The first successful mediation case under the World Intellectual Property Organisation (WIPO)-Singapore ASEAN Mediation Programme (AMP) was recently reported by the Intellectual Property Office of Singapore (IPOS). The dispute involved a trade mark dispute between three optometry businesses with family ties: Chew's Optics on one hand, and two related entities, Chew's Optics (Bishan) and Chew's Optics (Kovan), on the other.
AMP is part of the collaboration between the Singapore Government and WIPO, offering funding for mediations administered by the WIPO Arbitration and Mediation Center's office in Singapore.
The dispute involved the use of two trade marks, which were registered by Chew's Optics in 2022:
Prior to the registration of these trade marks, Chew's Optics had been using the marks in the course of its business since 1988 as common law marks (i.e., unregistered trade marks). Chew's Optics licensed use of the marks to Chew's Optics (Bishan) in 2000. Subsequently, in 2021, Chew's Optics (Bishan) established Chew's Optics (Kovan) and used the marks without obtaining the requisite licenses from Chew's Optics.
Reaching a commercially viable solution through discussion and cooperation
The parties were forthcoming with the prospect of attempting mediation to resolve their dispute through AMP, under which parties can receive reimbursement of mediation costs of up to SGD 8,000.
A settlement agreement was reached between the three businesses within a day.
The parties reportedly initially held firm in their positions, particularly given family history. However, as the mediation process progressed, they became gradually willing to compromise, and this led to the resolution not only of the overt legal issues but also of related commitments outside of these legal issues.
The mediation process provided the parties with a confidential environment to share their concerns, with the Mediator stepping in as needed to reframe the parties' perspectives and inject commercial realism to pave the way for a conducive discussion. The Mediator played a pivotal role, giving parties 'reality checks' to help them better appreciate possible ways forward. This can be important particularly in family disputes, where emotions may significantly affect the way parties approach the situation at hand.
AMP is a key option for parties engaged in any intellectual property or technology dispute or negotiation, where one of the parties involved is an ASEAN national or entity. Mediation can save legal costs and resources, result in timelier resolution, and as in this case, achieve outcomes not possible through other dispute resolution mechanisms.
Engaging in open and conducive discussions facilitated by a neutral mediator as a form of dispute resolution may be a particularly beneficial option where family ties are involved.
Parties may apply for funding under AMP until 31 December 2023.