February 11, 2025 • 69 mins
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.
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Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
David-Irving Tayer (00:00):
In some way there won't be one winner and
one loser.
There would be two winnersbecause both parties will have
breached an agreement consensuson their own, if I may say so or
at least they would believethat, in the idea that they
finally signed an agreementwhere both of them are very
(00:23):
happy with it, and that's animportant thing when we're
talking about mediation.
Speaker 2 (00:30):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Please welcome your host,leticia Caminero.
Leticia Caminero (00:41):
Taking it all for the win is not necessarily a
good business strategy.
Having always a winner, havingalways 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
(01:04):
compromise, how to find middleground.
We discuss with our gueststoday about mediation.
Mediation, an amazing tool thatcan help you find winners in
almost every possible scenario.
Let's welcome our guest.
David-Irving Tayer (01:29):
Yeah, very good morning, leticia.
I'm David Tyer, I'm a Frenchcitizen and I'm 50-ish.
I'm an attorney certified bythe French Bar as an IP
specialist.
Just to make a clear or quickpresentation of myself, I
studied law in the UK beforecompleting my studies in France
(01:54):
with an LLM in Europeancomparative laws and then an LLM
in IP law.
That's my study background, Icould say.
Then I've done some other thingslike certification in mediation
and arbitration in IEP and IET.
I'm also an arbitrator invarious domain and arbitration
(02:16):
center for some years now.
I started as a trademark agentfor some years and then became a
registered barrister orattorney in France.
I'm actually workingessentially in IEP and I'm
(02:36):
saying essentially, it mightactually be totally in IEP ie
intellectual property andInternet, telecommunication and
stuff like this domain namearbitration and mediation and
I've been doing this for about20 years now.
This is why I was talking aboutthe 50-ish.
My day-to-day is obtaining andexecution of filing and
(03:04):
trademarks, patents, domainnames, designs and stuff, but
also negotiating contractagreements.
Also, all that is concern issuethat you could have in the
digital world, including themetaverse and any other verse we
(03:24):
can know about now.
Leticia Caminero (03:27):
Quite an extensive experience in all IP
related matters, and today we'regoing to talk about especially
on mediation in trademarks.
But before we do that, I wouldlike to ask a broader question
regarding the challenges thatbusiness may face during
trademark registration, thetrademark process, the trademark
(03:47):
journey.
So how would you identify orwhich would you say are the most
common challenges thatbusinesses face when doing a
registration process for atrademark, and how would you
recommend navigating thosecommon challenges?
David-Irving Tayer (04:06):
That's one of the hardest time for the
entrepreneur in the process oftrademark registration.
I'm saying hardest time it isessentially due to the fact that
finding a proper trademark or atrademark that is not in
conflict with a prior one, it isto determine whether, first,
(04:30):
the trademark is not describingthe goods or the services that
you want to protect, ie the oneyou are going to sell and what
I'm saying.
The non-descriptive means thatthe name or the logo that you
are going to sell and what I'msaying the non-descriptive means
that the name or the logo thatyou are using is not describing,
(04:51):
in whichever manner, the goodsor services you're selling.
In other words, I cannot file atrademark chair for selling
chairs, which is the commonexample we can use.
But once we have determined thegood trademark or the one that
(05:13):
talks to me as the entrepreneurand for which I've got a
storytelling for it, whether itis an important one or a short
one, we have to determinewhether there exists any prior
rights, ie other trademarks ordomain names or commercial names
that would be used by someoneelse and doing exactly the same
(05:37):
activity.
So the first step we have to dois go for a prior right search
In the territory you want tofile a trademark.
If the trademark is aimed atbeing used in several countries,
it is wise to proceed with thattrademark search in all the
(05:57):
concerned countries.
The point of that is todetermine whether you will find
other people's trademark thatobviously would be filed before
yours and that may be anobstacle to proceed with the
project.
The challenge there is thatonce you proceed with the prior
(06:19):
right search, if we do not findany prior rights, then that's
fine.
If we do not find any priorrights, then that's fine, you
can go on.
If you find one that may be anobstacle, then we have to
determine whether you have astrategy to overcome the prior
right.
First would be maybe they don'thave the exactly same activity,
(06:41):
so we will draft the list ofgoods and services to avoid any
conflict.
Or, if there is some overlap,let's try, for example, to
contact the owner and obtain anagreement with them.
The difficulty there is that ifyou look for an agreement, that
(07:03):
means that you are informingthe other party that you intend
to do something that isconsidered by yourself as
similar.
So it might be touchy to dothat, because you're informing
the person where maybe therewon't be any real conflict.
After all, Once we overcome thefirst issue on the prior right
(07:25):
search, then we proceed with thefiling of the trademark and
there may be some objection, inother words refusal from the
intellectual property office, inthe sense that they may
consider that the specificationof goods is not sufficiently
(07:45):
clear or should be adapted orslightly modified.
Generally I mean, as we havesome kind of experience we
normally avoid at the maximumthat kind of objection.
There used to be someobjections raised on the
non-distinctiveness of thetrademark.
(08:05):
The non-distinctiveness is whatI was talking about early on is
the idea that the trademarkdescribes the goods or the
services.
It becomes more rarely to havethat kind of objection.
Well, in my experience,essentially because, as a
(08:28):
trademark attorney, we arenormally examining whether the
trademark would be liable to bea non-distinctive trademark and
if this is the case, then wewill recommend the clients not
to file the trademark.
So that's the second step thatcould be involved in the process
(08:49):
of the filing of a trademark.
The last one is once yourtrademark is being accepted, it
will be published and oncepublished, any third party may
file an opposition.
In the event he had a trademarkthat he considers as similar or
(09:12):
close to the one you just find.
Well, if you've done the priorright search, normally you
shouldn't face that issue.
Or it is someone that believesthat the trademark is very close
to his.
In that case he may find anopposition, which is an
administrative proceedingsgenerally, and we start either
(09:37):
counter argue the opposition orand that's one of the approach
that I would privilege is thenegotiation of an agreement,
Because generally what happensis that someone believes you are
reproducing his trademark.
Okay, fair enough.
You have to think at what stagethere is a real risk of
(10:01):
confusion, because that's themain idea you have in trademark
matter is is there a possibilitythat the consumer, when he sees
one's mark, believes it's theother one's trademark?
If this is the case, then thereis a risk of confusion.
But that can be either overcome, because there is no actual
(10:24):
risk of confusion and we have todemonstrate it, or because the
goods and services aresufficiently different to be
sure that the consumer would notbe the same.
If I'm selling, for example,sweets, this is definitely not
similar to what can I say easilywould be cars, but something
(10:50):
that would be eaten, oralcoholic beverages, for example
.
You do not buy sweets andalcoholic beverages in the same
market or in the same place inone market.
That's what I could say in theprocess, but generally it's
fairly straightforward.
Leticia Caminero (11:10):
So the key is selecting the right trademark
according to prior research,according to advice, of what is
considered distinctive in thistype of product or this type of
services.
So it's choosing right on thefirst instance in order to
minimize any risks.
David-Irving Tayer (11:30):
Yeah, exactly, that's exactly the
point we are looking for is tomake sure that, when we are
going to do something, the placeis sufficiently clean, if not
totally clean, to go for itclean, if not totally clean to
(11:51):
go for it to avoid any risk that, in the event, would be costly,
time consuming and with nointerest, because necessarily
you would have to, at some stageeither change your trademark.
So that means that all we arepreparing prior to finding a
trademark and the explanation ofthe trademark is exactly to say
what I'm investing now is justto make my trademark
(12:12):
sufficiently valuable and tocarry on and make on my business
.
Leticia Caminero (12:17):
The first thing that we will recommend,
then, is take advice fromsomeone who knows, and follow
the advice in the process ofcreating your trademark, because
it often happens that theentrepreneur or the person who's
trying to do the process ofregistration has already a
(12:37):
trademark in mind, or even isalready using this trademark in
commerce, before going andtrying to file for registration.
So this is one of the thingsthat entrepreneurs and any other
person who is navigating thistrademark registration needs to
keep in mind that it isimportant to do your research.
(12:59):
It's important to do the leadwork beforehand in order to
avoid unnecessary payments or inorder to avoid unnecessary
legal risk that may occur.
So, with this in mind thislegal risk that may happen
throughout a trademark beingused in commerce, or a
registered trademark as well, orany other type of company that
(13:23):
may arise from doing businesswith a trademark or with a
specific brand we can shift tothe resolution of those type of
companies.
As you mentioned before aboutyour mediation background, you
are an arbitrator and a mediatorfor IP matters, specifically in
the WIPO Arbitration andMediation Centre.
(13:45):
Could you tell us thesignificance and the difference
between having a legal conflict,an IP-related legal conflict,
and solving or seeking to solvethat conflict before arbitration
or mediation, instead of goingthe natural road which is going
(14:05):
to the judicial system, going tothe courts.
David-Irving Tayer (14:09):
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 goto court, you go before an
arbitrator in a private placewhere the both parties will
(14:31):
actually litigate the case andthe arbitrator will cast the
case at the end.
This is one side.
So it looks like legal actionbefore a tribunal, except that
you may bring more evidence moreeasily and all is covered by
(14:53):
secrecy.
So all that is being providedin the arbitration will remain
totally secret for third parties, which is one of the advantages
of arbitration.
The second one is the fact thatit may be cost effective.
Even if arbitration may be, Iwould say, expensive in the mind
(15:18):
of the person that launched it,that launch it, it nevertheless
could be more cost effective insome countries where the legal
costs are extremely high andalso the cost for all the due
diligence, for investigation andstuff, which obviously make the
(15:39):
cost extremely increasedcompared to arbitration.
But, for example, in Europe thearbitration is not much
developed except for domainnames.
But that's another aspect ofthe arbitration, just because in
(16:00):
most of the countries in theEuropean Union the costs legal
costs, I would say are not veryexpensive.
So we will tend to go to atribunal, with in mind, again,
the idea that there won't bemore secrecy before the tribunal
, before the tribunal, sorry.
(16:22):
Now if we turn to mediation,mediation is really something
that where people will well, asthe name is mediate, they will
share things and in the case themediator is not here to cast
the case.
He is there to make bothparties reach an agreement, make
(16:43):
both parties reach an agreement.
So the approach of the case ismore of not saying much, but
help the one that is consideringthat there is, for example, a
counterfeit case, explain allhis anger, his difficulties with
(17:04):
the other one's trademark andstuff.
