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Gromark Consumers Enterprise & GK Laboratory (Asia): IP mediation

The Intellectual Property Office of Singapore (IPOS) recently had a successful mediation in October 2020, where the parties reached a mutually beneficial outcome that met the commercial concerns of both of them in a span of just eight hours. This success is enhanced by the fact that the dispute involved questions of intellectual property rights in both Singapore and overseas.

The dispute essentially pertains to an opposition to a registration of a trademark, “timeless tomato” in Classes 3, 5 and 35 for both goods and retail/wholesale services relating to cosmetic preparations and nutritional supplements, as well as the logo. The applicant of the said registration, GK Laboratory (Asia) Pte Ltd, is in the business of health supplements and beauty products in both Singapore and overseas, particularly in the People’s Republic of China.

The opponent, Gromark Consumers Enterprise Pte Ltd, is a manufacturer, exporter and distributor of beauty products and supplements in the cosmetic and cosmeceutical industry. In the course of its business, the opponent had sold various products under the “Crystal Tomato” brand name and has also registered numerous trademarks in Singapore and overseas. The opponent opposed the registration of “timeless tomato” on the ground that it would cause confusion in the market vis-à-vis its own “Crystal Tomato” brand and adversely affect the opponent’s business.

Following the exchange of the initial pleadings in the opposition proceedings at IPOS, IPOS informed both parties about the Enhanced Mediation Promotion Scheme (EMPS), which is a funding scheme by the Intellectual Property Office of Singapore (IPOS) to cover part of parties’ mediation costs, and the parties agreed to participate in the EMPS scheme. The mediation service itself was administered by the World Intellectual Property Organization (WIPO) Center, which proposed three candidates for the parties to appoint as mediator.

During the mediation, parties discussed in the presence of the mediator as well as between themselves and, by the end of eight hours, were able to finalize the terms of a settlement agreement which met both parties’ concerns in respect of their businesses in Singapore as well as overseas.

Given that the dispute pertains to multiple jurisdictions, parties can receive a sum of S$12,000 (US$9,040) in funding. Further, the total subsidies available can be applied towards up to 50 percent of the parties’ mediation-related lawyer fees and disbursements as parties had applied for WIPO Center’s complimentary mediation service. Thus, both Gromark and GK Laboratory were able to achieve a resolution of their dispute in a time and cost-effective manner.

By: Denise Mirandah and S. Siddharth Sriram

This article was first published in Asia IP. For more info, please visit https://www.asiaiplaw.com/section/ip-analysts.