India: How Can You Use WIPO's ADR Mechanism In IP Disputes

Cross border and domestic commercial disputes pertaining to Intellectual Property (IP) have become common with the trans-border reputation of brands coming into the picture in the digital era. While judicial options seemed times taking and expensive, the World Intellectual Property Organization (WIPO) set up the WIPO Arbitration and Mediation Centre to provide a convenient, efficient and alternative solution for IP Disputes. Accordingly, parties can now opt for alternative dispute resolution options including mediation, arbitration, expedited arbitration and expert determination for disputes revolving around IP, technology and even domain name disputes.

As a business entity or an individual, IP disputes take a toll on all the parties involved, considering the long years of litigation, associated costs etc. Alternative Dispute Resolution (ADR) has been the new option most businesses are exploring as it provides a flexible, affordable and confidential recourse which can be customized to the needs of the parties. In order to choose ADR as an alternative, the parties involved must agree to be a part of the process, hence this results in a more cohesive approach to wanting to resolve the issue. More so, parties can benefit from the transparency that each side would bring to the table as the end goals for the parties would align i.e. reaching an amicable settlement.

This option extends to a wide spectrum of entities, encompassing large corporations, small and medium-sized enterprises (SMEs), as well as innovative startups from various industries and sectors. It also welcomes participation from artists, inventors, research and development centers, universities, producers, and collecting societies hailing from different countries. The proceedings can be conducted in multiple languages and locations, catering to the convenience of the involved parties.

WIPO ADR procedures are designed to foster favorable conditions for resolving disputes amicably. Notably, a substantial 70% of WIPO mediation cases and 33% of WIPO arbitration cases have successfully resulted in mutually agreeable settlements between the parties. The disputes in WIPO ADR cases have encompassed a broad range of monetary values, ranging from $15,000 to as high as $1 billion. The remedies sought in WIPO mediation and arbitration proceedings have included claims for damages, declarations of infringement, and specific performance, such as declarations of non-compliance with contractual obligations or infringement of rights. Additionally, these procedures offer enhanced measures to safeguard the confidentiality of evidence provide security, facilitate the production of data, the delivery of goods, and even the negotiation of new contracts, including the determination of licensing terms.

As per WIPO's reports, most often than not, commercial IP disputes stem from contract clauses. This may include ambiguity in clauses or conflict in different clauses, resulting in differing interpretations leading to disputes. To combat this and provide appropriate resources for contract clause integration, WIPO developed the WIPO Clause Generator.

WIPO Clause Generator

The WIPO Clause Generator aids in bringing about more clarity and efficiency in the dispute resolution process, by helping parties incorporate model alternative dispute resolution (ADR) clauses and submission agreements.

This invaluable tool serves to ensure that all essential components of a dispute resolution clause are meticulously covered, thereby preventing potential ambiguities that could otherwise result in complications and delays down the road.

It empowers parties to precisely delineate crucial elements, including but not limited to the choice of arbitration or mediation venue, the governing law, the language in which proceedings will be conducted, and the selection of a mediator or arbitrator. WIPO's model clauses and submission agreements have been drafted carefully by experts in the field. By leveraging these templates, parties can proactively establish a solid foundation for effective and streamlined dispute resolution.

Steps to use the WIPO Clause Generator

a. Ascertaining the type of dispute

The party will have to select whether they wish to use this tool for a contract clause, which may come into use at a later stage between the contracting parties to refer any future disputes to the ADR Centre.

Alternatively, if the parties are already embroiled in an existing dispute, they may select the option to generate a submission agreement. A submission agreement is a legally binding document that parties involved in a dispute can enter into voluntarily. It outlines their mutual consent to submit an existing dispute to a specific method of ADR, such as mediation or arbitration.

b. Determining a specific ADR mechanism

In order to generate a clause or a submission agreement, it is essential to determine the ADR method that both parties wish to subscribe to. The clause generator, based on the WIPO ADR Centre, provides a range of ADR procedures, each tailored to address different aspects of resolving disputes efficiently and effectively. Some of them are listed below:

1. WIPO Mediation: This ADR process is an informal and consensual method where a neutral mediator helps the involved parties reach a settlement. The mediator facilitates the resolution based on the parties' individual interests, without imposing a decision and helps the parties reach a settlement.
2. WIPO Arbitration: In this consensual procedure, the parties submit their dispute to one or more selected arbitrators for a binding and final decision (award). The arbitration process focuses on determining the parties' respective rights and obligations, and the resulting award is enforceable under arbitral law.
3. WIPO Expedited Arbitration: This ADR procedure emphasizes efficiency and cost-effectiveness. It is conducted in a shorter time frame and at a reduced cost, typically with a sole arbitrator serving on the arbitral tribunal.
4. WIPO Mediation followed by Arbitration: This is a multi-tiered dispute resolution process that integrates mediation and arbitration. It begins with mediation, where the parties attempt to reach a settlement. If mediation doesn't yield a resolution, the process transitions into arbitration to provide a final decision.
5. WIPO Mediation followed by Expedited Arbitration: Similar to the previous option, this multi-tiered approach combines mediation with expedited arbitration in the absence of a settlement. It prioritizes efficiency and swift resolution while maintaining the flexibility to adapt to the circumstances of the dispute.

c. Venue, Language and Procedure

Once the parties select the type of dispute and the method of dispute resolution, the next aspect pertains to determining the place of arbitration or mediation and the language in which the proceedings will be conducted.

An example of the clause yielded by the tool, if the options of a future dispute as the type of dispute and mediation the ADR mechanism are chosen, is produced below:

Similarly, the parties also have the option of choosing the qualifications of the mediator, the conduct of the mediation and the duration of the mediation proceedings.

Alternatively, if the parties choose arbitration or the amalgamation of arbitration with mediation as part of the other options, the details required for the submission agreement or contract clause become more elaborate due to procedural differences. These would include the scope of arbitration, number of arbitrators, place & language of arbitration, and most importantly determination of the substantive law, meaning the law which will be governing the arbitration proceedings. The tool thereafter will generate a well crafted clause or agreement, including the essential elements as specified by the parties. The final result can then be downloaded from the generator clause webpage itself.

The WIPO clause generator is a well-thought out tool which can be used by large corporations, small and medium-sized enterprises (SMEs), innovative startups, artists, inventors, research and development centers, universities, producers etc.

Conclusion

In summary, WIPO's encouragement of ADR mechanisms provides an efficient solution for a diverse spectrum of entities facing IP disputes, while the WIPO Clause Generator enhances the clarity and precision of dispute resolution clauses. These resources offer clarity, flexibility, and transparency, empowering parties to achieve amicable settlements and substantial cost savings in a digital age marked by complex cross-border and domestic IP disputes.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.