When the EUIPO's Opposition Division suggested mediation, neither party was familiar with the process. However, the initial guidance provided by the EUIPO Mediation Centre showed them that mediation offered a flexible, cost-effective way to resolve the dispute, while still allowing for other options if an agreement could not be reached.

The dispute involved two companies from different European countries:

• Eco Leather Kft., a small Hungarian business producing high-quality vegan leather shoes and bags under the Walami Szép brand, preparing to expand beyond its national market.

• Zanetti Textiles SpA, an Italian fashion company based in Milan and owner of the EU trade mark Valami, which is planning to broaden its succesful fashion line to include footwear.

When brands collide

Eco Leather filed an EU trade mark application in November 2024 for the figurative mark Walami Szép, covering:

• Class 18: leather and imitation leather bags, wallets, and other leather or imitation leather goods;

• Class 25: footwear, clothing, gloves, and belts.

Zanetti opposed the application, claiming a likelihood of confusion with its earlier verbal EU trade mark Valami, registered in 2019 for perfumes, jewellery, bags, clothing and footwear (classes 3, 14, 18 and 25).

However, there was a twist: Walami Szép had already been registered as a national trade mark in Hungary by Eco Leather back in 2018, before Zanetti’s EU mark was filed. This earlier registration could result in Zanetti’s EU trade mark being cancelled – at least for goods for which the two trade marks overlap. In this context, mediation emerged as a pragmatic and cost-effective way forward for both parties.

Mediation in action: breaking the ice

Before the mediation session, the mediator held separate preparatory calls with each party and their representatives, outlining the process and clarifying everyone’s roles. This preparation helped set the tone for a constructive meeting.

The mediation meeting was held online, providing a neutral and accessible setting. The mediator, experienced in intellectual property disputes, focused on facilitating a respectful dialogue based on business interests, not just legal positions.

At first, emotions ran high. Eco Leather’s founder said that they had felt pressured by Zanetti’s earlier letters urging them to withdraw their EU trade mark application. Meanwhile, Zanetti’s team accused Eco Leather of free-riding on their brand’s growing reputation.

The mediator helped to ease the tension, encouraging both parties to move beyond blame and focus on what really mattered: their business goals, customers and long-term growth.

Unpacking the dispute and clarifying priorities

As the session progressed, the origins of each brand came to light. ‘Walami Szép’ is a Hungarian phrase meaning ‘something nice’. Valami, on the other hand, was an acronym formed from the names of the Zanetti sisters: Valentina, Laura, and Milena.

This simple exchange helped to clear up a big misunderstanding. What Zanetti had initially perceived as brand imitation turned out to be nothing more than a linguistic coincidence. With that tension diffused, the parties could begin to explore a way forward.

In separate breakout sessions, the mediator helped each party consider the risks of continuing the dispute and adopt a constructive mindset. For Zanetti, proceeding with the opposition could lead to a lengthy dispute and would not prevent Eco Leather from using its national trade mark in Hungary. It would also expose Zanetti to an invalidity action based on Eco Leather’s earlier Hungarian trade mark for overlapping goods. For Eco Leather, losing the EU trade mark application could seriously hinder their plans to expand into other countries.

Crafting a creative agreement

With the help of their lawyers and under the mediator’s guidance, both parties reached a practical agreement:

• Eco Leather retained Walami Szép for vegan leather footwear, bags and wallets, while removing clothing from its trade mark application to avoid direct overlap with Zanetti’s fashion line.

• Zanetti withdrew its opposition and recognised Eco Leather’s continued use of the trade mark.

• Eco Leather agreed not to challenge Zanetti’s EU trade mark on the basis of their earlier national trade mark. To further distinguish the brands, Eco Leather proposed to add the tagline “Budapest Originals” to future packaging, allowing up to six months – or until existing stock ran out - for the transition.

• Finally, they agreed to submit any future disputes over the agreement to mediation first.

• The oucome was a win-win. Eco Leather secured its branding and could move forward with its EU growth plans. Meanwhile, Zanetti could focus on its new product launch, free from the distraction and risk of a legal battle.

Through mediation, both parties preserved their trade marks in line with their core business goals. This case demonstrates how EUIPO-supported mediation can transform a dispute into ‘something nice’, a practical and efficient outcome.

Source: https://www.euipo.europa.eu/en/news/-something-nice-in-every-language-how-euipo-mediation-turned-a-trade-mark-clash-into-a-sustainable-solution