IP dispute Mediation: YODA vs. YUDA

Promoting swift, efficient, and creative mediation of IP disputes instead of long, drawn-out court/tribunal cases.

“A Jedi uses the force for knowledge and defense, never for attack” – YODA

Recently, a Singapore-based trademark opposition dispute involving the marks “YODA” and “YUDA” which were both registered in the same class were at the stage of IPOS’ Pre-Hearing Review. The Principal Assistant Registrar suggested that parties consider WIPO’s offer of free mediation to attempt to resolve their dispute amicably.

Their dispute was assigned to Jonathan Agmon, our founding partner, and a certified WIPO Arbitrator/Mediator, based in Singapore.

The Background to the Dispute

The case was essentially a family dispute between two Singapore-registered companies, K & Q Brothers Electrical Engineering Co. Pte. Ltd. (the Opponents) and K&Q Fatt Pte Ltd (the 1st Applicants). Both companies are in the business of manufacture, repair, and wholesale of a variety of goods including refrigerators, air conditioning and ventilating machinery. The Opponents have been registered in Singapore since 1989 and owned registration of the trademark “YODA” in Class 11 in respect of refrigerators, food and drink chillers, freezers, and ice machines since 18 May 1994. The Applicants have more recently attempted to register a trademark called “YUDA”, similarly in Class 11, in the same trade and for the same purposes of utilization as “YODA”. Unsurprisingly, the Opponents opposed the registration of the Applicants’ trademark “YUDA” on the alleged grounds of confusing similarity with the Opponents’ earlier trademark, “YODA”.

At the time of the mediation, the parties were also engaged in parallel shareholder dispute litigation. As this is a family dispute and parties have shared history, they were initially not on speaking terms. The 1st Applicants’ founder being a former director of the Opponents and tensions were understandably high. Reaching a successful settlement through mediation was therefore not an easy feat.

Jonathan, an experienced and skilled mediator, managed to get both parties to resolve this trademark dispute amicably.

The Mediation Process

To maximize the time allocated for the mediation session and understand both parties’ cases thoroughly, Jonathan made extensive preparations prior to the mediation. The preparation work included encouraging parties’ mediation advocates to prepare comprehensive mediation statements to condense and provide a clearer understanding of the business and personal interests of each party. This step was crucial in allowing both sides to visualize all aspects for the co-existence of the two trademarks and businesses.

To further enable parties to save costs, Jonathan offered the use of Soroker Agmon Nordman’s offices as mediation venue. The mediation session included in-person meetings and a combination of joint sessions which were held in the firm’s meeting room; and break-out caucus sessions, held in the rooms of the senior partners. The quiet and spacious office provided a conducive environment for the mediation.

The first joint session was particularly helpful in bringing parties together as it allowed them to discuss and hear each other’s positions. The caucuses were also important for parties to consider and reflect on each other’s positions and offers for settlement. Through effective use of caucuses and break-out sessions, Jonathan was able to encourage parties to compromise. The final joint session was used towards the end of the mediation to draft the settlement agreement and sort out the final details of the settlement before the parties signed the co-existence agreement. All of this was achieved within a day.

Jonathan’s signature friendly and cheerful spirit paved the way for the parties to communicate directly with each other and his confident and professional presence dictated the pace for the mediation. As a neutral mediator, Jonathan constantly allowed both parties to focus on the commercial sensibilities and put their family dispute aside.  The constant emphasis on facilitating a resolution to the trademark dispute allowed parties and their mediation advocates to focus on discussing ways of avoiding confusion for customers with the use of the respective marks, which allowed parties to see a possible reality for their respective brands and businesses to co-exist.

If parties had decided to escalate this matter litigiously in an adversarial setting, it would have been unduly prolonged, and they would have incurred substantial costs. Mediation was thus a much more suitable platform for their dispute.

With the conclusion of this successful mediation, Jonathan shared his views on the suitability of mediation for IP disputes:

“I consider IP disputes to be particularly suited for mediation not only because the process allows the parties to discuss freely and confidentially their interests but also because, unlike court or tribunal proceedings, the process allows for out-of-the-box solutions. Such solutions could in many cases bring the parties to an agreement where both parties benefit without the need to reach a judicial resolution and the costs involved.”

 

Further information on this case can also be found at:

https://www.ipos.gov.sg/docs/default-source/protecting-your-ideas/hearings-mediation/mediation-at-ipos-(emps).pdf