen in finding a solution and is more thinking about going to litigation because, litigation is good, but no, I think that mediation is even better.
David-Irving Tayer:not for all cases, but it is definitely better than a bad case before a judge.
Leticia Caminero:So it's also a challenge, not only for the parties but also to the attorneys involved. Definitely, because it's very hard. Well, as an attorney myself, it's to make the shift because you are often and you're so comfortable thinking in legal terms, thinking in legal processes, thinking in legal terms, thinking in legal processes, thinking of the best way you can get the other party or the best way you can win. This because it's in the training that they give us in law school. So it's something that it's not so easy to release or to let go. But, again, it takes expertise, it takes experience and I believe that the more you do it, the easier it would get to understand which requires the suit of the lawyer, which requires the suit of the mediator or an attorney representing in a mediation case.
David-Irving Tayer:Yeah, you're so right in saying that when we are trained as a lawyer, that we are trained to litigate and not much in mediation or mediating thing, and when you were saying it's the hardest thing, yes, we're happy to win and that's what we're looking for. We are for the client. But when you just go one step further, you say what is the interest, advantage, opportunity for the client? And when then you go one step just above and you say, well, maybe leaving or letting something to the other party would be even more positive for the client. But that's as you say. It's both expertise, habit, character also, and you're not here to win a battle. You're there to help your client to win something which is positive. It's not about them to win.
Leticia Caminero:So it's winning in the biggest picture possible, exactly In the broader sense possible, not just this bit, but in the long run, what would be better for your client if they mediate, find a solution and if they grow together to find a common ground? So with that we can move on to the strategies and best practices that you would recommend for achieving a successful mediation. Achieving as a self-limitation.
David-Irving Tayer:Ah, as I say, the first part is to sufficiently prepare your client to be in a position of feeling comfortable in the idea, not saying we've got to fight, let's take all the weapons and stuff. No, no, no, no, no. You can use things, that's for sure. You can express yourself, but it's just to make all the animosity you have in the adverse party come out. And that's the part of your preparation with the client in making him feel comfortable and say we are not in a court, we're not in a uncomfortable place, because generally a court is not a place where you're happy to go if you're not a lawyer. And in preparing that is making your client open-minded, positive, even if it's been attacked or whatever, it doesn't matter. What we're going for is an issue. It is a positive issue.
David-Irving Tayer:What we were saying just a few minutes ago is sometimes the hardest part is to make the other party's lawyer make the same job as you are doing, job as you are doing. And, to be honest, once I had to. Well then I was sermoned by the mediator, but I, not very nicely, but asked the adverse party's lawyer if he's really in the mind of a mediation, because he was just systematically counter-arguing, presenting cases, presenting legal text and stuff. And I said, well, that's not the point. We're here to discuss, like if we're having a cup of tea and we discuss the matter like gentlemen. Well, he didn't like it, but it was necessary for me to put that pressure to make him go down, calm down and be more positive, and that's one of the part that is uh sometimes difficult, um, and, as I said, uh, when I was telling that the uh, that the party should be in a sort of um, comfortable, cozy place, place, just to make him feel that we are discussing, as I say, around a cup of tea, we're discussing with someone else.
David-Irving Tayer:We disagree on some subject matter, it doesn't matter, because we present all our cases, our arguments, the factual arguments and even sometimes the personal arguments, the factual arguments and even sometimes the personal arguments and if mediation, as I say, is not always the option to go for, because we have some cases where it's a, I would say, clear-cut case I cannot let the other one use the trademark. It is not possible, there is no way. Let the other one use the trademark, it is not possible, there is no way. But for not legal reason or just because I want to annoy the other one. It's like, let's imagine this complete preservation of the case. That would never occur. Well, I assume.
David-Irving Tayer:But if you decide to find the trademark Coca-Cola, you can imagine that Coca-Cola will never, ever let you use trademark Coca-Cola. So in that case, obviously, mediation would not have any kind of interest. But sometimes you could have a situation and if I'm taking an extreme example, but if I'm filing a trademark Coca-Cola extreme example but if I'm filing a trademark, that might be a case where you could have mediation, independent of the fact that of the notoriety of Coca-Cola. But when you think about it, if they're not doing beverages and they're doing something else, whatever, maybe mediation could be a case because even if it's not a clear-cut case, even if there is a risk or potential risk of confusion, maybe an amicable solution could occur. Strangely enough, even if I'm using an extremely well-known trademark. So this is where the mediation has its limit. It's when you have something that actually will not be possible to solve in any kind of agreement. Therefore, mediation would not have any opportunity of being put in work.
