MEDIATION OPTION IN TRADE MARK PROCEEDINGS BEFORE IPOS

IPOS is introducing a new procedure for all trade mark opposition, invalidation and revocation proceedings before IPOS.  This new procedure, which offers a voluntary mediation option to parties, will apply to all trade mark proceedings with effect from 3 January 2012.  (Where appropriate, a similar new procedure may become available for patent and design proceedings before IPOS.)  This document provides information on the new procedure.  A chart outlining the procedure is set out at Annex A.

1. First Case Management Conference (“CMC”)

After parties have filed their pleadings (Statement of Grounds and Counter-Statement), IPOS will convene a first CMC in the following month where parties are encouraged to consider mediation.

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 to be jointly completed and to be returned to IPOS by the party who initiates the proceedings (i.e. the trade mark opponent or the applicant for the invalidation or revocation of a registered trade mark, referred to as "the initiating party")

(iii) a form entitled “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 Singapore¹ .

Soft copies of (ii) and (iii) are available for download from the IPOS website.

After consideration and discussion between themselves, parties should jointly complete the Notification to Registrar within one month from the CMC indicating whether or not they wish to submit to mediation at the WIPO Center Office in Singapore.  The initiating party has the responsibility to return the Notification to Registrar to IPOS.  If both parties are in agreement that they need more time to revert, the initiating party may write to IPOS to request more time.  IPOS will grant such extension of time if the initiating party has provided good and sufficient reasons for such request. 

The ongoing proceedings at IPOS are in any event suspended from the date of the filing of the Counter-Statement.  At the second CMC (ending the suspension period), IPOS will issue the timelines for the filing of evidence.

^{1IPOS is exploring the possibility of adding to the WIPO Mediation option further Singapore-based mediation providers, including the Singapore Mediation Centre. In the event of such addition, the present document would be updated accordingly.}

2. Notification to Registrar:  the Parties’ Options

The possible scenarios after the initiating party returns 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.

As the period set aside for mediation, the parties may select 30, 60 or 90 days.  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 available at: http://www.wipo.int/freepublications/en/arbitration/449/wipo_pub_449.pdf.

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.  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.  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 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 the specific incorporation of the mediation option to the procedure for trade mark proceedings at the point of the first CMC, it is clarified that in general, at any time after proceedings are initiated and before a decision is issued, parties may submit to mediation at the WIPO Center Office in Singapore.  This is done by the initiating party filing the parties' Agreement and Request for WIPO Mediation in IPOS Trade Mark Proceedings with the WIPO Center Office in Singapore.  The initiating party is to submit the Notification to Registrar to IPOS at the same time.  As indicated above, both forms are available for download from the IPOS website.

Thus, for example, parties may also submit to mediation before the filing of the Counter-Statement.  In such a case, in deciding whether the proceedings can be suspended such that there is no need to meet the maximum four-month statutory deadline to file the Counter-Statement while mediation is ongoing, IPOS will take into consideration all relevant matters, such as whether the dispute is an ongoing dispute between the parties or whether the same dispute has also surfaced in another jurisdiction.  It is possible that IPOS will only suspend the proceedings after the Counter-Statement is filed.

In other cases, parties may also 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.