Singapore: Leonid Kovalkov v. JNBK Group Private Limited [2022] SGIPOS MED 1 demonstrates value of mediation of disputes before Intellectual Property Office of Singapore

In brief

The parties in the mediation Leonid Kovalkov v. JNBK Group Private Limited [2022] SGIPOS MED 1 had been embroiled in several disputes before the Intellectual Property of Singapore (IPOS) since 2012, including several that proceeded to full hearings and resulted in three full grounds of decision.

There were two further proceedings between the parties that they chose to submit to mediation. While the parties were unable to conclude a mediation settlement agreement, the proceedings that were the subject of the mediation were withdrawn.

This could be seen as a win-win for both parties, particularly given their acrimonious history. The case showcases the value of mediation even when no final settlement agreement is reached.


Contents

Key takeaways

  • The parties are in the business of dealing with motor vehicle spare parts. They were originally business partners but the relationship deteriorated. They were then involved in various disputes before the IPOS, spanning some eight years. The latest disputes arose from two applications brought by Leonid Kovalkov: one to invalidate a trade mark registered by JNBK Group Private Limited on the basis that it should not have been registered as a trade mark; and the other to revoke another trade mark registered by JNBK Group Private Limited on the basis of non-use.
  • In the course of the proceedings, the registrar broached the option of mediation to resolve the dispute. The parties agreed to submit the dispute to mediation under the auspices of the Singapore Mediation Centre.
  • While the parties were unable to reach a settlement agreement, the two proceedings before IPOS were ultimately withdrawn. This meant that after close to 10 years, no pending disputes between the parties exist now.
  • Parties that have a dispute before the IPOS have consistently been encouraged to amicably resolve their dispute. The IPOS has implemented various schemes to encourage parties to choose mediation as an alternative to a hearing. For example, under the Mediation Promotion Scheme, parties in a mediation case can receive funding of up to SGD 10,000, or up to SGD 12,000 if foreign IP rights are added to the subject matter of mediation, regardless of the mediation outcome.
  • Many disputes before the IPOS have been successfully resolved via mediation. This includes the first successful multijurisdictional IP mediation involving a law student under IPOS's Young IP Mediator initiative, which was led by Baker McKenzie's Andy Leck, a mediator with the WIPO Arbitration and Mediation Center.
  • As demonstrated by this featured case, there can also be great value in mediation even for disputes where no final settlement agreement is reached.

 

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