accreditations & partnerships
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Trademark dispute between the owners of the Superdry brand and Manchester City Football club over the use of Super Dry on the club's clothing. Claimant's applied for an order for compulsory medaition before trial. Claimants argued that case was suitable for mediation - not particularly complicated and there were several variables in the dispute which might allow for an out of court compromise. Defendants resisted order arguing that "while there was no dispute about the power of the court to order mediation, it should only do so where there was a realistic prospect of success. He submitted that this was not such a case. On the contrary, both parties wanted their position to be judicially determined. He said that, even if the claimants say they are prepared to compromise, the defendant wishes to know once and for all whether it can place the Asahi branding on football kit and other clothing. He said that this needs to be determined and that his client is entitled to a judicial determination of that question. He submitted that mediation was not realistically likely to lead to settlement."
The judgment goes onto say:
Counsel for the defendant also says that it is very late in the day to seek the order, that the parties have already spent hundreds of thousands of pounds, and that the trial is imminent. He also says that his client had very limited availability for a mediation in December. In short, it is too late in the day; it is not a case where his client is being obstructive; mediation will fail; and this is a case where a ruling is needed.
As to the last point, in many cases the parties' positions in the litigation are diametrically opposed and it may easily be said that each party requires a judicial determination. But nonetheless the parties come through ADR to recognise the desirability of settling for less than their strict legal rights and compromising their positions. Experience shows that mediation is capable of cracking even the hardest nuts. The process sometimes succeeds in cases where the parties appear at first to have intractable differences. Here, as the claimants said, everything would be up for grabs at a mediation, including the form of representation of any branding on the relevant kit, timing and money. The claimants are also right to say that the dispute is self-contained and that a mediation would be able to focus on possible solutions rather than raking over historical grievances.
I see some force in the defendant's submission that it is late in the day to be seeking an order, but it may also be said that there is some advantage in the parties' positions having been crystallised through pleadings and the service of witness statements. It is indeed sometimes an objection to mediation that it is premature, proposed at a stage when the parties' positions are unknown. That cannot be said here.
There is also some force in the submission of counsel for the defendant that these are commercial parties with experienced solicitors and that if there was realistically to be a settlement, one would have expected it already to have been reached. But that argument does not do full justice to experience, which shows that bringing the parties together through mediation can overcome an entrenched reluctance of parties to negotiate, even where sincere. The purpose of mediation is to remove roadblocks to settlement. I am unable to accept the submissions of the defendant that a mediation here has low prospects of success and that adjudication by a court is necessarily required. The range of options available to the parties to resolve the dispute through mediation goes beyond the binary answer a court could provide. There may be solutions other than yes or no.
A mediation of this case will be short and sharp, and the documents needed for it would be brief. The defendant did not suggest that mediation would significantly disrupt the parties' preparations for trial.
Counsel for the defendant said that his instructions were that they had very limited availability in December. However, on the available material it seems it would be possible for the parties to find a workable date.
I take account of all of the considerations identified by the parties. Overall I am satisfied that this is a case where I should order the parties to mediate with a view to seeking, if possible, to resolve the dispute between them and that it should take place during December 2024. The parties should report its outcome to the court as soon as possible after the mediation is complete.
Postscript: on 13 January 2025 the parties notified the court that they had settled their dispute.