IP Australia is piloting voluntary “case conferences” in trade mark opposition proceedings. Welcome settlement initiative, or glass hammer? Time will tell.
You didn’t miss the memo; there wasn’t one. With no fanfare or public announcement, IP Australia has quietly begun trialing a new process in trade mark opposition proceedings: case conferences.
Case conferences explained
Case conferences are designed to give parties an early opportunity to discuss settlement avenues. The mechanism is entirely voluntary: it takes two to tango and only one to decline. It’s also free (at least, IP Australia charges no fee). A case conference is essentially a one-hour Zoom call attended by the parties, their legal representatives (if any) and a Hearing Officer. It is designed to be without prejudice, so what’s said at conference stays at conference. If the parties agree to attend a case conference, the opposition proceedings are suspended for 60 days and will resume if the conference does not achieve settlement.
The Hearing Officer, who coordinates the conference and manages the clock, is there in a strictly facilitative capacity. Their job is not to mediate the dispute, delve into the prospects or evidence, indicate how they would decide the matter or push the parties to settle. Rather, their role is to explain the opposition process (including costs implications) and give the parties an opportunity to discuss their dispute. While they may outline possible methods for resolving the dispute – such as specification amendments, voluntary endorsements and coexistence agreements – they won’t workshop these options with the parties in the context of their dispute. Parties inclined to settle would need to “get a room” by entering into a cooling-off period.
Aims of the pilot
According to an IP Australia representative, the impetus for the pilot comes from an observation within the Hearings Department that of the opposition proceedings that settle, most do so on the eve of the hearing (once the evidence has been filed, submissions exchanged and counsel and Hearing Officer briefed). To the litigators out there, or anyone who’s ever negotiated a deal or bid at an auction, this will hardly surprise. IP Australia hopes that the pilot will see a portion of those “will settle” cases resolve at the pre-evidence stage of proceedings, saving the parties (and, ahem, IP Australia) time and cost.
Case selection and evaluation
IP Australia has selected around 50 cases for the purposes of the pilot, targeting those involving at least one self-represented party. The results of the pilot will be evaluated within the next couple of months. If there is sufficient uptake, we can expect to see case conferences rolled out more broadly.
But will it work?
I am all for voluntary ADR processes; far be it for me to pour cold water on settlement-promoting initiatives. But I doubt that case conferences (as presently described) will meaningfully encourage early settlement. Here are some reasons why.
- Practicality: How much can realistically be achieved in an hour?
- Timing: Case conferences are offered at the preliminary phase of the opposition process. Is the pre-evidence stage necessarily the best time to explore settlement, or should there be scope to take IP Australia up on the offer of a case conference once the evidence rounds have closed?
- Efficacy: Hearing Officers have the skills and experience to indicate the likely end-game (based on certain assumptions) but are prevented from doing so. If the Hearing Officer is only an information giver, how can they provide a meaningful contribution that moves the dial towards settlement?
- Utility: Case conferences sound more like information sessions than settlement-exploration forums. Of what value are case conferences without trained mediators with a mandate to encourage negotiation?
The pilot is in its infancy, and it remains to be seen whether it achieves IP Australia’s resource-saving objectives. But so long as case conferences are functionally little more than forums for information exchange, I expect that their impact will be modest and limited to a subset of cases involving unrepresented parties.