And on the other hand, theother party will also explain
his case, not legally speakingbut more commercially speaking,
and the mediator will make sure,or will attempt to make sure,
that both parties, by discussing, by exchanging matters, finally
(17:28):
reach an agreement.
The advantage of mediation,again, is, well, the cost
compared to legal action, butalso the fact that in some way
there won't be one winner andone loser.
There would be two winnersbecause both parties will have
(17:50):
breached an agreement consensuson their own, if I may say so,
or at least they would believethat, in the idea that they
finally signed an agreementwhere both of them are very
happy with it.
And that's an important thingwhen we're talking about
mediation is that the partiesessentially may be competitors,
(18:17):
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 ofsomething and the other one is
the buyer they like workingtogether for some time and then
they start fighting on thesubject matter, but they still
(18:40):
want to work together andmediation will solve the issue
and probably make both companiescarry on their business happily
.
You see, I would say I mean, ifI'm exaggerating the case it's
like if you're going as aanalyst and you accept the
mediation with it because youfinally found the issue, that
(19:06):
are making one angry to theother, and then everything goes
peacefully settled and then theycarry on their life.
Leticia Caminero (19:19):
So you would say that mediation is more
likely to amend the relationshipafter the conflict is solved?
David-Irving Tayer (19:28):
Yeah, exactly, and in most cases where
the mediation was successful,either the client or the parties
are happy because they feelthey did something positive,
which is not the case when yougo to a legal action not saying
(19:53):
that you never have to go tolegal action before tribunal or
even arbitration, butnecessarily there will be one
loser of the case and one winnerof the case, and both of them
would not be sufficiently happyor they would be extremely angry
with the situation.
Why I'm saying that is that theperson that wins considers that
(20:13):
he never wins enough and theone that loses consider they
lost too much.
So obviously the judge is justcasting 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
(20:36):
could be more innovative in thematter, that a judge cannot
decide when he's judging thecase.
I've got one example, withoutbetraying the professional
secrecy, but two were notdirectly competitors, but they
(20:59):
were in the same field ofactivity to some extent one
producing and selling objects tomake sports and the other one
selling clothes for sports.
So you see, it's not directlythe same consumer, but that
might be an overlap.
One has trademark rights in onecountry prior to the other and
(21:21):
in another country had priorrights to the other.
So there was sort of mix oftrademark rights throughout the
world.
So, technically speaking, if welook at it, company A was
blocked in one country and it'scompany B that is blocked by the
(21:45):
company A in another country.
So there is a blockingsituation all over the place.
But finally, in the mediation wereached the possibility of
making crossed licenseagreements, so actually both
companies can carry on their ownactivity but also were selling
(22:08):
goods of the other, which wasthe adverse party at the origin
and was becoming actually apartner.
So you see that something thatthe case before the judge would
never happen because they cannotforce party to make that
cross-license agreement.
But in this mediation case wefound something that was
innovative and the parties wentout of the mediation or came out
(22:33):
of the mediation with a niceagreement, happy to make
business together.
So you see there's somethingthat is there for mediation and
so you see there's somethingthat is there for mediation not
saying that mediation is theexclusive and the best solution.
It is one tool that we, as anentrepreneur or an entrepreneur,
(22:55):
should think about and notalways think I'm going to fight.
I've got to fight.
Leticia Caminero (23:02):
Yeah, you win more by compromising sometimes.
David, can you further explainthe cross licensing agreement
and what it entails in generalterms?
David-Irving Tayer (23:18):
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 trademarkfor clothes for bikers.
(23:50):
In that situation what I put inplace was that the one that has
the trademark for motorcycle hassigned a license agreement to
sell the goods of clothes forbikers, and the one that is
selling clothes for bikersactually signed an agreement, a
license agreement, to be able tosell motorbikes.
So you see, the owner of eachtrademark gave the authorization
(24:15):
to the other one to use itstrademark, which this is why I'm
talking about cross-license.
It is not just a licenseagreement where one gives the
right to another one to use thetrademark, but it's an inverted
mechanism where both partiesauthorize the other one to use
(24:35):
the trademark.
This is why I'm calling itcross-license, just to make the
partnership fairly positive inthe situation.
Leticia Caminero (24:46):
Well, that sounds like a great and perfect
outcome.
So they resolve their issue,their conflict, but also they
gain a partnership and with thatthey expand the respected
markets, because now they canreach to the competitor or the
other party market as well whilekeeping their own.
(25:09):
So I think that would be anideal solution.
I know it will be hard toreplicate in every case, because
not every case have the samefacts or the same kind of
involvement, but it will begreat that you start with a
conflict and end up with apartnership.
David-Irving Tayer (25:27):
Exactly.
Leticia Caminero (25:29):
So, in your experience, what are the more
common scenarios that may leadto a trademark conflict among
businesses, and how do theseconflicts typically manifest in
legal terms?
David-Irving Tayer (25:43):
Well, the conflicts generally comes up
when someone sees that someoneelse 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 domainname he sees that someone is
(26:05):
using this sign, identical orsimilar to his, for goods or
services that are eitheridentical or very close, ie
similar to his.
In that case, the owner of thetrademark wants to and excuse
the expression but get rid ofwhat he called the counterfeiter
(26:28):
, which is not necessarily thecase.
But the idea is that if someonecoming to my land, I've got to
get rid of him and push it outof my territory.
What happened generally is thatif you are in that position or
if you want to attack someoneelse, you send a cease and
(26:48):
desist letter asking the otherperson to suppress the trademark
, use another name, whatever,but before doing that, you have
to be sure that the other partydoes not have a prior right
somewhere else or even in thesame countries, because, for
example and you were talkingabout someone that is using a
(27:11):
trade name for years and in thatcase 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 rightas a trademark but at least is
known under that name.
What I'm saying there is, forexample, trade names by the
(27:38):
Union Convention of Paris thatdates back to 1883, gives rights
to the owner of a trade name,for example, but just not on the
counterfeit aspect, but ratheron the parasitism or commercial
(28:00):
responsibility.
We can say like this it wouldbe called in some countries
unfair competition.
This aspect has to be takeninto account before sending a
cease and desist letter.
Again, searches should beconducted prior to do that.
If the cease and desist letteris welcomed by the other party
(28:26):
and says oh, I mean, I'msimplifying the matter, I'm
sorry, I didn't know, I promiseI'm changing it, I would say
this is 70 percent of the cases.
(28:49):
We can reach immediately areply which is simple I stopped
being a pain in the neck and Istopped using the trademark.
Sometimes what happens is thatwhen you send a cease and desist
letter, the other party sayswell, yeah, I understand your
issue, but I'm doing somethingthat is slightly different.
(29:10):
Or maybe I can do.
I can limit the use, just amendthe logo I'm using, because we
don't have to forget that atrademark could be a word, but
could be also a design in thesense of a drawing, for example,
(29:33):
or a logo.
So there is a period ofnegotiation that is open and
sometimes we could reach aconsent because, yeah, ok, the
trademark were some kind ofsimilar, but not sufficiently
similar to cause a real issue orreal problem in the
(29:53):
exploitation of my own trademarkbeing prior.
So we conclude a coexistenceagreement or an undertaking,
whichever the legal form ittakes, undertaking, whichever
the legal form it takes.
(30:13):
Now, having said that, it isalso necessary to always have in
mind that but maybe we will betalking about it later on but
it's the notion of protectingyour what I call your land, your
trademark, your rights, becausethis is definitely something
very specific that you have totake care of.
So that means that sometimes,if you have a I mean a
pre-litigation case, just tothink why you're doing it,
(30:39):
what's the purpose of it, isthere any objective or idea of
making it a very strong case orsomething that is just, if I may
say so, take off some scurrieson your land just to make it
clean, so you're not losing thevalue of your assets, ie your
(31:03):
trademark assets the value ofyour assets, ie your trademark
assets.
Leticia Caminero (31:14):
So the most common one would be you find out
that someone is using atrademark that is very identical
or very similar to yours, butbefore you jump ahead and start
legal proceedings, it isrecommended to first find out
like what is this business, howlong they have been doing
business under this trademark Dothey have more time than myself
using this trademark in thecommerce?
(31:34):
And then, after you do thisresearch, the second one is to
approach the person with aformal letter and, according to
your experience, these lettersusually in a majority of cases,
tend to solve the case evenbefore it evolves into an actual
legal conflict.
So it's worth knowing that itis important not to jump right
(31:58):
away to legal action and to takethings slowly to make sure that
you're not doing a mistake thatcan make you cost more, or it
can even take you yourself outof the market if you're not
careful as well.
David-Irving Tayer (32:11):
Yeah, exactly, that's exactly the case
.
And, if I may add something, iswhen you, you have to plan, it's
like a, it's strategic all thetime, strategic in saying do I
have to be a strong shouldermuscles, or can be soft.
Maybe I can just already say,well, I've got an issue, but I
(32:34):
may suggest some kind ofagreement or an amicable
settlement.
So you, you sort of coming upwith a solution, with a solution
it's my way of thinking in mymediation mind, or something
like this, where I always try tothink that the adverse party is
not necessarily a bad guy.
(32:55):
If I can say that, and maybe,if you come up with already a
solution or something that maybe acceptable for the other,
then he will not feel beingaggressed by someone, but rather
we've got a little problem, oryou minimize the problem, even
if it's an important problem,but as you bring a solution, the
(33:18):
adverse party will not think orreact aggressively and would
say, yeah, actually that's notbad and then accept it.
So that's also, you know, it'sall this strategy, the mind map
you have in your mind to acceptand understand the other party's
(33:40):
position, which is generallymore positive for the one that
is actually attacking.
Leticia Caminero (33:51):
Oh, that sounds like great and sound
advice and it really goes withthe next question on the
trademark dispute.
Can become as any legal disputecan become crazy complex, can
be very time consuming, resourceconsuming and also can drag
(34:11):
along a lot of other relatedissues.
Because one of the things thatof course, if you have to go to
court, you have to go to court.
There's some cases that are soconflictive or so unique or they
do require some courtintervention because of specific
matters that cannot be doneoutside the court.
(34:33):
But in the case that the legalconflict is suitable for
mediation, is suitable forfinding a path, a common path
between the parties.
What are the advantages ofhaving a mediation?
(34:54):
I know we talked a little bitbefore, but what would you say
will be the top advantages ofdoing a mediation process
instead of going ahead straightto the courts?
