Introduction of mediation in civil and commercial matters is good news for mark owners


March 6 2012 saw the publication of Royal Decree 5/2012, which introduces the concept of 'mediation' into civil and commercial matters.

The decree implements Directive 2008/52 on certain aspects of mediation in civil and commercial matters into Spanish legislation; this had already been attempted under the previous government, but the bill had not reached parliamentary debate. 

The law that has now been approved is much more liberal and less interventionist than the previous bill. Just like the bill, it goes beyond merely implementing the directive in order to incorporate mediation into Spanish civil and commercial proceedings; however, the obligation to resort to mediation in certain cases, which was laid down in the bill, has been removed, leaving mediation as a voluntary procedure. The procedure has also become considerably more flexible, as have the requirements to be met by both the mediators and the mediation organisations. It appears that the government wishes to encourage the involvement of civil society organisations (eg, the Chambers of Commerce) in order to promote the resolution of disputes through mediation.             

This is goods news for trademark holders, as the Spanish Civil Procedure Act has now been amended to include mediation as a mechanism by which to resolve disputes. In that regard, judges have the power to invite the parties to resolve a dispute by this means when they believe that this may be achieved. Therefore, civil infringement proceedings, as well as invalidity or revocation proceedings, could be resolved within a much shorter period. 

Moreover, if the parties reach a mediation agreement, the agreement must be submitted to the court handling the proceedings and placed on the court record, which brings the case to a close. The mediation agreement is classed as an enforceable right, which is important in the event that the agreement is breached. If the agreement is breached, there is no need to restart the proceedings; it will be sufficient to file a petition for immediate enforcement of the terms of the agreement with the ratifying court. In trademark matters, the agreement must contain clear and specific obligations which require no action by the breaching party; the court will be able to attend to the enforcement swiftly and effectively, even where opposition is raised by the breaching party.

Javier Fernández-Lasquetty, Elzaburu, Madrid 

Unlock unlimited access to all WTR content