Mediation is now mandatory for IP disputes including monetary/compensation claims, reports Selma Ünlü in a guest post for Class 46.
As of 1 January 2019; mediation became mandatory for court actions related to IP law including trade marks, designs and patents and including monetary/compensation claims.
Provisions related to mandatory mediation will not apply to court actions pending before first instance courts, district courts of appeal and the Court of Cassation. However; the parties may still apply to a mediator at their discretion for pending actions.
If the parties cannot agree upon a mediator recorded in the registry then one party can apply to the mediation office where the competent court is located. Then mediation will be carried out by one of the registered mediators who will be appointed randomly.
Mediation will be completed within six weeks of appointment of the mediator and such period can be extended by up to two weeks. The mediator will complete the process if they cannot reach the parties; if the sessions cannot be held due to the non-participation of the parties; and whether or not the parties come to an agreement. In that case, the mediator shall prepare the final minutes and inform the mediation office. The Law also sets forth some sanctions for parties who do not attend to the first session without a valid excuse related to litigation expenses and attorney’s fees.
Penalty for not mediating
Since mediation is a clause for the court action, it will be ex-officio taken into account by the Court. It is compulsory for the plaintiff to add the final minutes to its petition. If the plaintiff files the action without applying to the mediator then the action will be rejected on procedural grounds.
If the plaintiff does not submit the final minutes when filing the action then the Court will grant them one week to submit the final minutes. If they do not do so, the action will also be rejected on procedural grounds. If the parties come to an agreement, the final minutes are regarded as having the same effect as a court decision and can be enforced accordingly.
In preliminary injunction (PI) requests, mediation is not mandatory. If a PI is granted before the action (ex-parte), the main action shall be filed within two weeks of the party’s request for the enforcement of the PI decision. This period will not run between the dates of the application to the mediation office until the issuance of the final minutes.
If the PI is requested within the main action and the main action involves a monetary/compensation claim, then the plaintiff shall still start the mediation process before commencing the action. Especially for urgent matters; the IP right owner may consider requesting the PI separate from and before the main action (ex-parte) if a monetary/compensation claim will be included in the main action.
Impact of mandatory mediation
Since certain and short time limits are regulated for the mediation process, it will not cause a serious delay to the relevant court actions. However, since (i) the period provided for the mediation is relatively short and (ii) most IP-related disputes require expertise and it is unlikely that the randomly appointed mediator will be an expert in them, mandatory mediation seems likely to remain as a procedure to be followed rather than a useful tool to reach an amicable solution.
As the legislation’s aim seems to be to extend the mandatory mediation to a broader range of areas of law, it is possible that mediation will become mandatory in other types of IP-related disputes.
By Selma Ünlü, Senior Partner of NSN Law Firm in Turkey. Selma is a member of the MARQUES Unfair Competition Team.