Since 3 January 2012, a voluntary mediation option has been made available to parties in trade mark opposition, invalidation and revocation proceedings before IPOS. This document provides information on the procedure involved. A chart outlining the procedure is set out at Annex A:
Annex A (77.4KB).
1. First Case Management Conference (“CMC”)
After parties have filed their pleadings (Statement of Grounds and Counter-Statement), the proceedings are suspended so no evidence is due to be filed. IPOS will convene a first CMC in the following month to encourage parties to consider mediation as an alternative, effective means to resolve their dispute.
At the CMC, parties will receive the following documents:
(i) the present information document providing information on the mediation option
(ii) a Notification to Registrar, one to be completed by each party (not the agents) and to be returned to IPOS and copied to the other party within one month from the first CMC
(iii) an “Agreement and Request for WIPO Mediation in IPOS Trade Mark Proceedings” for parties’ adoption if they wish to submit to WIPO mediation, to be filed with the WIPO Arbitration and Mediation Center (“WIPO Center”) Office in Singapore.
Soft copies of (ii) and (iii) are available for download by clicking on the link above.
2. Notification to Registrar: the Parties’ Options
The possible scenarios after the parties return the Notification to Registrar are as follows:
(a) Parties submit to mediation at the WIPO Center Office in Singapore
If the parties submit to mediation at the WIPO Center Office in Singapore, they should file their Agreement and Request for WIPO Mediation in IPOS Trade Mark Proceedings with the WIPO Center Office in Singapore.
The parties may set aside 30, 60 or 90 days for mediation. This period may be extended upon further request and justification by parties to the satisfaction of the Registrar.
As the ongoing proceedings at IPOS remain suspended, parties do not need to apply for extensions of time to file evidence.
The WIPO mediation procedure commences with the filing of the completed and signed Agreement and Request for WIPO Mediation in IPOS Trade Mark Proceedings with the WIPO Center Office in Singapore. Following receipt thereof, the WIPO Center Office in Singapore will contact the parties regarding the next steps of the mediation procedure, the appointment of the mediator and the applicable fees. While the parties are free to identify themselves a suitable candidate for such appointment, the WIPO Center Office in Singapore is available to assist with the provision of a shortlist of qualified mediator candidates taking account of the requirements of the case.
A reduced not-for-profit Schedule of Fees for administration fees and mediator fees will apply. The WIPO Center Office in Singapore’s assistance to the parties to negotiate reasonable rates for the mediator and each parties’ ability to terminate the mediation at any time help to contain the cost of this informal procedure.
Further information on WIPO Mediation generally is available at:
http://www.wipo.int/amc/en/mediation/ .
The applicable WIPO Mediation Rules are available at:
http://www.wipo.int/amc/en/mediation/rules/index.html
Parties may also refer to the Guide to WIPO Mediation (885KB).
The applicable schedule of fees, including payment details information, is available at: http://www.wipo.int/amc/en/center/specific-sectors/ipos/fees/
Information on the WIPO Center is available at:
http://www.wipo.int/amc/en/center/background.html
The following are possible outcomes of the WIPO Mediation:
(i) Parties fully settle
If the parties fully settle their dispute, within two weeks from the end of the mediation, the initiating party is to inform IPOS in writing that the matter has been settled and the parties have to take the necessary steps to close the proceedings before IPOS. This includes such steps as necessary to either withdraw the trade mark opposition or application for invalidation or revocation (by the initiating party) or to withdraw the trade mark application (by the trade mark applicant). If the settlement affects the trade mark application or registration in any way, the trade mark applicant or proprietor will have to comply with the relevant procedure to amend or cancel (fully or partially) the trade mark application or registration, including filing the appropriate Trade Mark Forms for IPOS to process such amendment or cancellation.
(ii) Parties submit to IPOS adjudication for outstanding issues
If the parties partly settle their dispute and the remaining issues are subject to adjudication at IPOS, or if the parties do not manage to settle any aspect of their dispute, the initiating party is to inform IPOS in writing accordingly within two weeks from the end of the mediation.
IPOS will then resume conduct of the proceedings and will convene a second CMC to issue timelines for the filing of evidence and to deal with any pleadings issues. Deadlines to file evidence will apply from the date of the second CMC. Requests for extensions of time need to be filed if deadlines cannot be met.
(b) Parties do not submit to mediation at the WIPO Center Office in Singapore
If the parties do not submit to mediation at the WIPO Center Office in Singapore, IPOS will convene a second CMC to issue timelines for the filing of evidence and to deal with any pleadings issues. Deadlines to file evidence will apply from the date of the second CMC. Requests for extensions of time need to be filed if deadlines cannot be met.
3. Second CMC
IPOS will convene a second CMC under the following circumstances:
(i) parties have attempted mediation at the WIPO Center Office in Singapore but did not fully settle their dispute; or
(ii) parties do not submit to mediation at the WIPO Center Office in Singapore.
The second CMC marks the end of any prior suspension of the proceedings before IPOS, and in principle, the deadlines to file evidence apply again according to the Trade Marks Rules. (For the initiating party, the deadline to file evidence is two months from the date of the second CMC / issuance of CMC timelines, instead of two months from the filing of the Counter-Statement. Requests for extensions of time need to be filed if deadlines cannot be met.)
At the second CMC, the parties will update IPOS on the state of play between them, including whether they are (still) negotiating. Depending on the circumstances of the case, IPOS will issue timelines for the filing of evidence by both parties. For example, if there are several issues in dispute, parties are based overseas and are negotiating, the timelines given may be longer than in another case where there are fewer issues in dispute, the parties are based in Singapore and are not negotiating.
4. Submission to Mediation at Any Stage of Proceedings
Notwithstanding that parties are specifically advised of the mediation option at the first CMC, they may submit to mediation at the WIPO Center Office in Singapore at any time after proceedings are initiated and before a decision is issued.
This is done by either party filing the joint Agreement and Request for WIPO Mediation in IPOS Trade Mark Proceedings with the WIPO Center Office in Singapore and extending a copy of the document to IPOS. As indicated above, the Agreement and Request for WIPO Mediation in IPOS Trade Mark Proceedings is available for download from the IPOS website.
For example, parties may submit their dispute to mediation after the second CMC, at the evidence phase. This is possible even if initially, the parties had not committed to mediation in the month after the first CMC. In such cases, IPOS will generally suspend the ongoing proceedings to allow mediation to take its course.
During the suspension of proceedings, deadlines for the filing of evidence or any other procedure will not apply. Deadlines will re-start after the suspended period where the dispute is not settled or not fully settled.
5. Further Procedure
Further procedure after the second CMC remains the same as before the introduction of this new procedure. Once the evidence phase is closed, IPOS will conduct a Pre-Hearing Review. If parties are not negotiating or are not able to settle after negotiations, the matter will be set down for hearing.