29 December, 2011
Starting from 3 January 2012, parties to trade mark opposition, invalidation and revocation proceedings before the Intellectual Property Office of Singapore (“IPOS”) may resolve their disputes through mediation under the World Intellectual Property Organization (“WIPO”) Rules, as administered by the WIPO Arbitration and Mediation Center in Singapore.
This option for mediation will be offered to parties after the close of pleadings. Once the Statement of Grounds and Counter-Statement have been filed, IPOS will convene a Case Management Conference (“CMC”). At the CMC, parties will be encouraged to consider referring the dispute for mediation. Within one month from the CMC, parties are to jointly complete and return the Response to Registrar form to IPOS, indicating whether they agree to submit the dispute for mediation. If parties agree to resolve the dispute by mediation, the ongoing proceedings at IPOS will be suspended. Otherwise, IPOS will convene a second CMC to issue timelines for parties to file their evidence and to resolve any issues with the pleadings.
The benefits of this new mediation option are multifarious. Unlike adjudicatory dispute resolution mechanisms such as litigation and arbitration, mediation is a confidential, non-adversarial process in which parties retain full control over the outcome. Additionally, parties are at liberty to appoint a mediator of their choice or select a mediator from a shortlist of candidates recommended by WIPO. WIPO draws up its shortlist of mediators according to the requirements of the case and the mediator’s professional background and capabilities.
As an informal and flexible process, mediation allows parties to look beyond their legal rights and obligations and to explore creative commercial solutions. Mediation also presents parties with the opportunity to resolve their disputes within several days, as opposed to the months or years that litigation or arbitration could take.
Further, under the WIPO-IPOS mediation option, apart from the dispute before IPOS, parties may also refer to mediation any pre-existing disputes between them, or any issues related to applications or registration in jurisdictions other than Singapore. Given that the Singapore office of the WIPO Arbitration and Mediation Center is the only such presence in the region (the only other office is in Geneva) the WIPO-IPOS mediation option presents a convenient means for parties to resolve related disputes across the Asia Pacific region.
While the WIPO-IPOS mediation option is only available for trade mark disputes at the moment, similar procedures may become available for patent and design proceedings.
For further information, please contact:
Deryne Sim, ATMD Bird & Bird