Leticia Caminero:So in this obvious scenario where it is very unlikely that it would reach to a solution, or where it is a clear infringement case that you want to use Coca-Cola for selling water, that is not going to happen, for example. Definitely not. But wouldn't you say that also the party itself, the person whose business you're representing, that there's some work that they also need to do on their part when they're coming into a mediation instead of a litigation?
David-Irving Tayer:I would say there's one extra work to be done by the party that comes into litigation is to be you might find it strange, but emotionally involved in the case. That's the extra work, but it's for a short time period of time that you are doing so. The other thing is all the elements, but that's as usual and, as you said, you're an attorney, we know that we have to ask the clients to give us evidence, documents, proof, because we don't have them. So they do have to work a bit. But then afterwards it's rather as I was explaining it, it's a discussion both emotionally commercially, both emotionally commercially and all this, my company has an issue.
David-Irving Tayer:For that reason and that reason, whichever the way they put it, it's the work of the attorney afterwards to write the musings or the lyrics of the agreement and translating the idea of both parties. So the work or the involvement in the mediation is, I would say, not more important, because that's not exactly the word, but you're not a third party to the case. Like in the litigation, the trademark owner may feel like he's a third party. Well, someone is talking for me, someone is setting the writings for me, someone is the attorney, whereas in mediation we want and we need to have, because that's the principle the trademark owner be present in the case and discuss.
Leticia Caminero:So being personal is a good thing in mediation.
David-Irving Tayer:In my point of view yes.
Leticia Caminero:Okay, it's quite a different take. It's like well, this is only business, don't get your emotions, take the best of you. But in this case, talking and channeling emotions can be a positive process. On mediation, yeah.
Leticia Caminero:Okay, perfect. So, david, for the last question, which is, I think, a bit complex because it's a fairly new topic that we haven't discussed so far it's about valuating IP rights and how proper valuation of IP rights is crucial, or can be crucial, in a mediation process. So can you tell us your approach when it comes to valuing IP rights, shedding light on why this process is crucial, particularly in the context of business operating in the digital age, and can you tell us the connection between proper IP valuation and a mediation process?
David-Irving Tayer:Wow.
Leticia Caminero:Just a normal question, just to wrap up.
David-Irving Tayer:It's a clear, very simple question that doesn't need to make a long development on it. I'll be trying to make it as simple as possible and give you the first hint on the subject. Valuation of IP, trademark rights, patents, whatever all the intellectual property rights is something that is more and more vital and essential for a company. Don't forget that IP rights is the assets of a company. It is like a flat or a house and you have to take care of it. You have to repair it. You have to improve it. You have to take care of it. You have to repair it. You have to improve it. You have to protect it. If you think about your flats, if there is some I don't know electrical issue, you will repair that issue. If there's water that comes in, you will make the necessary step. And a full trademark or an IPRite, it's exactly the same, except an export trademark or an IPRite, it's exactly the same. Why I'm saying that is that your trademark has a value, not because you filed it, but because you are exploiting the trademark. And once you're exploiting the trademark, that makes that trademark having a value in a sense, either to value your company, but also if you want to sell that company or if you want to sell that department using the trademark. The value of it is not the cost you find it, but it's what it makes money with it, how you generate cash, if I can use the slang word in using that trademark. So there are several things that you have to put in place. For example, if you're using your trademark in, let's say, europe and in the US, but you find only your trademark in Europe, but then you've got a gap of protection that means you're not protected on an IP trademark right in the US, so the valuation of your trademark will go down definitely. I mean, it's just logical because if you're not protected, you do not have an intellectual property right in the concerned countries and therefore it's lacking the value. So it's always get in a position saying well, I'm going to open a new market. Do I have my trademark registered there? First question. Second question do I have any issue with some third parties that may have filed an identical or similar trademark in that country?
David-Irving Tayer:You have to think also that, for example, you are doing some kind of goods and you develop new goods and products or services. Am I protected for those goods and services? If this is not the case, then you have to think about protecting them. So it's always taking time to check your asset. You're checking your flat, you're checking your house, you're checking your garden, you're checking your car. Well, you have to check your IP rights to be sure that everything is in order, that no one is there to be a bug. In the context, you're exploiting your trademark.
David-Irving Tayer:So I was saying checking the territory where it is protected, checking the goods and services for which they are exploited, but also is putting in place watches. What I'm talking about this is if someone files a trademark, let's say, in the US. You have a trademark in the US, but someone is filing a trademark in the US or start using it, you will not be aware of it unless you are checking what's going on and what is being filed, because no one will tell you that and maybe that will come from your marketing department or maybe your friends say oh well, I've seen that trademark, it's almost like yours, whatever, but you've got an information. Sometimes after the filing, if you're putting in place a watch or civilians on your IP rights, you will be informed very quickly and you can act very quickly again. So you just take down an issue with someone that is trying to make or to use a trademark that is similar to yours. So it would be mediation, negotiation, recovering opposition, for example. There are several tools to well I mean basically what we've been talking about for about an hour to be sure that your trademark is not devaluating by the fact that someone else is coming in. Just to give you an example, if you are known by your trademark, if you see that several other people are using the same trademark, then you're for the consumer. Your, your trademark is a trademark that I can see everywhere for other goods or for similar goods, whatever. So well, there's no value. I'm not going for your company more than another just because it's you. No, you're known by your trademark or the goods or service is known by said trademark. So that's one of the aspects on the, I would say, the brick and mortar subject matter. On the second one is all that you were talking about, the digital.
