Should a trade mark or design dispute arise, the immediate thought may be straight to litigation (particularly if films and TV programs are anything to go by). However, given the expense and potentially public nature of litigation, the reality is that the majority of cases are resolved pre-trial.

Here, we briefly explore the alternatives to settling trade mark or design disputes (some more creative than others).

Negotiation

Before considering the more formal alternative dispute resolution procedures, the first step is to enter in to negotiation with the other side. This is a back and forth discussion whereby the parties ascertain whether amicable settlement is possible and the terms of settlement. By negotiating, the parties aim to resolve the issue in a mutually acceptable way.

Collaborative law

Collaborative law is mostly used in family law matters, but it can be used in other areas so shouldn’t be automatically dismissed. Similar to negotiation, the aim is simply to encourage the parties and respective attorneys to work together to achieve a mutually beneficial outcome.

Should negotiation or a collaborative law approach not work, there are other alternative dispute resolution methods:

Early neutral evaluation

Early neutral evaluation is an increasingly popular form of alternative dispute resolution. This procedure allows for an appointed independent and impartial evaluator to give its assessment on the dispute as a whole or a specific aspect of the dispute. This is not binding and without prejudice but can be used as the basis for settlement discussions. Early neutral evaluation can be used on a stand-alone basis or in combination with mediation or arbitration.

The key aspects of early neutral evaluation are that:

1. both parties’ consent;
2. a party cannot unilaterally withdraw;
3. the matter is confidential;
4. the parties can choose the impartial evaluator; and
5. the decision is non-binding.

Expert determination

This is a procedure where the dispute is submitted to one or more experts who then decide on the matter and that determination is binding, unless the parties have agreed otherwise. It can be used on a stand-alone basis or in combination with mediation, arbitration or litigation. It is not uncommon to find an expert determination clause for potential future conflicts in contracts.

The key aspects of expert determination are that:

1. both parties’ consent;
2. a party cannot unilaterally withdraw;
3. the matter is confidential;
4. the parties can choose the impartial expert, language, location of any meetings etc; and
5. the decision is contractual (unless agreed otherwise).

Mediation

Mediation is a procedure where the parties discuss a dispute with a trained, impartial third person who acts as a facilitator and is there to assist in reaching a settlement. Attendance at a mediation conference is typically voluntary but can be compulsory if governed by statute or a contract clause. The outcome is non-binding unless the parties agree and sign an appropriate settlement agreement.

The key aspects of mediation are that:

1. both parties’ consent;
2. a party can unilaterally withdraw;
3. the matter is confidential;
4. the parties can choose the impartial mediator and location of any meetings;
5. the mediator is not there to make a decision, but to assist with discussions; and
6. the outcome is non-binding, unless it forms part of a settlement agreement.

Arbitration

Arbitration is a procedure where the dispute is submitted to one or more arbitrators who make a binding decision on the dispute. Arbitration is similar to traditional litigation in that you file evidence, witnesses, arguments etc. However, it does not need to take place in a courtroom and is much less formal. Arbitration may be a stand-alone procedure, or part of a tiered process with other forms of alternative dispute resolution.

The key aspects of arbitration are that:

1. both parties’ consent;
2. a party cannot unilaterally withdraw;
3. the matter is confidential;
4. the parties can choose the arbitrator, language, location of any meetings etc; and
5. the decision is binding and enforceable.

There have also been some very creative alternatives in the past:

Arm wrestling

In 1992, Southwest Airlines and Stevens Aviation took part in an arm-wrestling match for the right to use the slogans ‘Plane Smart’ and ‘Just Plane Smart’. Both companies were using the slogans, which are virtually identical, but neither wanted to take the matter to court.

Both companies realised that an amicable settlement would not only create great publicity for the companies, but that they could also use the opportunity to have fun and raise money for charity.

Although Stevens Aviation technically won the arm-wrestle, it agreed with Southwest Airlines that both companies should continue to use the slogans.

Social media

There have been numerous instances where individuals or businesses have been able to use social media to their advantage, highlighting infringements or copying, and getting the general public to use their voices to shout about the matter and gain publicity.

For example, the jewellers Tatty Devine used social media to point out the similarities between their necklaces and the near identical versions being produced by the high-street chain Claire’s Accessories. They cleverly posted images side by side with the caption ‘Can you spot the difference?’. This quickly resulted in outrage online, with the public backing Tatty Devine, resulting in Claire’s Accessories removing the items.

Social media can be a great tool for infringement claims, particularly copyright infringement which can be difficult to prove. However, care must always be taken when using social media in this way to ensure that untrue statements are not published and there is no negative backlash towards the user.

Kemp Little can assist brand owners with all aspects of IP protection, maintenance and enforcement.

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