David-Irving Tayer (35:11):
When I was listening to the question I said
well, it's an easy question.
That is actually not easy atall.
Why I'm saying that is that themain advantages of mediation
and I voluntarily put an S tothe word would be the first one,
(35:31):
the cost-effectiveness, becausemediation would most likely be
less expensive than a trial inmost countries.
The second advantage is thetime frame.
For example, I would say inFrance, you have to count about
a year to 18,.
(35:51):
Well, 12 to 18 months for afirst instance case in
counterfeit, which is a longtime, and it's also something
that the entrepreneur or thetrademark owner will have in
mind all the time, because thelawyer will come back.
Well, I need to have someevidence, I need to have that
(36:11):
the element.
Do you have this?
And the entrepreneur, insteadof doing his business, is
somehow, uh, spending some timein an issue that is not his, uh,
day-to-day business, whereasmediation, if it's a positive
(36:33):
mediation, could be made in avery short time.
Sometimes it's just consideredthat, okay, we have 48 hours, 72
hours, to find a solution, andeven if we spend part of the
night in doing CERT, but we arein a short, concise time frame
to find a solution, so it's aconcentration in, I would say in
(36:54):
a one, like a needle you justdo it once and that's it and you
go for it.
This is the second point thatis interesting.
Third one is secrecy.
Again, because there are thingsthat you can provide within the
(37:16):
mediation that will remainsecret all the time, and that's
what the both parties undertakesis that they may have.
Maybe, for example, see thebooks, the accounting books.
They could see information thatare very important but that you
would never, ever give out in atribunal, because that means
(37:38):
that the other party will havecommercial insight of your
company which you will not giveout.
But in mediation it's sort ofwe need to give all this
information to show the otherparty what is the problem, what
is the issue.
And in discussing that, havingall the documents, maybe that
(38:00):
could balance the situation to aproper case, to a solution, to
an amicable settlement, bearingin mind that all those documents
cannot be used once themediation is over.
They have to destroy it, not tothink about it and lack if they
never had it in hand.
Finally, the fourth advantage Iwill see, and that's the one I
(38:26):
was mentioning early on, is thatboth parties, if mediation is
successful.
I had some mediation that werevery, extremely tense, some
(38:52):
words that I would not say nowbut not very nice, and finally,
once they have, let's say, takethat out of from their heart,
the entrepreneur finally smile,discuss and find a solution.
But you have that step that isgenerally necessarily happening.
(39:20):
But both parties come out happyand that's, I guess I would say
this is more of a personalcomment, but I'm very happy to
see when both parties are happy.
Speaker 2 (39:37):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Leticia Caminero (39:46):
So it can even be therapeutic in a way.
David-Irving Tayer (39:50):
In a way, mediation is something like a
therapist with you.
Leticia Caminero (39:56):
Yeah, because you can release all the anger
you've been accumulating sincethe beginning of the conflict.
Okay, now I said my piece, wecan start talking like persons
again.
Yeah, exactly.
Okay, okay, it seems like alsolike quite a responsibility for
the mediator to make sure that,okay, you give them space to
(40:19):
express themselves, but also notto be disrespectful in a way
that you can take things thatyou set back or things get
escalate in the conflict itselfbecause of what the other party
is saying, what the other personis expressing in the moment.
So it's a science and an art,in a way, to be a mediator a
(40:45):
mediator.
David-Irving Tayer (40:46):
To be honest , we have three actors,
generally speaking, is themediator and the counsel of each
party that may be present inthe mediation.
The hardest part because I wassometimes the mediator and
sometimes the counsel of oneparty the most difficult thing
(41:07):
is that, as an attorney, youhave to forget that you are an
attorney and you are not doinglitigation.
You have to help your clientand the other party to express
themselves, to expressthemselves.
The mediator has the hard taskto make each party come to the
(41:34):
middle place, even if they saywell, you can shout, you can
insult, but be respectful, youcan express whatever you want.
And all that work, if I may sayso and you were talking about
therapy, but that's roughly.
The idea is to make people feelcomfortable, say what they have
(42:00):
to say and, as I say, even ifit's in shouting, because that's
the first necessary step is myanger.
Why am I angry?
And then what will solve myangriness against the other?
And when we have that triptych,well, the solution, like not
(42:23):
saying mercuriously, will comeout easily and softly and
without any not saying thatthere is no discussion or
negotiation, but it is clearlymore soft than in other places,
less cozy, if I can say so, evenif I was talking about finding,
(42:49):
but it is a specific place,like if you were outside the
time, outside the world, outsideeverything.
It's a bubble.
We're all together and we'vegot to strive to find something
that is equity for both, justicefor either, and the worst, or
(43:10):
the most difficult part is, Iwould say it's generally the
attorney that is not keen infinding a solution and is more
thinking about going tolitigation because, litigation
is good, but no, I think thatmediation is even better.
(43:33):
not for all cases, but it isdefinitely better than a bad
case before a judge.
Leticia Caminero (43:44):
So it's also a challenge, not only for the
parties but also to theattorneys involved.
Definitely, because it's veryhard.
Well, as an attorney myself,it's to make the shift because
you are often and you're socomfortable thinking in legal
terms, thinking in legalprocesses, thinking in legal
(44:06):
terms, thinking in legalprocesses, thinking of the best
way you can get the other partyor the best way you can win.
This because it's in thetraining that they give us in
law school.
So it's something that it's notso easy to release or to let go
(44:28):
.
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 thesuit of the lawyer, which
requires the suit of themediator or an attorney
representing in a mediation case.
David-Irving Tayer (44:50):
Yeah, you're so right in saying that when we
are trained as a lawyer, thatwe are trained to litigate and
not much in mediation ormediating thing, and when you
were saying it's the hardestthing, yes, we're happy to win
and that's what we're lookingfor.
We are for the client.
(45:10):
But when you just go one stepfurther, you say what is the
interest, advantage, opportunityfor the client?
And when then you go one stepjust above and you say, well,
maybe leaving or lettingsomething to the other party
would be even more positive forthe client.
(45:31):
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 yourclient to win something which is
positive.
It's not about them to win.
Leticia Caminero (45:51):
So it's winning in the biggest picture
possible, exactly In the broadersense possible, not just this
bit, but in the long run, whatwould be better for your client
if they mediate, find a solutionand if they grow together to
find a common ground?
(46:12):
So with that we can move on tothe strategies and best
practices that you wouldrecommend for achieving a
successful mediation.
Achieving as a self-limitation.
David-Irving Tayer (46:28):
Ah, as I say , the first part is to
sufficiently prepare your clientto be in a position of feeling
comfortable in the idea, notsaying we've got to fight, let's
(46:54):
take all the weapons and stuff.
No, no, no, no, no.
You can use things, that's forsure.
You can express yourself, butit's just to make all the
animosity you have in theadverse party come out.
And that's the part of yourpreparation with the client in
(47:18):
making him feel comfortable andsay 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 togo if you're not a lawyer.
And in preparing that is makingyour client open-minded,
(47:40):
positive, even if it's beenattacked or whatever, it doesn't
matter.
What we're going for is anissue.
It is a positive issue.
What we were saying just a fewminutes ago is sometimes the
hardest part is to make theother party's lawyer make the
(48:01):
same job as you are doing, jobas you are doing.
And, to be honest, once I hadto.
Well then I was sermoned by themediator, but I, not very
nicely, but asked the adverseparty's lawyer if he's really in
the mind of a mediation,because he was just
(48:23):
systematically counter-arguing,presenting cases, presenting
legal text and stuff.
And I said, well, that's notthe point.
We're here to discuss, like ifwe're having a cup of tea and we
discuss the matter likegentlemen.
Well, he didn't like it, but itwas necessary for me to put
(48:44):
that pressure to make him godown, calm down and be more
positive, and that's one of thepart that is uh sometimes
difficult, um, and, as I said,uh, when I was telling that the
uh, that the party should be ina sort of um, comfortable, cozy
(49:05):
place, place, just to make himfeel that we are discussing, as
I say, around a cup of tea,we're discussing with someone
else.
We disagree on some subjectmatter, it doesn't matter,
because we present all our cases, our arguments, the factual
arguments and even sometimes thepersonal arguments, the factual
(49:28):
arguments and even sometimesthe personal arguments and if
mediation, as I say, is notalways the option to go for,
because we have some cases whereit's a, I would say, clear-cut
case I cannot let the other oneuse the trademark.
It is not possible, there is noway.
Let the other one use thetrademark, it is not possible,
there is no way.
But for not legal reason orjust because I want to annoy the
(49:51):
other one.
It's like, let's imagine thiscomplete preservation of the
case.
That would never occur.
Well, I assume.
But if you decide to find thetrademark Coca-Cola, you can
imagine that Coca-Cola willnever, ever let you use
trademark Coca-Cola.
(50:11):
So in that case, obviously,mediation would not have any
kind of interest.
But sometimes you could have asituation and if I'm taking an
extreme example, but if I'mfiling a trademark Coca-Cola
extreme example but if I'mfiling a trademark, that might
be a case where you could havemediation, independent of the
fact that of the notoriety ofCoca-Cola.
(50:33):
But when you think about it, ifthey're not doing beverages and
they're doing something else,whatever, maybe mediation could
be a case because even if it'snot a clear-cut case, even if
there is a risk or potentialrisk of confusion, maybe an
amicable solution could occur.
Strangely enough, even if I'musing an extremely well-known
(51:00):
trademark.
So this is where the mediationhas its limit.
It's when you have somethingthat actually will not be
possible to solve in any kind ofagreement.
Therefore, mediation would nothave any opportunity of being
put in work.
Leticia Caminero (51:19):
So in this obvious scenario where it is
very unlikely that it wouldreach to a solution, or where it
is a clear infringement casethat you want to use Coca-Cola
for selling water, that is notgoing to happen, for example.
Definitely not.
But wouldn't you say that alsothe party itself, the person
(51:49):
whose business you'rerepresenting, that there's some
work that they also need to doon their part when they're
coming into a mediation insteadof a litigation?
David-Irving Tayer (52:27):
I would say there's one extra work to be
done by the party that comesinto litigation is to be you
might find it strange, butemotionally involved in the case
.
That's the extra work, but it'sfor a short time period of time
that you are doing so.
The other thing is all theelements, but that's as usual
and, as you said, you're anattorney, we know that we have
to ask the clients to give usevidence, documents, proof,
because we don't have them.
(52:48):
So they do have to work a bit.
