Amplifying consensus – The WIPO-Singapore ASEAN mediation programme

In the realm of international business and commerce, the significance of effective dispute resolution mechanisms cannot be overstated, particularly when it comes to intellectual property (IP) rights. This emphasis grows in regions like the Association of Southeast Asian Nations (ASEAN), where diverse legal environments and economic interests converge. Addressing this need, the World Intellectual Property Organization (WIPO) Singapore Office (WSO), in partnership with the Intellectual Property Office of Singapore (IPOS), has launched the WIPO-Singapore ASEAN Mediation Programme (AMP) under the WIPO-Singapore Government Memorandum of Understanding. This innovative initiative is specifically tailored to handle disputes related to IP and technology within ASEAN, through the mediation services of the WIPO Arbitration and Mediation Center (WIPO Center). AMP is designed not merely as a dispute resolution pathway but as a means to foster a co-operative regional ecosystem conducive to business and innovation, offering a more streamlined and cost-effective alternative to the conventional route of litigation.

Comparative analysis with other regional mediation programmes

AMP is not the only initiative aiming to streamline and enhance IP dispute resolution across different jurisdictions. For example, in 2008, the European Union implemented the European Mediation Directive (2008/52/EC) with the aim of fostering amicable solutions to disputes, particularly through mediation. This directive specifically targets cross-border disputes within EU nations, mainly concerning civil and commercial matters, including IP disputes. It establishes that agreements made through mediation should be enforceable in any EU country through designated mechanisms, aligning with the enforcement of judgment laws across member states.¹

Similarly, the African Regional Intellectual Property Organisation (ARIPO) is planning and working towards offering mediation services as part of its efforts to harmonise IP protection across its member states.² ARIPO seeks to provide a cost-effective and efficient alternative to traditional litigation for resolving IP disputes in the region.

These programmes share common goals with AMP, such as reducing litigation costs and improving resolution timelines, but they also reflect distinct regional legal frameworks and market dynamics.

The importance of IP rights protection across ASEAN

In 2015, ASEAN officially established the ASEAN Economic Community (AEC) to create a single market and production base with hopes of fully integrating the economic region globally.³ According to the official AEC blueprint, IP rights protection is recognised as a necessary factor in building a “competitive economic region”. The original ASEAN Framework Agreement on Intellectual Property Cooperation set forth the AEC’s focus on regional obligations related to the protection, management, and enforcement of IP. The most recently adopted ASEAN IP Rights Action Plan (for 2016-2025) acknowledges the critical function of IP rights in trade and investment, emphasising the principle that IP can “influence both the volume and quality of external trade and investment, and the transfers of advanced, proprietary technologies, as well as being a major determinant of local value added and external competitiveness”.⁴ It also highlighted the significance of collaborative efforts in IP matters across the region, outlining the AEC’s intention to investigate the creation of a unified IP administration.⁵

Thus, the protection of IP rights within ASEAN is vital for several reasons. Consistent and robust IP rights enforcement helps to ensure that innovations and creations are adequately protected across borders, which in turn fosters a healthy environment for foreign investment and economic growth.⁶ For ASEAN, a region marked by varying degrees of economic development and differing capacities for IP enforcement, initiatives like AMP can help harmonise standards and practices, thereby reducing the uncertainty and risk associated with IP infringement.⁷

Moreover, the collective protection of IP rights in ASEAN contributes to the region’s credibility and attractiveness as a safe and reliable investment destination.⁸ This is particularly significant in industries that are heavily reliant on innovation, such as pharmaceuticals, technology, and creative sectors. Ensuring that IP rights are respected and enforced consistently across ASEAN not only protects individual businesses but also supports regional economic integration and development.

