On 16 May 2023, the Intellectual Property Office of Singapore ("IPOS") reported the first successful mediation of 2023 held before the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
Apart from the parties' differences in legal positions, the two main challenges that parties faced during the mediation were their perceptions of "co-existence" and on their proposed language for the mediation agreement.
The parties were ultimately able to resolve their differences after a mediation session lasting close to 8 hours.
In more detail
On 8 February 2022, the applicant, SG Mr Kopi Pte Ltd, applied for the following trade mark (the "Application Mark"):
On 14 April 2022, the opponent, Mr Gan Eng Joo Onassis who is the sole proprietor of Mr Kopi, filed an opposition to the registration of the Application Mark on the basis of indistinctiveness. In particular, the opponent argued that when the Application Mark is viewed as a whole, it will not be perceived as imaginative and will not be easily remembered by the relevant public in relation to coffee products.
The opponent submitted that Mr Kopi had been using in Singapore the sign "Mr Kopi" since 16 October 2021, which was also accompanied with an animated coffee bean logo in or around 2021.
Resolving practical differences through mediation
Parties agreed to attempt mediation before the WIPO Center under the IPOS' revised enhanced mediation promotion scheme, under which parties can receive reimbursement of mediation costs of up to SGD 10,000 where only Singapore IP rights are involved, or up to SGD 14,000 where both Singapore and foreign IP rights are involved.
The mediation was conducted online via Webex.
The two main challenges that arose during mediation were parties' differing perceptions of "co-existence" and on the language of the mediation agreement.
While the details of the specific points of disagreement were not published as they are confidential, it is observed through the IPOS' release that the mediator played an instrumental role in reconciling the parties' differing positions.
Notably, the opponent preferred to keep the mediation agreement simple and straightforward, while the applicant preferred to ensure that the mediation agreement was comprehensive. The mediator suggested that parties reframe the specific obligation as a declaration to be set out in the preamble of the mediation agreement. This allowed parties to bridge the differences in their preference for the language of the mediation agreement.
This illustrates the pivotal role of a mediator when parties are attempting to resolve a dispute.
Parties that wish to ensure that the details of their dispute remain confidential and avoid unwarranted publicity can consider mediation as an option to resolve their dispute. Mediation can save legal costs and result in a more timely resolution. Further, it allows parties to have a neutral mediator assist with any potential communication difficulties between the parties with the view to reach a mutually beneficial resolution for the parties.