But then afterwards it's ratheras I was explaining it, it's a
discussion both emotionallycommercially, both emotionally
commercially and all this, mycompany has an issue.
(53:10):
For that reason and that reason,whichever the way they put it,
it's the work of the attorneyafterwards to write the musings
or the lyrics of the agreementand translating the idea of both
parties.
So the work or the involvementin the mediation is, I would say
(53:35):
, not more important, becausethat's not exactly the word, but
you're not a third party to thecase.
Like in the litigation, thetrademark owner may feel like
he's a third party.
Well, someone is talking for me, someone is setting the
writings for me, someone is theattorney, whereas in mediation
(53:58):
we want and we need to have,because that's the principle the
trademark owner be present inthe case and discuss.
Leticia Caminero (54:12):
So being personal is a good thing in
mediation.
David-Irving Tayer (54:17):
In my point of view yes.
Leticia Caminero (54:19):
Okay, it's quite a different take.
It's like well, this is onlybusiness, don't get your
emotions, take the best of you.
But in this case, talking andchanneling emotions can be a
positive process.
On mediation, yeah.
Okay, perfect.
So, david, for the lastquestion, which is, I think, a
(54:43):
bit complex because it's afairly new topic that we haven't
discussed so far it's aboutvaluating IP rights and how
proper valuation of IP rights iscrucial, or can be crucial, in
(55:04):
a mediation process.
So can you tell us yourapproach when it comes to
valuing IP rights, sheddinglight on why this process is
crucial, particularly in thecontext of business operating in
the digital age, and can youtell us the connection between
(55:25):
proper IP valuation and amediation process?
David-Irving Tayer (55:31):
Wow.
Leticia Caminero (55:35):
Just a normal question, just to wrap up.
David-Irving Tayer (55:39):
It's a clear , very simple question that
doesn't need to make a longdevelopment on it.
I'll be trying to make it assimple as possible and give you
the first hint on the subject.
Valuation of IP, trademarkrights, patents, whatever all
(56:05):
the intellectual property rightsis something that is more and
more vital and essential for acompany.
Don't forget that IP rights isthe assets of a company.
It is like a flat or a houseand you have to take care of it.
You have to repair it.
You have to improve it.
(56:25):
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 willrepair that issue.
If there's water that comes in,you will make the necessary
step.
And a full trademark or anIPRite, it's exactly the same,
except an export trademark or anIPRite, it's exactly the same.
Why I'm saying that is thatyour trademark has a value, not
(56:51):
because you filed it, butbecause you are exploiting the
trademark.
And once you're exploiting thetrademark, that makes that
trademark having a value in asense, either to value your
company, but also if you want tosell that company or if you
want to sell that departmentusing the trademark.
The value of it is not the costyou find it, but it's what it
(57:16):
makes money with it, how yougenerate cash, if I can use the
slang word in using thattrademark.
So there are several thingsthat you have to put in place.
For example, if you're usingyour trademark in, let's say,
europe and in the US, but youfind only your trademark in
(57:39):
Europe, but then you've got agap of protection that means
you're not protected on an IPtrademark right in the US, so
the valuation of your trademarkwill go down definitely.
I mean, it's just logicalbecause if you're not protected,
you do not have an intellectualproperty right in the concerned
(58:02):
countries and therefore it'slacking the value.
So it's always get in aposition saying well, I'm going
to open a new market.
Do I have my trademarkregistered there?
First question.
Second question do I have anyissue with some third parties
that may have filed an identicalor similar trademark in that
(58:23):
country?
You have to think also that, forexample, you are doing some
kind of goods and you developnew goods and products or
services.
Am I protected for those goodsand services?
If this is not the case, thenyou have to think about
protecting them.
So it's always taking time tocheck your asset.
(58:46):
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 IPrights to be sure that
everything is in order, that noone is there to be a bug.
In the context, you'reexploiting your trademark.
So I was saying checking theterritory where it is protected,
(59:08):
checking the goods and servicesfor which they are exploited,
but also is putting in placewatches.
What I'm talking about this isif someone files a trademark,
let's say, in the US.
You have a trademark in the US,but someone is filing a
(59:28):
trademark in the US or startusing it, you will not be aware
of it unless you are checkingwhat's going on and what is
being filed, because no one willtell you that and maybe that
will come from your marketingdepartment or maybe your friends
say oh well, I've seen thattrademark, it's almost like
(59:50):
yours, whatever, but you've gotan information.
Sometimes after the filing, ifyou're putting in place a watch
or civilians on your IP rights,you will be informed very
quickly and you can act veryquickly again.
So you just take down an issuewith someone that is trying to
(01:00:14):
make or to use a trademark thatis similar to yours.
So it would be mediation,negotiation, recovering
opposition, for example.
There are several tools to wellI mean basically what we've
been talking about for about anhour to be sure that your
(01:00:36):
trademark is not devaluating bythe fact that someone else is
coming in.
Just to give you an example, ifyou are known by your trademark
, if you see that several otherpeople are using the same
trademark, then you're for theconsumer.
Your, your trademark is atrademark that I can see
(01:00:58):
everywhere for other goods orfor similar goods, whatever.
So well, there's no value.
I'm not going for your companymore than another just because
it's you.
No, you're known by yourtrademark or the goods or
service is known by saidtrademark.
So that's one of the aspects onthe, I would say, the brick and
(01:01:20):
mortar subject matter.
On the second one is all thatyou were talking about, the
digital.
That again, several issues thathave to be taken into
consideration is am I present onthe web?
Do I have a domain name?
Do I have a website?
Do I have some account invarious social media?
(01:01:45):
I don't know, whatever you canimagine.
I mean the LinkedIn, google,facebook, instagram, snapchat,
whatever You've got all thoseplaces, where should I be there?
And some people are thinkingalso, should I be there on a
Wikipedia page?
There on a Wikipedia page, eachsocial network or each place on
(01:02:11):
the internet?
And I was talking about alsothe 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 anissue, for that Is someone using
(01:02:33):
any kind of platform thatcreates with the artificial
intelligence a new logo or stuff, but that actually is a
counterfeit of my logo, becauseI don't know the person that
made the script led to recreatean identical or similar logo to
(01:02:54):
mine.
All those issues should bechecked and verified.
So here again, am I present?
Do I have the domain names?
Not saying that you have totake all domain names with all
the extension, the com, net, org, fr, couk, uk, whatever all the
(01:03:15):
extension of the domain name,or should I just take what I
need to have, for example, comand es if you're in Spain, or t
for Germany, germany or fr forFrance?
I'm taking what I consider thatI need for my communication and
then I check, set up, watch tosee if someone else is taking my
(01:03:42):
trademarkanother extension, isit an issue?
Is it causing problem?
Is it destroying my referenceon Google, yahoo or any search
engine?
All those aspects should bealways watched and checked for,
avoiding, on one side, thedevaluation of my trademark, but
(01:04:02):
also all the issue that couldbe occurring, for example, if
someone is taking a domain andthat looks like your trademark
and sends email to yourcompetitors to obtain a contract
or try to obtain personal datafrom your clients.
You see, there's all kind ofI'm not saying new matter or new
(01:04:29):
legal matter, because I dobelieve that it existed before.
It's just an adaptation of whatwas done in the brick and
mortar life.
On the digital life.
Scamming is something thatexists for ages, but now it's
called scamming because it'sdone on the Internet via email
(01:04:52):
Phishing, ie collecting eitherpersonal data or financial
information, making one believethat you are the legitimate
person asking for those.
So you see, there's a lot ofthings that come up and if the
question is difficult becauseit's very complete and contains
(01:05:16):
a lot of elements, it's actuallyfairly simple.
I mean, obviously, when youhave the expertise and you spend
time in doing so.
But it's always thinking whatdo I have, what is my territory?
What is my let's say my land?
Do I want people to get in ornot?
Am I organizing people to allowthem coming in?
(01:05:36):
That would be the licenseagreement or the coexistence
agreement.
Am I requesting someone todistribute my products?
Then I will give him the rightto do something on my land.
You see, it's always that thingthat is organized.
You protect your land also,that you don't want to have
invaders and, in order to makethat fairly simple, you actually
(01:06:02):
increase the value of yourtrademark and IP rights because
you are showing that you are theone, the only one, and that's
what the value of yourtrademarks become.
I don't know if my answer isless complicated than your
question.
Leticia Caminero (01:06:21):
I think you de-complicated my very
complicated question.
Think you de-complicated myvery complicated question.
So it's fairly straightforwardhow to keep the value of your
trademark then.
So you need to be vigilant, youneed to understand your market,
you need to have presence whereyou should have presence and
(01:06:42):
registration where you haveregistration.
So it's about being a good partof the familias that's a term
that we like to use a lot incivil law that you take care of
your property.
You take care of your propertyin the best possible way that
(01:07:02):
you can, and IP, even if it'sintangible, it is property and
and is the trademark, is the waythat people identify you and
people connect to your productand services.
So it is the face with thepublic and and its valuation is
going to directly impact yourproduct valuation or your
(01:07:27):
services valuation.
David-Irving Tayer (01:07:29):
Yeah, exactly, see, that's even
clearer than what I said.
Leticia Caminero (01:07:35):
I'm just learning from you, David.
I'm just learning from you.
But with this, I think we'reready to wrap up.
Any final wise words that youwould like to share with us?
David-Irving Tayer (01:07:49):
Final word possible Wise?
I'm not sure.
No, I do.
Thank you, leticia, forinviting me.
It was a very nice moment tospend on and, as you can see, ip
valuation mediation isbasically myself and I really
enjoyed it.
Thank you very much again.
Thank you, david.
Mediation is basically myselfand I really enjoyed it.
Thank you very much again.
Leticia Caminero (01:08:09):
Thank you, david, for joining and thank you
for sharing your greatknowledge.
I'm very happy that we havethis conversation and, yeah,
looking forward to meeting again, to talk again and to further
discuss these matters.
David-Irving Tayer (01:08:27):
Would be a pleasure.
Leticia Caminero (01:08:33):
We have reached the end of our episode.
Greetings from Switzerland.
Speaker 2 (01:08:38):
Thank you for listening to Intangiblia, the
podcast of Intangible Lawplaying talk about intellectual
property.
Did you like what we talkedtoday?
Please share with your network.
Do you want to learn more aboutintellectual property?
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
(01:08:58):
Visit our websitewwwintangiblecom.
Copyright Leticia Caminero 2020.
All rights reserved.