AMP’s implications for Singapore as a dispute resolution hub

One in three Singaporean companies seeks to expand into or have a presence in other ASEAN countries. However, more than 60% of companies face significant IP-related challenges. One in five companies chose Singapore as a preferred venue for IP dispute resolution.⁹ The top factor considered when choosing an IP dispute resolution location is the governing law of contract or agreement, followed by the speed of dispute resolution process in that jurisdiction and then the ease of enforcing the judgment/award/settlement agreement obtained in that jurisdiction.¹⁰

Thus, Singapore’s strategic implementation of AMP could significantly enhance its stature as a leading global hub for dispute resolution. By fostering efficient, impartial, and effective mediation services, Singapore positions itself as an attractive venue for international parties seeking to resolve disputes, particularly in the Asia-Pacific region. The city-state’s rigorous legal framework, political stability, and commitment to upholding international business norms provide a conducive environment for mediation to flourish.¹¹

Furthermore, the success of AMP could lead to increased trust and reliance on Singapore’s legal and institutional frameworks, encouraging more multinational corporations to choose Singapore not only for mediation but also for broader legal and arbitration services.¹² This could spur the development of related sectors, including legal services, finance, and professional services, contributing to the country’s economic diversification and growth. Singapore’s role in AMP and its potential ripple effects across ASEAN could strengthen its influence and leadership in regional policy-making, particularly in shaping future IP laws and guidelines. This leadership comes at a ripe time, especially where technological advancement and digital transformation are constantly reshaping traditional concepts of IP rights and enforcement.¹³

Objectives and benefits of AMP

Growing increases in IP or technology disputes have been paced by growing interest in alternative dispute resolution (ADR), particularly in ASEAN. AMP thus directly addresses these trends to benefit businesses in ASEAN through several ways.

Firstly, AMP is strategically designed to ensure mediation becomes a viable, accessible and cost-effective solution for IP or technology disputes. Part of the programme’s appeal would thus be its aims to reduce the financial and procedural burdens typically associated with traditional litigation. By promoting settlement through mediation, AMP helps preserve valuable regional business relationships, which are particularly important in the fields of IP and technology where international collaboration is key. Effective protection, exploitation and enforcement of IP rights across regional borders are vital for their true value to be realised and upheld.

Beyond assisting the settlement of disputes, AMP also supports “deal mediation”, where the mediator facilitates the negotiation and finalisation of agreements. This type of mediation is particularly useful in scenarios such as ongoing patent licensing negotiations, where parties aim to reach a consensus on complex contractual terms.

These benefits will translate into significant savings in time and costs for parties, coupled with less adversarial proceedings. Such an environment is invaluable in the IP and technology sectors, where maintaining positive, ongoing relationships can be as important as resolving the disputes themselves.

The WSO has also initiated cross-collaboration with the WIPO Japan Office and WIPO China Office to collectively promote the AMP to business sectors in their respective regions, with China and Japan both being respectively the first and fourth largest trading partners of ASEAN.¹⁴

Trends and efficacy in IP mediation – first two successful mediation cases under AMP

The WIPO Center has seen a significant increase in IP mediation cases, including cases involving parties based in ASEAN countries, in the last five years. Of those cases, an increasing number relate to trade mark disputes. In the last two to three years, the WIPO Center has also seen a growing number of FRAND¹⁵ and copyright mediation requests, including numerous software copyright infringement cases filed with the WIPO Center’s Singapore office and involving parties based in ASEAN.¹⁶

AMP’s efficacy was swiftly demonstrated in its first two cases, both successfully settled. The first case in 2023¹⁷ involved disputants who were family members and the dispute was over the use of trade marks associated with Chew’s Optics by Chew’s Optics (Bishan) and Chew’s Optics (Kovan) allegedly without proper licensing. This mediation was mediated by Ms Viviene Sandhu, which culminated in a successful settlement that adeptly addressed the interests of both parties, all within approximately five hours.

The second case, mediated at the end of 2023, involved Captain K F&B Management Pte. Ltd. and En Dining Bar Holdings Pte. Ltd.,¹⁸ both Singapore-based entities specialising in Japanese cuisine. The High Court dispute centred on trade mark infringement allegations by En Dining Bar Holdings concerning the usage of similar branding by Captain K F&B Management in their restaurant names. The mediation, led by Mr George Lim SC, resulted in a successful settlement after about eight hours.

Both cases highlight the key benefits of AMP: a quicker and more cost-effective dispute resolution channel that maintains harmony between business entities.

