22 January 2018 (Singapore, India) – INTELLECTUAL PROPERTY MEDIATION IN SINGAPORE AND INDIA
(by Francois Vieillescazes, Flint & Battery LLC, co-written with Dr. Sheetal Vohra, Managing Director of Vohra & Vohra, New Delhi)
Mediation is a dispute resolution mechanism whereby a neutral third party, the Mediator, will help the parties to the dispute to reach an amicable settlement. Mediation proceedings are not binding. They require the agreement of the parties and may be interrupted at any time.
With regards to Intellectual Property, mediation is a tool that is proving to be efficient. According to a survey conducted by the World Intellectual Property Organization (WIPO) in 2014, the main considerations for choosing mediation in IP disputes are time and cost savings.
Among other advantages, mediation can offer a single forum where the parties can negotiate and settle cross borders disputes, despite the territorial nature of IP rights. It also provides the parties with the possibility to choose a Mediator with particular experience and expertise in the relevant field, which is often critical to the successful settlement of complex and technical matters.
1. INTELLECTUAL PROPERTY MEDIATION IN SINGAPORE
Singapore has become a well-established seat for Alternative Dispute Resolutions (ADR) institutions in South East Asia, drawing in particular benefits from its geographical location and facilities, the use of the English Language, and its supportive legislation.
With respect to IP, the most relevant institutions may be the Singapore Mediation Centre, the Singapore International Mediation Center, and the IP-focused WIPO Arbitration and Mediation Center. Indeed, Singapore hosts the only WIPO Mediation Center outside of Switzerland, where WIPO has its seat.
Since January 2016, the WIPO Center allows one party to unilaterally file a request for mediation. The Center will then approach the other party and seek its consent to the mediation.
Meanwhile, the Intellectual Property Office of Singapore (IPOS) is heavily promoting Mediation services. As part of IPOS proceedings such as oppositions, revocation and invalidation actions brought before IPOS, mediation options are proposed to the Parties after the initial exchanges of statements and counter-statements. The Parties may submit to mediation at the WIPO Center at any time during the proceedings as long as IPOS has not rendered its decision, and the proceedings at IPOS will then be automatically suspended. The Parties may opt for mediation of 30, 60 or 90 days, with the possibility to request for extensions of times. If the dispute is not settled at the end of the mediation period, the proceedings at IPOS will eventually resume.
Meanwhile, effective 1st April 2016, Singapore introduced a Mediation Promotion Scheme, where parties to IPOS proceedings can obtain funding for mediation services (regardless of the outcome of the same). The parties are free of their choice of the mediation service provider and the Mediator, but the mediation is to be conducted in Singapore. In exchange, the Parties agree to disclose any agent fees incurred for the mediation, provide feedback on their experience and allow the presence of an observer.
2. INTELLECTUAL PROPERTY MEDIATION IN INDIA
In India, Alternative Dispute Resolution mechanisms like mediation are being used increasingly to settle commercial matters including Intellectual Property matters. Mediation is seen as a quick and cost effective means for dispute resolution. In this direction, the Controller General of Patent Designs & Trade Marks, in collaboration with the Delhi State Legal Services Authority (DSLSA) issued a Public Notice No. CG/TMR/Del/DSLSA dated March 31, 2016 undertaking to initiate a project to liquidate pending matters pertaining to Oppositions & Rectifications before the Trade Marks Registry, Delhi through mediation and conciliation. The Delhi State Legal Services Authority is a Statutory Body constituted under the Legal Services Authorities Act, 1987 and falls under the domain of High Court of Delhi, New Delhi and its Patron- in-Chief is Hon’ble the Chief Justice, High Court of Delhi.
Initially, it was decided that the project should commence on a pilot basis, referring 500 pending oppositions/ rectifications to mediation and conciliation based on consent by the parties and in accordance to the mediation/conciliation Rules framed under the Legal Services Authorities Act, 1987. The Trade Marks Registry thereafter decided to invite consent from concerned parties in all pending Opposition/Rectification proceedings.
The Notification called upon all interested parties to submit their consent in “Consent Form” within 30 days from the date of notice. The Registrar of the Trade Marks or competent authority nominated/authorized by the Registrar in this behalf may also refer the any Opposition/Rectification matter pending before him to Mediation if he is satisfied that there is existing element of settlement in such pending matter and he may call upon the parties to submit themselves to the jurisdiction of the Mediator for amicable settlement of their disputes
In furtherance of the Public Notice, the Delhi State Legal Services Authority, Delhi released the Standard Operating Protocol in respect of mediation process in cases pending before the Registrar of Trade Marks, Delhi on May 13, 2016. The Standard Operating Protocol were framed in order to institutionalize and conduct mediation in an orderly, transparent and result oriented manner.
When a case is received from the office of Registrar Trade Marks for Mediation, the office of DSLSA shall issue a notice to both/all the parties of the given case to appear before the designated/nominated authority by DSLSA on a certain date and place either personally or through the authorized representative of the parties.
Once parties and/or their authorized representative put in their appearance and agrees for the Mediation, the matter shall be assigned to one of the Mediator. The panel of Mediators have been trained by DSLSA and most of these advocates are IP Practitioners and one retired official of Trade Marks Registry, therefore well versed with Trade Marks Act, 1999. The final result of the Mediation in all cases shall be conveyed to the office of the Registrar of Trade Marks and record of all cases and the final result shall be maintained by the Lok Adalat Wing on a regular basis.
This is indeed a very welcome step to reduce backlog and marks the onset of alternate dispute resolution mechanisms for resolving intellectual property rights disputes in India. It is time other four offices of Trade Marks Registry being Mumbai, Chennai, Ahmedabad and Kolkata also start such a drive.
Regarding litigations pending before court in India, Section 89 of the Civil Procedure Code, 1908 provides that if a court sees elements of a settlement, mediation, conciliation etc. then the court can, of its own motion, refer the dispute for mediation, conciliation etc. as per the procedure laid down in Section 89. In Bawa Masala Co. vs Baba Masala Co. Pvt. Ltd. AIR 2007 Delhi 284, (2008) 149 PLR 38, Hon’ble Mr. Justice Sanjay Kishan Kaul of the High Court granted an Early Neutral Evaluation (ENE) order and two neutrals gave their report following which a number of disputes between the parties got resolved as a result of mediation. This was a landmark order encouraging ADR in intellectual property disputes forward by leap and bounds.
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