This podcast is provided forinformation purposes only.
In some way there won't be one winner and
one loser.
There would be two winnersbecause both parties will have
breached an agreement consensuson their own, if I may say so or
at least they would believethat, in the idea that they
finally signed an agreementwhere both of them are very
(00:23):
happy with it, and that's animportant thing when we're
talking about mediation.
Speaker 2 (00:30):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Please welcome your host,leticia Caminero.
Leticia Caminero (00:41):
Taking it all for the win is not necessarily a
good business strategy.
Having always a winner, havingalways 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
(01:04):
compromise, how to find middleground.
We discuss with our gueststoday about mediation.
Mediation, an amazing tool thatcan help you find winners in
almost every possible scenario.
Let's welcome our guest.
David-Irving Tayer (01:29):
Yeah, very good morning, leticia.
I'm David Tyer, I'm a Frenchcitizen and I'm 50-ish.
I'm an attorney certified bythe French Bar as an IP
specialist.
Just to make a clear or quickpresentation of myself, I
studied law in the UK beforecompleting my studies in France
(01:54):
with an LLM in Europeancomparative laws and then an LLM
in IP law.
That's my study background, Icould say.
Then I've done some other thingslike certification in mediation
and arbitration in IEP and IET.
I'm also an arbitrator invarious domain and arbitration
(02:16):
center for some years now.
I started as a trademark agentfor some years and then became a
registered barrister orattorney in France.
I'm actually workingessentially in IEP and I'm
(02:36):
saying essentially, it mightactually be totally in IEP ie
intellectual property andInternet, telecommunication and
stuff like this domain namearbitration and mediation and
I've been doing this for about20 years now.
This is why I was talking aboutthe 50-ish.
My day-to-day is obtaining andexecution of filing and
(03:04):
trademarks, patents, domainnames, designs and stuff, but
also negotiating contractagreements.
Also, all that is concern issuethat you could have in the
digital world, including themetaverse and any other verse we
(03:24):
can know about now.
Leticia Caminero (03:27):
Quite an extensive experience in all IP
related matters, and today we'regoing to talk about especially
on mediation in trademarks.
But before we do that, I wouldlike to ask a broader question
regarding the challenges thatbusiness may face during
trademark registration, thetrademark process, the trademark
(03:47):
journey.
So how would you identify orwhich would you say are the most
common challenges thatbusinesses face when doing a
registration process for atrademark, and how would you
recommend navigating thosecommon challenges?
David-Irving Tayer (04:06):
That's one of the hardest time for the
entrepreneur in the process oftrademark registration.
I'm saying hardest time it isessentially due to the fact that
finding a proper trademark or atrademark that is not in
conflict with a prior one, it isto determine whether, first,
(04:30):
the trademark is not describingthe goods or the services that
you want to protect, ie the oneyou are going to sell and what
I'm saying.
The non-descriptive means thatthe name or the logo that you
are going to sell and what I'msaying the non-descriptive means
that the name or the logo thatyou are using is not describing,
(04:51):
in whichever manner, the goodsor services you're selling.
In other words, I cannot file atrademark chair for selling
chairs, which is the commonexample we can use.
But once we have determined thegood trademark or the one that
(05:13):
talks to me as the entrepreneurand for which I've got a
storytelling for it, whether itis an important one or a short
one, we have to determinewhether there exists any prior
rights, ie other trademarks ordomain names or commercial names
that would be used by someoneelse and doing exactly the same
(05:37):
activity.
So the first step we have to dois go for a prior right search
In the territory you want tofile a trademark.
If the trademark is aimed atbeing used in several countries,
it is wise to proceed with thattrademark search in all the
(05:57):
concerned countries.
The point of that is todetermine whether you will find
other people's trademark thatobviously would be filed before
yours and that may be anobstacle to proceed with the
project.
The challenge there is thatonce you proceed with the prior
(06:19):
right search, if we do not findany prior rights, then that's
fine.
If we do not find any priorrights, then that's fine, you
can go on.
If you find one that may be anobstacle, then we have to
determine whether you have astrategy to overcome the prior
right.
First would be maybe they don'thave the exactly same activity,
(06:41):
so we will draft the list ofgoods and services to avoid any
conflict.
Or, if there is some overlap,let's try, for example, to
contact the owner and obtain anagreement with them.
The difficulty there is that ifyou look for an agreement, that
(07:03):
means that you are informingthe other party that you intend
to do something that isconsidered by yourself as
similar.
So it might be touchy to dothat, because you're informing
the person where maybe therewon't be any real conflict.
After all, Once we overcome thefirst issue on the prior right
(07:25):
search, then we proceed with thefiling of the trademark and
there may be some objection, inother words refusal from the
intellectual property office, inthe sense that they may
consider that the specificationof goods is not sufficiently
(07:45):
clear or should be adapted orslightly modified.
Generally I mean, as we havesome kind of experience we
normally avoid at the maximumthat kind of objection.
There used to be someobjections raised on the
non-distinctiveness of thetrademark.
(08:05):
The non-distinctiveness is whatI was talking about early on is
the idea that the trademarkdescribes the goods or the
services.
It becomes more rarely to havethat kind of objection.
Well, in my experience,essentially because, as a
(08:28):
trademark attorney, we arenormally examining whether the
trademark would be liable to bea non-distinctive trademark and
if this is the case, then wewill recommend the clients not
to file the trademark.
So that's the second step thatcould be involved in the process
(08:49):
of the filing of a trademark.
The last one is once yourtrademark is being accepted, it
will be published and oncepublished, any third party may
file an opposition.
In the event he had a trademarkthat he considers as similar or
(09:12):
close to the one you just find.
Well, if you've done the priorright search, normally you
shouldn't face that issue.
Or it is someone that believesthat the trademark is very close
to his.
In that case he may find anopposition, which is an
administrative proceedingsgenerally, and we start either
(09:37):
counter argue the opposition orand that's one of the approach
that I would privilege is thenegotiation of an agreement,
Because generally what happensis that someone believes you are
reproducing his trademark.
Okay, fair enough.
You have to think at what stagethere is a real risk of
(10:01):
confusion, because that's themain idea you have in trademark
matter is is there a possibilitythat the consumer, when he sees
one's mark, believes it's theother one's trademark?
If this is the case, then thereis a risk of confusion.
But that can be either overcome, because there is no actual
(10:24):
risk of confusion and we have todemonstrate it, or because the
goods and services aresufficiently different to be
sure that the consumer would notbe the same.
If I'm selling, for example,sweets, this is definitely not
similar to what can I say easilywould be cars, but something
(10:50):
that would be eaten, oralcoholic beverages, for example
.
You do not buy sweets andalcoholic beverages in the same
market or in the same place inone market.
That's what I could say in theprocess, but generally it's
fairly straightforward.
Leticia Caminero (11:10):
So the key is selecting the right trademark
according to prior research,according to advice, of what is
considered distinctive in thistype of product or this type of
services.
So it's choosing right on thefirst instance in order to
minimize any risks.
David-Irving Tayer (11:30):
Yeah, exactly, that's exactly the
point we are looking for is tomake sure that, when we are
going to do something, the placeis sufficiently clean, if not
totally clean, to go for itclean, if not totally clean to
(11:51):
go for it to avoid any risk that, in the event, would be costly,
time consuming and with nointerest, because necessarily
you would have to, at some stageeither change your trademark.
So that means that all we arepreparing prior to finding a
trademark and the explanation ofthe trademark is exactly to say
what I'm investing now is justto make my trademark
(12:12):
sufficiently valuable and tocarry on and make on my business
.
Leticia Caminero (12:17):
The first thing that we will recommend,
then, is take advice fromsomeone who knows, and follow
the advice in the process ofcreating your trademark, because
it often happens that theentrepreneur or the person who's
trying to do the process ofregistration has already a
(12:37):
trademark in mind, or even isalready using this trademark in
commerce, before going andtrying to file for registration.
So this is one of the thingsthat entrepreneurs and any other
person who is navigating thistrademark registration needs to
keep in mind that it isimportant to do your research.
(12:59):
It's important to do the leadwork beforehand in order to
avoid unnecessary payments or inorder to avoid unnecessary
legal risk that may occur.
So, with this in mind thislegal risk that may happen
throughout a trademark beingused in commerce, or a
registered trademark as well, orany other type of company that
(13:23):
may arise from doing businesswith a trademark or with a
specific brand we can shift tothe resolution of those type of
companies.
As you mentioned before aboutyour mediation background, you
are an arbitrator and a mediatorfor IP matters, specifically in
the WIPO Arbitration andMediation Centre.
(13:45):
Could you tell us thesignificance and the difference
between having a legal conflict,an IP-related legal conflict,
and solving or seeking to solvethat conflict before arbitration
or mediation, instead of goingthe natural road which is going
(14:05):
to the judicial system, going tothe courts.
David-Irving Tayer (14:09):
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 goto court, you go before an
arbitrator in a private placewhere the both parties will
(14:31):
actually litigate the case andthe arbitrator will cast the
case at the end.
This is one side.
So it looks like legal actionbefore a tribunal, except that
you may bring more evidence moreeasily and all is covered by
(14:53):
secrecy.
So all that is being providedin the arbitration will remain
totally secret for third parties, which is one of the advantages
of arbitration.
The second one is the fact thatit may be cost effective.
Even if arbitration may be, Iwould say, expensive in the mind
(15:18):
of the person that launched it,that launch it, it nevertheless
could be more cost effective insome countries where the legal
costs are extremely high andalso the cost for all the due
diligence, for investigation andstuff, which obviously make the
(15:39):
cost extremely increasedcompared to arbitration.
But, for example, in Europe thearbitration is not much
developed except for domainnames.
But that's another aspect ofthe arbitration, just because in
(16:00):
most of the countries in theEuropean Union the costs legal
costs, I would say are not veryexpensive.
So we will tend to go to atribunal, with in mind, again,
the idea that there won't bemore secrecy before the tribunal
, before the tribunal, sorry.
(16:22):
Now if we turn to mediation,mediation is really something
that where people will well, asthe name is mediate, they will
share things and in the case themediator is not here to cast
the case.
He is there to make bothparties reach an agreement, make
(16:43):
both parties reach an agreement.
So the approach of the case ismore of not saying much, but
help the one that is consideringthat there is, for example, a
counterfeit case, explain allhis anger, his difficulties with
(17:04):
the other one's trademark andstuff.
