What options are available to settle intellectual property disputes in your jurisdiction?

Intellectual Property

Singapore Small Flag Singapore

Arbitration and mediation are available subject to parties' consent or an agreement to submit their dispute to such procedures. Mediation is available at the World Intellectual Property Organization Arbitration and Mediation Centre ("WIPO Centre"), Singapore Mediation Centre, and Singapore International Mediation Centre. Both the WIPO Centre and the SMC have specialist IP panels of mediators.

For patent disputes, the WIPO Centre also offers expert determination, which is subject to parties' consent.

France Small Flag France

Pursuant to civil proceedings rules, parties willing to settle a dispute in Intellectual Property can:

  • enter into a private settlement agreement providing that the parties withdraw their action and waive any claim in relation with the disputed facts (Articles 2044 et sequitur – French Civil Code (CC));
  • initiate a mediation or conciliation procedure involving the assistance of a third party and, optionally, the recognition by the judge of the agreement then reached by the parties (CPC Articles 127 et sequitur).

Portugal Small Flag Portugal

R: Court Proceedings, arbitration, mediation and other alternative settlement of disputes mechanisms.

India Small Flag India

Mediation and arbitration are the methods that may be used for settling intellectual property disputes in India. Moreover, out of court negotiations and settlement are also common in India which included co-existence agreement etc.

Greece Small Flag Greece

Parties may settle IP disputes out of court, even while proceedings are pending. The settlement agreement may also be submitted to the court, thereby gaining the status of a court order.

The freedom of the parties is restricted in criminal proceedings pertaining to ex officio prosecuted offenses (notably copyright infringement), but the criminal court will, in practice, consider a settlement agreement in deciding the case.

Japan Small Flag Japan

See 17. Parties may seek settlements to disputes in these procedures.

Mexico Small Flag Mexico

Arbitration and Mediation.

China Small Flag China

Disputes may be settled via mediation using a mediation agreement. Parties may submit the mediation agreement to court to obtain a mediation award. The mediation award is enforceable.

United Kingdom Small Flag United Kingdom

Claims may be settled at any time, whether before, during or after commencing proceedings. Some claims are even settled during the trial of the case.

Settlement requires the consideration of a number of factors, such as: whether the alleged infringer will be licensed and allowed to continue the allegedly infringing activity; whether a royalty or licence fee will be paid; whether there will be any payment in respect of the past activities of the alleged infringer; and whether there will be any payment in respect of legal costs incurred by the parties. Once agreed, the terms of the settlement are usually recorded in a settlement agreement. The settlement could also form part of a broader commercial agreement.

If proceedings have been commenced, the parties will have to dispose of the proceedings by agreeing a court Order. The Order will record that the Claimant has discontinued the proceedings or that the proceedings have been dismissed with the consent of the parties. The settlement agreement itself can remain separate from the court Order, and confidential.

South Africa Small Flag South Africa

Patents and Designs
An action or application may be settled at any time before or during the trial/hearing by agreement between the parties.

Plant Breeders’ Rights
A dispute may be settled at any time before or during trial by agreement between the parties.

Trade Marks and Copyright
A dispute may be settled at any time before or during trial by agreement between the parties.

UAE Small Flag UAE

The parties can come to a mutual settlement. The parties could also consider using mediation, such as the Mediation Centre, or the Dubai Chamber's Mediation services, or arbitration services through the Abu Dhabi Global Market.

Dubai's first dedicated business mediation centre launched on May 16, 2016.

Philippines Small Flag Philippines

Other than the alternative dispute resolution mechanism of the IPO and the courts, parties may resort to arbitration which is governed mainly by agreement prior to (e.g. via arbitral clauses) or subsequent (e.g. via agreements to arbitrate) to the dispute.

United States Small Flag United States

Infringement and validity of intellectual property can be challenged in any federal district court while the validity of some intellectual property rights can be challenged at the Patent Trial and Appeal Board or the Trademark Trial and Appeal Board at the United States Patent and Trademark Office.

Germany Small Flag Germany

Disputes can be settled out of court, but also in court as part of court proceedings.

Switzerland Small Flag Switzerland

Both in-court settlements as well as out-of-court settlements are an option.

Ukraine Small Flag Ukraine

Above all, intellectual property disputes can be settled on an amicable basis or in any court having jurisdiction thereof. Besides the state courts, the parties may apply to arbitration courts as well as International commercial arbitration courts. The mediation procedure as a means of dispute settlement may also be applied by the parties (however, the mediation practice is not commonly applied in Ukraine).

Turkey Small Flag Turkey

IPL provides that any disputes related to intellectual and industrial rights shall be settled through litigation. Notwithstanding this fact, when the advantages arising from practices and alternative remedies applied in the world are interpreted along with the fact that the Authority provided in IPL may invite the parties to make a settlement if it deems necessary, it occurs that such disputes could be resolved through alternative remedies although such remedies have not been adopted in practice for the time being.

Sweden Small Flag Sweden

Apart from confirmation of settlement during litigation, a settlement can be reached through mediation and negotiations between the parties. A dispute can also be settled through arbitration proceedings (in this regard, see question 17).

Spain Small Flag Spain

IP rights disputes may be settled at any time between the parties even if criminal or civil judicial proceedings have been initiated.

In criminal court proceedings, despite the agreement reached by the parties, proceedings may be continued at the request of the Public Prosecutor.

In civil court proceedings, the parties are entitled to dispose of the subject of proceedings and may waive, desist, be acquitted, mediate or arbitrate and compromise on what is the object of proceedings, except when prohibited by law or established by limitations of general interest or for the benefit of third parties. Settlement discussions are normally held out of Court, although in certain instances they might take place in presence of the Judge.

The settlement agreement may be reached at any time of the first instance or of the appeals or enforcement of judgment.

While negotiating a settlement agreement, the parties may request the suspension of civil proceedings, which shall be agreed by the civil court provided that it does not prejudice the general or third-party interest and that the period of suspension does not exceed sixty days.

The parties may keep the agreement confidential or request the agreement to be approved by the civil court that is hearing the litigation that is intended to end.

Israel Small Flag Israel

As is well known, litigation is often the most expensive and least effective means of enforcing one’s IP rights. Non-judicial alternatives are usually less expensive and substantially quicker. However, in many cases, it is still necessary to file a claim with the court to induce another party to settle. As noted above, Israeli courts often pressure parties to settle prior to trial, and usually delay the commencement of trial to allow sufficient time for settlement negotiations.

The following alternatives to litigation are available in Israel:

(i) Settlement During IPO/ITO Proceedings
Under Israeli trademark and patent law, parties may settle a dispute during the application process for a patent or trademark.

(ii) Arbitration
Israeli courts often recommended arbitration. The decision of the arbitrator is final and binding on the parties. The arbitrator’s decision requires and usually receives court approval, which renders the decision a binding judicial ruling.

(iii) Mediation
Mediation is usually mandated by the court where the parties have expressed a willingness to negotiate and settle. Unlike arbitration, mediation is non-binding and statements and offers made in mediation are not admissible in court.

(iv) Out of Court Settlement
An out-of-court settlement is usually the quickest and least expensive resolution of IP claims. The settlement generally involves agreement on a certain amount of compensation, royalties, cross-license arrangements, etc.

Updated: August 23, 2017