Funding and support structure

One of the most appealing aspects of AMP is its funding scheme. The programme offers up to S$8,000.00 per dispute to cover mediation-related expenses, with the WIPO Center’s administration fee waived. Each party can potentially claim an equal share of up to S$4,000.00 (assuming there are only two parties), unless otherwise agreed. Reimbursement is limited to mediation-related costs and subject to the parties complying with the conditions and providing appropriate invoices for their mediation-related costs. Additionally, the programme offers meeting rooms free of charge for mediation, enhancing accessibility and convenience for all involved parties. Parties may apply for AMP funding until December 31, 2024, or until the AMP fund is drawn down, whichever is earlier. Notably, parties can apply for funding under AMP as long as they have participated in the mediation, regardless of the outcome of the mediation.

Eligibility for funding is straightforward: the dispute must involve at least one ASEAN national or entity, and the mediation can be held online or in-person anywhere, as long as a Singapore-based mediator is appointed. Parties must also provide feedback on the mediation experience and consent to named publicity (excluding details of settlement terms).

AMP also allows a “shadow” mediator under the IPOS Young IP Mediator initiative to observe the mediation, enabling emerging professionals to learn from experienced mediators. This initiative, which was launched back in August 2020, is part of IPOS’ broader strategy to cultivate the next generation of mediators through hands-on learning and professional development.

Comparative analysis with other mediation schemes

While AMP shares some similarities with other schemes like the Revised Enhanced Mediation Promotion Scheme (REMPS), it is distinct in its exclusive focus on ASEAN parties and IP and technology disputes unlike REMPS, which applies to IP disputes filed before the IPOS Registrar in Singapore.

While AMP focuses broadly on covering mediation-related costs without specifics on co-payments, REMPS explicitly requires parties to co-pay minimally 20% of their lawyer or agent fees related to the mediation. The funding caps under AMP and REMPS also differ. Moreover, AMP has a more straightforward application process whereby parties can apply for funding upon their request for WIPO mediation. This stands in contrast to REMPS’ more detailed process, which includes, copying IPOS on the request for mediation made to a mediation service provider, and then following several administrative steps for the appropriate reimbursement from IPOS.

Note that parties may not claim both under AMP and REMPS for costs in relation to the same or substantially the same dispute.

Impact of AMP on Small and Medium Enterprises in ASEAN

Small and Medium Enterprises (SMEs) are pivotal to the ASEAN economy, accounting for the majority of businesses and a significant portion of employment and GDP across the region. These enterprises often face substantial challenges in protecting their IP due to limited resources.

As resource reallocation is crucial for the survival and growth of SMEs, AMP would allow many of them to maintain their competitive edge by ensuring business continuity through a swift resolution of disputes. Extended disputes can lead to business losses and reputational damage, and AMP offers an opportunity to minimise those risks.

Amicable settlement is also greatly beneficial for SMEs that often depend on strong business relationships and networks. This aspect of mediation helps preserve and potentially enhance business relationships, ensuring ongoing collaborations and future business opportunities, which might otherwise be jeopardised by adversarial legal proceedings.

Finally, the educational and capacity-building initiatives associated with AMP equip SMEs with essential skills in dispute resolution and IP management, fostering a deeper understanding of best practices in these areas. This knowledge empowers SMEs to handle future disputes more effectively and enhances their overall IP management capabilities, which are crucial for navigating the competitive markets of today.

How to apply for AMP

Interested applicants can apply for AMP funding by informing the WIPO Center when or after making a Request for WIPO Mediation.

Conclusion

As AMP gains traction, it is expected to significantly influence how disputes are resolved within ASEAN. The hope is that AMP will not only resolve present disputes but will also set a precedent for the use of mediation, encouraging a shift in the regional dispute resolution paradigm.

The WIPO-Singapore ASEAN Mediation Programme is more than just a dispute resolution pathway; it is a forward-thinking initiative that embeds efficiency, cost-effectiveness, and capacity building into our regional legal landscape. It stands as a beacon for ASEAN, guiding it towards collaboration and amicable resolution of IP and technology disputes. As such, ASEAN nationals and entities are strongly encouraged to consider AMP for their mediation needs, to benefit from its numerous advantages.

References and further reading

For those interested in learning more about AMP or initiating a mediation process, detailed information can be accessed through the official WIPO website (here and here) or by contacting the WIPO Center at arbiter.mail@wipo.int. Additional resources and guidance can also be found on the IPOS website (here and here).

This article was written by Mr Caleb Goh for the Law Gazette and was published on 20 May 2024.

See the full article here.