And on the other hand, theother party will also explain
his case, not legally speakingbut more commercially speaking,
and the mediator will make sure,or will attempt to make sure,
that both parties, by discussing, by exchanging matters, finally
(17:28):
reach an agreement.
The advantage of mediation,again, is, well, the cost
compared to legal action, butalso the fact that in some way
there won't be one winner andone loser.
There would be two winnersbecause both parties will have
(17:50):
breached an agreement consensuson their own, if I may say so,
or at least they would believethat, in the idea that they
finally signed an agreementwhere both of them are very
happy with it.
And that's an important thingwhen we're talking about
mediation is that the partiesessentially may be competitors,
(18:17):
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 ofsomething and the other one is
the buyer they like workingtogether for some time and then
they start fighting on thesubject matter, but they still
(18:40):
want to work together andmediation will solve the issue
and probably make both companiescarry on their business happily
.
You see, I would say I mean, ifI'm exaggerating the case it's
like if you're going as aanalyst and you accept the
mediation with it because youfinally found the issue, that
(19:06):
are making one angry to theother, and then everything goes
peacefully settled and then theycarry on their life.
Leticia Caminero (19:19):
So you would say that mediation is more
likely to amend the relationshipafter the conflict is solved?
David-Irving Tayer (19:28):
Yeah, exactly, and in most cases where
the mediation was successful,either the client or the parties
are happy because they feelthey did something positive,
which is not the case when yougo to a legal action not saying
(19:53):
that you never have to go tolegal action before tribunal or
even arbitration, butnecessarily there will be one
loser of the case and one winnerof the case, and both of them
would not be sufficiently happyor they would be extremely angry
with the situation.
Why I'm saying that is that theperson that wins considers that
(20:13):
he never wins enough and theone that loses consider they
lost too much.
So obviously the judge is justcasting 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
(20:36):
could be more innovative in thematter, that a judge cannot
decide when he's judging thecase.
I've got one example, withoutbetraying the professional
secrecy, but two were notdirectly competitors, but they
(20:59):
were in the same field ofactivity to some extent one
producing and selling objects tomake sports and the other one
selling clothes for sports.
So you see, it's not directlythe same consumer, but that
might be an overlap.
One has trademark rights in onecountry prior to the other and
(21:21):
in another country had priorrights to the other.
So there was sort of mix oftrademark rights throughout the
world.
So, technically speaking, if welook at it, company A was
blocked in one country and it'scompany B that is blocked by the
(21:45):
company A in another country.
So there is a blockingsituation all over the place.
But finally, in the mediation wereached the possibility of
making crossed licenseagreements, so actually both
companies can carry on their ownactivity but also were selling
(22:08):
goods of the other, which wasthe adverse party at the origin
and was becoming actually apartner.
So you see that something thatthe case before the judge would
never happen because they cannotforce party to make that
cross-license agreement.
But in this mediation case wefound something that was
innovative and the parties wentout of the mediation or came out
(22:33):
of the mediation with a niceagreement, happy to make
business together.
So you see there's somethingthat is there for mediation and
so you see there's somethingthat is there for mediation not
saying that mediation is theexclusive and the best solution.
It is one tool that we, as anentrepreneur or an entrepreneur,
(22:55):
should think about and notalways think I'm going to fight.
I've got to fight.
Leticia Caminero (23:02):
Yeah, you win more by compromising sometimes.
David, can you further explainthe cross licensing agreement
and what it entails in generalterms?
David-Irving Tayer (23:18):
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 trademarkfor clothes for bikers.
(23:50):
In that situation what I put inplace was that the one that has
the trademark for motorcycle hassigned a license agreement to
sell the goods of clothes forbikers, and the one that is
selling clothes for bikersactually signed an agreement, a
license agreement, to be able tosell motorbikes.
So you see, the owner of eachtrademark gave the authorization
(24:15):
to the other one to use itstrademark, which this is why I'm
talking about cross-license.
It is not just a licenseagreement where one gives the
right to another one to use thetrademark, but it's an inverted
mechanism where both partiesauthorize the other one to use
(24:35):
the trademark.
This is why I'm calling itcross-license, just to make the
partnership fairly positive inthe situation.
Leticia Caminero (24:46):
Well, that sounds like a great and perfect
outcome.
So they resolve their issue,their conflict, but also they
gain a partnership and with thatthey expand the respected
markets, because now they canreach to the competitor or the
other party market as well whilekeeping their own.
(25:09):
So I think that would be anideal solution.
I know it will be hard toreplicate in every case, because
not every case have the samefacts or the same kind of
involvement, but it will begreat that you start with a
conflict and end up with apartnership.
David-Irving Tayer (25:27):
Exactly.
Leticia Caminero (25:29):
So, in your experience, what are the more
common scenarios that may leadto a trademark conflict among
businesses, and how do theseconflicts typically manifest in
legal terms?
David-Irving Tayer (25:43):
Well, the conflicts generally comes up
when someone sees that someoneelse 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 domainname he sees that someone is
(26:05):
using this sign, identical orsimilar to his, for goods or
services that are eitheridentical or very close, ie
similar to his.
In that case, the owner of thetrademark wants to and excuse
the expression but get rid ofwhat he called the counterfeiter
(26:28):
, which is not necessarily thecase.
But the idea is that if someonecoming to my land, I've got to
get rid of him and push it outof my territory.
What happened generally is thatif you are in that position or
if you want to attack someoneelse, you send a cease and
(26:48):
desist letter asking the otherperson to suppress the trademark
, use another name, whatever,but before doing that, you have
to be sure that the other partydoes not have a prior right
somewhere else or even in thesame countries, because, for
example and you were talkingabout someone that is using a
(27:11):
trade name for years and in thatcase 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 rightas a trademark but at least is
known under that name.
What I'm saying there is, forexample, trade names by the
(27:38):
Union Convention of Paris thatdates back to 1883, gives rights
to the owner of a trade name,for example, but just not on the
counterfeit aspect, but ratheron the parasitism or commercial
(28:00):
responsibility.
We can say like this it wouldbe called in some countries
unfair competition.
This aspect has to be takeninto account before sending a
cease and desist letter.
Again, searches should beconducted prior to do that.
If the cease and desist letteris welcomed by the other party
(28:26):
and says oh, I mean, I'msimplifying the matter, I'm
sorry, I didn't know, I promiseI'm changing it, I would say
this is 70 percent of the cases.
(28:49):
We can reach immediately areply which is simple I stopped
being a pain in the neck and Istopped using the trademark.
Sometimes what happens is thatwhen you send a cease and desist
letter, the other party sayswell, yeah, I understand your
issue, but I'm doing somethingthat is slightly different.
(29:10):
Or maybe I can do.
I can limit the use, just amendthe logo I'm using, because we
don't have to forget that atrademark could be a word, but
could be also a design in thesense of a drawing, for example,
(29:33):
or a logo.
So there is a period ofnegotiation that is open and
sometimes we could reach aconsent because, yeah, ok, the
trademark were some kind ofsimilar, but not sufficiently
similar to cause a real issue orreal problem in the
(29:53):
exploitation of my own trademarkbeing prior.
So we conclude a coexistenceagreement or an undertaking,
whichever the legal form ittakes, undertaking, whichever
the legal form it takes.
(30:13):
Now, having said that, it isalso necessary to always have in
mind that but maybe we will betalking about it later on but
it's the notion of protectingyour what I call your land, your
trademark, your rights, becausethis is definitely something
very specific that you have totake care of.
So that means that sometimes,if you have a I mean a
pre-litigation case, just tothink why you're doing it,
(30:39):
what's the purpose of it, isthere any objective or idea of
making it a very strong case orsomething that is just, if I may
say so, take off some scurrieson your land just to make it
clean, so you're not losing thevalue of your assets, ie your
(31:03):
trademark assets the value ofyour assets, ie your trademark
assets.
Leticia Caminero (31:14):
So the most common one would be you find out
that someone is using atrademark that is very identical
or very similar to yours, butbefore you jump ahead and start
legal proceedings, it isrecommended to first find out
like what is this business, howlong they have been doing
business under this trademark Dothey have more time than myself
using this trademark in thecommerce?
(31:34):
And then, after you do thisresearch, the second one is to
approach the person with aformal letter and, according to
your experience, these lettersusually in a majority of cases,
tend to solve the case evenbefore it evolves into an actual
legal conflict.
So it's worth knowing that itis important not to jump right
(31:58):
away to legal action and to takethings slowly to make sure that
you're not doing a mistake thatcan make you cost more, or it
can even take you yourself outof the market if you're not
careful as well.
David-Irving Tayer (32:11):
Yeah, exactly, that's exactly the case
.
And, if I may add something, iswhen you, you have to plan, it's
like a, it's strategic all thetime, strategic in saying do I
have to be a strong shouldermuscles, or can be soft.
Maybe I can just already say,well, I've got an issue, but I
(32:34):
may suggest some kind ofagreement or an amicable
settlement.
So you, you sort of coming upwith a solution, with a solution
it's my way of thinking in mymediation mind, or something
like this, where I always try tothink that the adverse party is
not necessarily a bad guy.
(32:55):
If I can say that, and maybe,if you come up with already a
solution or something that maybe acceptable for the other,
then he will not feel beingaggressed by someone, but rather
we've got a little problem, oryou minimize the problem, even
if it's an important problem,but as you bring a solution, the
(33:18):
adverse party will not think orreact aggressively and would
say, yeah, actually that's notbad and then accept it.
So that's also, you know, it'sall this strategy, the mind map
you have in your mind to acceptand understand the other party's
(33:40):
position, which is generallymore positive for the one that
is actually attacking.
Leticia Caminero (33:51):
Oh, that sounds like great and sound
advice and it really goes withthe next question on the
trademark dispute.
Can become as any legal disputecan become crazy complex, can
be very time consuming, resourceconsuming and also can drag
(34:11):
along a lot of other relatedissues.
Because one of the things thatof course, if you have to go to
court, you have to go to court.
There's some cases that are soconflictive or so unique or they
do require some courtintervention because of specific
matters that cannot be doneoutside the court.
(34:33):
But in the case that the legalconflict is suitable for
mediation, is suitable forfinding a path, a common path
between the parties.
What are the advantages ofhaving a mediation?
(34:54):
I know we talked a little bitbefore, but what would you say
will be the top advantages ofdoing a mediation process
instead of going ahead straightto the courts?
David-Irving Tayer (35:11):
When I was listening to the question I said
well, it's an easy question.
