Spain's first Mediation Act: an opportunity for trademark holders?

In July Spain implemented Directive 2008/52/EC on certain aspects of mediation in civil and commercial matters. The directive constitutes a response to the international trend of attempting to promote mediation as an alternative to legal proceedings in view of the limitations and shortcomings (eg, duration and costs) of resorting to the courts for relief. 

The new Spanish Civil and Commercial Mediation Act raises a number of questions - the first question being: how does the act differ from the directive? The answer is simple. While the directive merely establishes minimum rules for promoting mediation in cross-border litigation in civil and commercial matters, the Spanish act has designed a general system applicable to all mediation in the country which seeks to have a binding legal effect. 

Besides the intrinsic and universal characteristics of mediation (ie, it is voluntary and at the free disposal of the parties), it is worth noting that the Spanish act attributes a dual purpose to this institution. On the one hand, the act regulates mediation as a means to avoid legal proceedings (if the parties reach an agreement, and the agreement is then converted into a public document, it will be enforceable); on the other hand (and this is perhaps the most significant novelty), the act has been designed as a means to bring legal proceedings that are already underway to an early conclusion. In this respect, the judge will have to suggest the possibility of using mediation to the parties at the preliminary hearing stage.

The second question raised by the act is: to what extent can mediation constitute a real alternative for trademark holders? It must be borne in mind that, except some isolated initiatives aimed at promoting mediation, such as those undertaken by the World Intellectual Property Organisation, this system is not traditionally used in Spanish legal practice due to the absence of definite regulation. However, with the new legislative background (which also facilitates the enforceability of agreements), mediation should begin to gather strength as an alternative dispute resolution system, and should also contribute to lightening the workload of the saturated Spanish courts.

To use a cinematographic metaphor, dispute resolution for trademark holders in Spain had so far featured virtually only two actors: the leading actor or protagonist (the lawsuit) and the supporting actor (arbitration). The new act has now paved the way for a third actor to step in and steal some scenes from the other two.

Francisco Marín Pareja, Elzaburu, Madrid