David-Irving Tayer:That again, several issues that have to be taken into consideration is am I present on the web? Do I have a domain name? Do I have a website? Do I have some account in various social media? I don't know, whatever you can imagine. I mean the LinkedIn, google, facebook, instagram, snapchat, whatever You've got all those places, where should I be there? And some people are thinking also, should I be there on a Wikipedia page? There on a Wikipedia page, each social network or each place on the internet? And I was talking about also the metaverse and any verse do I have to be there? What is the issue? What is IA, sorry, doing for me? Artificial intelligence, sorry. Is there something that is an issue, for that Is someone using any kind of platform that creates with the artificial intelligence a new logo or stuff, but that actually is a counterfeit of my logo, because I don't know the person that made the script led to recreate an identical or similar logo to mine.
David-Irving Tayer:All those issues should be checked and verified. So here again, am I present? Do I have the domain names? Not saying that you have to take all domain names with all the extension, the com, net, org, fr, couk, uk, whatever all the extension of the domain name, or should I just take what I need to have, for example, com and es if you're in Spain, or t for Germany, germany or fr for France? I'm taking what I consider that I need for my communication and then I check, set up, watch to see if someone else is taking my trademarkanother extension, is it an issue? Is it causing problem? Is it destroying my reference on Google, yahoo or any search engine? All those aspects should be always watched and checked for, avoiding, on one side, the devaluation of my trademark, but also all the issue that could be occurring, for example, if someone is taking a domain and that looks like your trademark and sends email to your competitors to obtain a contract or try to obtain personal data from your clients. You see, there's all kind of I'm not saying new matter or new legal matter, because I do believe that it existed before. It's just an adaptation of what was done in the brick and mortar life. On the digital life.
David-Irving Tayer:Scamming is something that exists for ages, but now it's called scamming because it's done on the Internet via email Phishing, ie collecting either personal data or financial information, making one believe that you are the legitimate person asking for those.
David-Irving Tayer:So you see, there's a lot of things that come up and if the question is difficult because it's very complete and contains a lot of elements, it's actually fairly simple. I mean, obviously, when you have the expertise and you spend time in doing so. But it's always thinking what do I have, what is my territory? What is my let's say my land? Do I want people to get in or not? Am I organizing people to allow them coming in? That would be the license agreement or the coexistence agreement. Am I requesting someone to distribute my products? Then I will give him the right to do something on my land. You see, it's always that thing that is organized. You protect your land also, that you don't want to have invaders and, in order to make that fairly simple, you actually increase the value of your trademark and IP rights because you are showing that you are the one, the only one, and that's what the value of your trademarks become. I don't know if my answer is less complicated than your question.
Leticia Caminero:I think you de-complicated my very complicated question. Think you de-complicated my very complicated question. So it's fairly straightforward how to keep the value of your trademark then. So you need to be vigilant, you need to understand your market, you need to have presence where you should have presence and registration where you have registration. So it's about being a good part of the familias that's a term that we like to use a lot in civil law that you take care of your property. You take care of your property in the best possible way that you can, and IP, even if it's intangible, it is property and and is the trademark, is the way that people identify you and people connect to your product and services. So it is the face with the public and and its valuation is going to directly impact your product valuation or your services valuation.
David-Irving Tayer:Yeah, exactly, see, that's even clearer than what I said.
Leticia Caminero:I'm just learning from you, David. I'm just learning from you. But with this, I think we're ready to wrap up. Any final wise words that you would like to share with us?
David-Irving Tayer:Final word possible Wise? I'm not sure. No, I do. Thank you, leticia, for inviting me. It was a very nice moment to spend on and, as you can see, ip valuation mediation is basically myself and I really enjoyed it. Thank you very much again. Thank you, david. Mediation is basically myself and I really enjoyed it. Thank you very much again.
Leticia Caminero:Thank you, david, for joining and thank you for sharing your great knowledge. I'm very happy that we have this conversation and, yeah, looking forward to meeting again, to talk again and to further discuss these matters.
David-Irving Tayer:Would be a pleasure.
Leticia Caminero:We have reached the end of our episode. Greetings from Switzerland.
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