That is actually not easy atall.
Why I'm saying that is that themain advantages of mediation
and I voluntarily put an S tothe word would be the first one,
(35:31):
the cost-effectiveness, becausemediation would most likely be
less expensive than a trial inmost countries.
The second advantage is thetime frame.
For example, I would say inFrance, you have to count about
a year to 18,.
(35:51):
Well, 12 to 18 months for afirst instance case in
counterfeit, which is a longtime, and it's also something
that the entrepreneur or thetrademark owner will have in
mind all the time, because thelawyer will come back.
Well, I need to have someevidence, I need to have that
(36:11):
the element.
Do you have this?
And the entrepreneur, insteadof doing his business, is
somehow, uh, spending some timein an issue that is not his, uh,
day-to-day business, whereasmediation, if it's a positive
(36:33):
mediation, could be made in avery short time.
Sometimes it's just consideredthat, okay, we have 48 hours, 72
hours, to find a solution, andeven if we spend part of the
night in doing CERT, but we arein a short, concise time frame
to find a solution, so it's aconcentration in, I would say in
(36:54):
a one, like a needle you justdo it once and that's it and you
go for it.
This is the second point thatis interesting.
Third one is secrecy.
Again, because there are thingsthat you can provide within the
(37:16):
mediation that will remainsecret all the time, and that's
what the both parties undertakesis that they may have.
Maybe, for example, see thebooks, the accounting books.
They could see information thatare very important but that you
would never, ever give out in atribunal, because that means
(37:38):
that the other party will havecommercial insight of your
company which you will not giveout.
But in mediation it's sort ofwe need to give all this
information to show the otherparty what is the problem, what
is the issue.
And in discussing that, havingall the documents, maybe that
(38:00):
could balance the situation to aproper case, to a solution, to
an amicable settlement, bearingin mind that all those documents
cannot be used once themediation is over.
They have to destroy it, not tothink about it and lack if they
never had it in hand.
Finally, the fourth advantage Iwill see, and that's the one I
(38:26):
was mentioning early on, is thatboth parties, if mediation is
successful.
I had some mediation that werevery, extremely tense, some
(38:52):
words that I would not say nowbut not very nice, and finally,
once they have, let's say, takethat out of from their heart,
the entrepreneur finally smile,discuss and find a solution.
But you have that step that isgenerally necessarily happening.
(39:20):
But both parties come out happyand that's, I guess I would say
this is more of a personalcomment, but I'm very happy to
see when both parties are happy.
Speaker 2 (39:37):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Leticia Caminero (39:46):
So it can even be therapeutic in a way.
David-Irving Tayer (39:50):
In a way, mediation is something like a
therapist with you.
Leticia Caminero (39:56):
Yeah, because you can release all the anger
you've been accumulating sincethe beginning of the conflict.
Okay, now I said my piece, wecan start talking like persons
again.
Yeah, exactly.
Okay, okay, it seems like alsolike quite a responsibility for
the mediator to make sure that,okay, you give them space to
(40:19):
express themselves, but also notto be disrespectful in a way
that you can take things thatyou set back or things get
escalate in the conflict itselfbecause of what the other party
is saying, what the other personis expressing in the moment.
So it's a science and an art,in a way, to be a mediator a
(40:45):
mediator.
David-Irving Tayer (40:46):
To be honest , we have three actors,
generally speaking, is themediator and the counsel of each
party that may be present inthe mediation.
The hardest part because I wassometimes the mediator and
sometimes the counsel of oneparty the most difficult thing
(41:07):
is that, as an attorney, youhave to forget that you are an
attorney and you are not doinglitigation.
You have to help your clientand the other party to express
themselves, to expressthemselves.
The mediator has the hard taskto make each party come to the
(41:34):
middle place, even if they saywell, you can shout, you can
insult, but be respectful, youcan express whatever you want.
And all that work, if I may sayso and you were talking about
therapy, but that's roughly.
The idea is to make people feelcomfortable, say what they have
(42:00):
to say and, as I say, even ifit's in shouting, because that's
the first necessary step is myanger.
Why am I angry?
And then what will solve myangriness against the other?
And when we have that triptych,well, the solution, like not
(42:23):
saying mercuriously, will comeout easily and softly and
without any not saying thatthere is no discussion or
negotiation, but it is clearlymore soft than in other places,
less cozy, if I can say so, evenif I was talking about finding,
(42:49):
but it is a specific place,like if you were outside the
time, outside the world, outsideeverything.
It's a bubble.
We're all together and we'vegot to strive to find something
that is equity for both, justicefor either, and the worst, or
(43:10):
the most difficult part is, Iwould say it's generally the
attorney that is not keen infinding a solution and is more
thinking about going tolitigation because, litigation
is good, but no, I think thatmediation is even better.
(43:33):
not for all cases, but it isdefinitely better than a bad
case before a judge.
Leticia Caminero (43:44):
So it's also a challenge, not only for the
parties but also to theattorneys involved.
Definitely, because it's veryhard.
Well, as an attorney myself,it's to make the shift because
you are often and you're socomfortable thinking in legal
terms, thinking in legalprocesses, thinking in legal
(44:06):
terms, thinking in legalprocesses, thinking of the best
way you can get the other partyor the best way you can win.
This because it's in thetraining that they give us in
law school.
So it's something that it's notso easy to release or to let go
(44:28):
.
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 thesuit of the lawyer, which
requires the suit of themediator or an attorney
representing in a mediation case.
David-Irving Tayer (44:50):
Yeah, you're so right in saying that when we
are trained as a lawyer, thatwe are trained to litigate and
not much in mediation ormediating thing, and when you
were saying it's the hardestthing, yes, we're happy to win
and that's what we're lookingfor.
We are for the client.
(45:10):
But when you just go one stepfurther, you say what is the
interest, advantage, opportunityfor the client?
And when then you go one stepjust above and you say, well,
maybe leaving or lettingsomething to the other party
would be even more positive forthe client.
(45:31):
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 yourclient to win something which is
positive.
It's not about them to win.
Leticia Caminero (45:51):
So it's winning in the biggest picture
possible, exactly In the broadersense possible, not just this
bit, but in the long run, whatwould be better for your client
if they mediate, find a solutionand if they grow together to
find a common ground?
(46:12):
So with that we can move on tothe strategies and best
practices that you wouldrecommend for achieving a
successful mediation.
Achieving as a self-limitation.
David-Irving Tayer (46:28):
Ah, as I say , the first part is to
sufficiently prepare your clientto be in a position of feeling
comfortable in the idea, notsaying we've got to fight, let's
(46:54):
take all the weapons and stuff.
No, no, no, no, no.
You can use things, that's forsure.
You can express yourself, butit's just to make all the
animosity you have in theadverse party come out.
And that's the part of yourpreparation with the client in
(47:18):
making him feel comfortable andsay 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 togo if you're not a lawyer.
And in preparing that is makingyour client open-minded,
(47:40):
positive, even if it's beenattacked or whatever, it doesn't
matter.
What we're going for is anissue.
It is a positive issue.
What we were saying just a fewminutes ago is sometimes the
hardest part is to make theother party's lawyer make the
(48:01):
same job as you are doing, jobas you are doing.
And, to be honest, once I hadto.
Well then I was sermoned by themediator, but I, not very
nicely, but asked the adverseparty's lawyer if he's really in
the mind of a mediation,because he was just
(48:23):
systematically counter-arguing,presenting cases, presenting
legal text and stuff.
And I said, well, that's notthe point.
We're here to discuss, like ifwe're having a cup of tea and we
discuss the matter likegentlemen.
Well, he didn't like it, but itwas necessary for me to put
(48:44):
that pressure to make him godown, calm down and be more
positive, and that's one of thepart that is uh sometimes
difficult, um, and, as I said,uh, when I was telling that the
uh, that the party should be ina sort of um, comfortable, cozy
(49:05):
place, place, just to make himfeel that we are discussing, as
I say, around a cup of tea,we're discussing with someone
else.
We disagree on some subjectmatter, it doesn't matter,
because we present all our cases, our arguments, the factual
arguments and even sometimes thepersonal arguments, the factual
(49:28):
arguments and even sometimesthe personal arguments and if
mediation, as I say, is notalways the option to go for,
because we have some cases whereit's a, I would say, clear-cut
case I cannot let the other oneuse the trademark.
It is not possible, there is noway.
Let the other one use thetrademark, it is not possible,
there is no way.
But for not legal reason orjust because I want to annoy the
(49:51):
other one.
It's like, let's imagine thiscomplete preservation of the
case.
That would never occur.
Well, I assume.
But if you decide to find thetrademark Coca-Cola, you can
imagine that Coca-Cola willnever, ever let you use
trademark Coca-Cola.
(50:11):
So in that case, obviously,mediation would not have any
kind of interest.
But sometimes you could have asituation and if I'm taking an
extreme example, but if I'mfiling a trademark Coca-Cola
extreme example but if I'mfiling a trademark, that might
be a case where you could havemediation, independent of the
fact that of the notoriety ofCoca-Cola.
(50:33):
But when you think about it, ifthey're not doing beverages and
they're doing something else,whatever, maybe mediation could
be a case because even if it'snot a clear-cut case, even if
there is a risk or potentialrisk of confusion, maybe an
amicable solution could occur.
Strangely enough, even if I'musing an extremely well-known
(51:00):
trademark.
So this is where the mediationhas its limit.
It's when you have somethingthat actually will not be
possible to solve in any kind ofagreement.
Therefore, mediation would nothave any opportunity of being
put in work.
Leticia Caminero (51:19):
So in this obvious scenario where it is
very unlikely that it wouldreach to a solution, or where it
is a clear infringement casethat you want to use Coca-Cola
for selling water, that is notgoing to happen, for example.
Definitely not.
But wouldn't you say that alsothe party itself, the person
(51:49):
whose business you'rerepresenting, that there's some
work that they also need to doon their part when they're
coming into a mediation insteadof a litigation?
David-Irving Tayer (52:27):
I would say there's one extra work to be
done by the party that comesinto litigation is to be you
might find it strange, butemotionally involved in the case
.
That's the extra work, but it'sfor a short time period of time
that you are doing so.
The other thing is all theelements, but that's as usual
and, as you said, you're anattorney, we know that we have
to ask the clients to give usevidence, documents, proof,
because we don't have them.
(52:48):
So they do have to work a bit.
But then afterwards it's ratheras I was explaining it, it's a
discussion both emotionallycommercially, both emotionally
commercially and all this, mycompany has an issue.
(53:10):
For that reason and that reason,whichever the way they put it,
it's the work of the attorneyafterwards to write the musings
or the lyrics of the agreementand translating the idea of both
parties.
So the work or the involvementin the mediation is, I would say
(53:35):
, not more important, becausethat's not exactly the word, but
you're not a third party to thecase.
Like in the litigation, thetrademark owner may feel like
he's a third party.
Well, someone is talking for me, someone is setting the
writings for me, someone is theattorney, whereas in mediation
(53:58):
we want and we need to have,because that's the principle the
trademark owner be present inthe case and discuss.
Leticia Caminero (54:12):
So being personal is a good thing in
mediation.
David-Irving Tayer (54:17):
In my point of view yes.
Leticia Caminero (54:19):
Okay, it's quite a different take.
It's like well, this is onlybusiness, don't get your
emotions, take the best of you.
But in this case, talking andchanneling emotions can be a
positive process.
On mediation, yeah.
Okay, perfect.
So, david, for the lastquestion, which is, I think, a
(54:43):
bit complex because it's afairly new topic that we haven't
discussed so far it's aboutvaluating IP rights and how
proper valuation of IP rights iscrucial, or can be crucial, in
(55:04):
a mediation process.
So can you tell us yourapproach when it comes to
valuing IP rights, sheddinglight on why this process is
crucial, particularly in thecontext of business operating in
the digital age, and can youtell us the connection between
(55:25):
proper IP valuation and amediation process?
David-Irving Tayer (55:31):
Wow.
Leticia Caminero (55:35):
Just a normal question, just to wrap up.
David-Irving Tayer (55:39):
It's a clear , very simple question that
doesn't need to make a longdevelopment on it.
I'll be trying to make it assimple as possible and give you
the first hint on the subject.
Valuation of IP, trademarkrights, patents, whatever all
(56:05):
the intellectual property rightsis something that is more and
more vital and essential for acompany.
Don't forget that IP rights isthe assets of a company.
It is like a flat or a houseand you have to take care of it.
You have to repair it.
You have to improve it.
(56:25):
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 willrepair that issue.
If there's water that comes in,you will make the necessary
step.
And a full trademark or anIPRite, it's exactly the same,
except an export trademark or anIPRite, it's exactly the same.
Why I'm saying that is thatyour trademark has a value, not
(56:51):
because you filed it, butbecause you are exploiting the
trademark.
And once you're exploiting thetrademark, that makes that
trademark having a value in asense, either to value your
company, but also if you want tosell that company or if you
want to sell that departmentusing the trademark.
The value of it is not the costyou find it, but it's what it
(57:16):
makes money with it, how yougenerate cash, if I can use the
slang word in using thattrademark.
So there are several thingsthat you have to put in place.
For example, if you're usingyour trademark in, let's say,
europe and in the US, but youfind only your trademark in
(57:39):
Europe, but then you've got agap of protection that means
you're not protected on an IPtrademark right in the US, so
the valuation of your trademarkwill go down definitely.
I mean, it's just logicalbecause if you're not protected,
you do not have an intellectualproperty right in the concerned
(58:02):
countries and therefore it'slacking the value.
So it's always get in aposition saying well, I'm going
to open a new market.
Do I have my trademarkregistered there?
First question.
Second question do I have anyissue with some third parties
that may have filed an identicalor similar trademark in that
(58:23):
country?
You have to think also that, forexample, you are doing some
kind of goods and you developnew goods and products or
services.
Am I protected for those goodsand services?
If this is not the case, thenyou have to think about
protecting them.
So it's always taking time tocheck your asset.
(58:46):
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 IPrights to be sure that
everything is in order, that noone is there to be a bug.
In the context, you'reexploiting your trademark.
So I was saying checking theterritory where it is protected,
(59:08):
checking the goods and servicesfor which they are exploited,
but also is putting in placewatches.
What I'm talking about this isif someone files a trademark,
let's say, in the US.
You have a trademark in the US,but someone is filing a
(59:28):
trademark in the US or startusing it, you will not be aware
of it unless you are checkingwhat's going on and what is
being filed, because no one willtell you that and maybe that
will come from your marketingdepartment or maybe your friends
say oh well, I've seen thattrademark, it's almost like
(59:50):
yours, whatever, but you've gotan information.
Sometimes after the filing, ifyou're putting in place a watch
or civilians on your IP rights,you will be informed very
quickly and you can act veryquickly again.
So you just take down an issuewith someone that is trying to
(01:00:14):
make or to use a trademark thatis similar to yours.
So it would be mediation,negotiation, recovering
opposition, for example.
There are several tools to wellI mean basically what we've
been talking about for about anhour to be sure that your
(01:00:36):
trademark is not devaluating bythe fact that someone else is
coming in.
Just to give you an example, ifyou are known by your trademark
, if you see that several otherpeople are using the same
trademark, then you're for theconsumer.
Your, your trademark is atrademark that I can see
(01:00:58):
everywhere for other goods orfor similar goods, whatever.
So well, there's no value.
I'm not going for your companymore than another just because
it's you.
No, you're known by yourtrademark or the goods or
service is known by saidtrademark.
So that's one of the aspects onthe, I would say, the brick and
(01:01:20):
mortar subject matter.
On the second one is all thatyou were talking about, the
digital.
That again, several issues thathave to be taken into
consideration is am I present onthe web?
Do I have a domain name?
Do I have a website?
Do I have some account invarious social media?
(01:01:45):
I don't know, whatever you canimagine.
I mean the LinkedIn, google,facebook, instagram, snapchat,
whatever You've got all thoseplaces, where should I be there?
And some people are thinkingalso, should I be there on a
Wikipedia page?
There on a Wikipedia page, eachsocial network or each place on
(01:02:11):
the internet?
And I was talking about alsothe 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 anissue, for that Is someone using
(01:02:33):
any kind of platform thatcreates with the artificial
intelligence a new logo or stuff, but that actually is a
counterfeit of my logo, becauseI don't know the person that
made the script led to recreatean identical or similar logo to
(01:02:54):
mine.
All those issues should bechecked and verified.
So here again, am I present?
Do I have the domain names?
Not saying that you have totake all domain names with all
the extension, the com, net, org, fr, couk, uk, whatever all the
(01:03:15):
extension of the domain name,or should I just take what I
need to have, for example, comand es if you're in Spain, or t
for Germany, germany or fr forFrance?
I'm taking what I consider thatI need for my communication and
then I check, set up, watch tosee if someone else is taking my
(01:03:42):
trademarkanother extension, isit an issue?
Is it causing problem?
Is it destroying my referenceon Google, yahoo or any search
engine?
All those aspects should bealways watched and checked for,
avoiding, on one side, thedevaluation of my trademark, but
(01:04:02):
also all the issue that couldbe occurring, for example, if
someone is taking a domain andthat looks like your trademark
and sends email to yourcompetitors to obtain a contract
or try to obtain personal datafrom your clients.
You see, there's all kind ofI'm not saying new matter or new
(01:04:29):
legal matter, because I dobelieve that it existed before.
It's just an adaptation of whatwas done in the brick and
mortar life.
On the digital life.
Scamming is something thatexists for ages, but now it's
called scamming because it'sdone on the Internet via email
(01:04:52):
Phishing, ie collecting eitherpersonal data or financial
information, making one believethat you are the legitimate
person asking for those.
So you see, there's a lot ofthings that come up and if the
question is difficult becauseit's very complete and contains
(01:05:16):
a lot of elements, it's actuallyfairly simple.
I mean, obviously, when youhave the expertise and you spend
time in doing so.
But it's always thinking whatdo I have, what is my territory?
What is my let's say my land?
Do I want people to get in ornot?
Am I organizing people to allowthem coming in?
(01:05:36):
That would be the licenseagreement or the coexistence
agreement.
Am I requesting someone todistribute my products?
Then I will give him the rightto do something on my land.
You see, it's always that thingthat is organized.
You protect your land also,that you don't want to have
invaders and, in order to makethat fairly simple, you actually
(01:06:02):
increase the value of yourtrademark and IP rights because
you are showing that you are theone, the only one, and that's
what the value of yourtrademarks become.
I don't know if my answer isless complicated than your
question.
Leticia Caminero (01:06:21):
I think you de-complicated my very
complicated question.
Think you de-complicated myvery complicated question.
So it's fairly straightforwardhow to keep the value of your
trademark then.
So you need to be vigilant, youneed to understand your market,
you need to have presence whereyou should have presence and
(01:06:42):
registration where you haveregistration.
So it's about being a good partof the familias that's a term
that we like to use a lot incivil law that you take care of
your property.
You take care of your propertyin the best possible way that
(01:07:02):
you can, and IP, even if it'sintangible, it is property and
and is the trademark, is the waythat people identify you and
people connect to your productand services.
So it is the face with thepublic and and its valuation is
going to directly impact yourproduct valuation or your
(01:07:27):
services valuation.
David-Irving Tayer (01:07:29):
Yeah, exactly, see, that's even
clearer than what I said.
Leticia Caminero (01:07:35):
I'm just learning from you, David.
I'm just learning from you.
But with this, I think we'reready to wrap up.
Any final wise words that youwould like to share with us?
David-Irving Tayer (01:07:49):
Final word possible Wise?
I'm not sure.
No, I do.
Thank you, leticia, forinviting me.
It was a very nice moment tospend on and, as you can see, ip
valuation mediation isbasically myself and I really
enjoyed it.
Thank you very much again.
Thank you, david.
Mediation is basically myselfand I really enjoyed it.
Thank you very much again.
Leticia Caminero (01:08:09):
Thank you, david, for joining and thank you
for sharing your greatknowledge.
I'm very happy that we havethis conversation and, yeah,
looking forward to meeting again, to talk again and to further
discuss these matters.
David-Irving Tayer (01:08:27):
Would be a pleasure.
Leticia Caminero (01:08:33):
We have reached the end of our episode.
Greetings from Switzerland.
Speaker 2 (01:08:38):
Thank you for listening to Intangiblia, the
podcast of Intangible Lawplaying talk about intellectual
property.
Did you like what we talkedtoday?
Please share with your network.
Do you want to learn more aboutintellectual property?
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
(01:08:58):
Visit our websitewwwintangiblecom.
Copyright Leticia Caminero 2020.
All rights reserved.
This podcast is provided forinformation purposes only.
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