What options are available to settle intellectual property disputes in your jurisdiction?
Intellectual Property (3rd edition)
Parties may settle intellectual property disputes by going to Court or referring their disputes to arbitration. However, in Malaysia there is mediation by the Court which may be explored by parties.
At any point prior to the decision being handed down, the parties may decide to settle the case. During the CMC, the court will ask the parties if they wish to go through court mediation to seek a settlement, but this is not mandatory. If the parties settle the case, they will usually submit a joint pleading requesting that the case is withdrawn.
A dispute may be settled at any time, even midway through trial. If official proceedings have been commenced, a notice of discontinuance will have to be filed with the court.
Parties may also elect to refer their disputes for mediation or expert determination. However, such alternative dispute resolution mechanisms will require the consent of both parties.
Arbitration and Mediation.
Besides the options stated in above questions, disputes can be settled through mediation. Once a mediation agreement is reached, the people’s court will draw up a written mediation paper, which clearly set forth the claims of the action, the facts about the case, and the result of the mediation. Once the mediation paper is signed by both parties, it becomes legally binding and enforceable.
In addition, disputes may also be settled via conciliation, once the conciliation agreement is reached and signed by both parties, the plaintiff will withdraw the lawsuit.
And the arbitration is another option to settle IP disputes. It requires arbitration agreement in that both parties agree to settle disputes through arbitration.
Any party can choose to mediate or in any other way negotiate a settlement.
Administrative tutelage actions, agreements and intellectual property office proceedings.
Disputes may be resolved through the court system as well as by arbitration and by mediation (provided the parties agree to either of these methods of dispute resolution).
An IP right owner can file an application for suspension of import/export with Customs requesting that Customs initiate identification procedures in the case where Customs detects import/export goods suspected of infringing the IP rights.
If it is decided that the goods infringe the IP rights through the identification procedures, Customs can confiscate and destroy the infringing goods.
In-court conciliation and/or mediation can be requested by the parties or recommended by the judge at any time during the civil proceedings. Out-of-court settlements are also available. It is also acknowledged in Switzerland that intellectual property disputes can be arbitrated (including decisions on the validity of registered intellectual property rights). The IPI will recognize an arbitral award as the basis for or amendment of a new entry in the register.
Disputes can be settled in court and out of court, either by arbitration or mediation. Also, the parties are free to negotiate a dispute resolution agreement during court procedures, as a conciliatory approach is stimulated during proceedings.
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 usually 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.
The courts usually press the parties to settle or to agree to mediation. Parties may agree to mediation before or during litigation, and they may also agree to arbitrate in lieu of litigation.
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 seq. of the 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 (Article 127 et seq. of the CPC);
• provide an arbitration clause, either inserted in the agreement before any dispute or in a separate agreement once the dispute has arisen. However, it should be noted that if the dispute concerns the validity of the right, invalidity pronounced by the arbitrators shall have effect only between the parties (Article L.331-1 IPC, Article L.521-3-1 IPC, Article L.615-17 IPC, Article L.623-31 IPC, Article L.716-4 IPC, Article 2059 and 2060 CPC).
Disputes can be settled out of court, but also in court as part of court proceedings.
The parties involved in an IP related dispute, may decide to settle their issue by entering into a private settlement agreement through which the parties withdraw their action and waive any claim in relation with the issue at hand. The parties can settle the case at any stage and phase of the proceedings. The settlement could be reached even before (in order to avoid the litigation) or after the decision (in order to avoid or modify the enforcement of the decision). Generally, the settlement is reached through negotiations, including between lawyers.
Alternatively, the parties may settle their issue and opt for a mediation through the service rendered by ADR' entities. In the context of a legal dispute, the judge has also the power to invite the parties to settle the case and can schedule a specific hearing for this purpose.
Out-of-court settlement is possible, even after the introduction of court proceedings. If the agreement is duly submitted to court, it may take the form and obtain the status of a judicial decision.
In the case of case of criminal offences prosecuted ex officio, the parties do not have the power of disposal of the dispute. Nevertheless, de facto the court will take into account a settlement agreement.
Apart from going for litigation in cases of infringement, other methods like mediation or arbitration have started to become more prominent in cases of intellectual property disputes in India. However, arbitrability in IPR is only possible for disputes involving right in personam and not in the case of right in rem. As per the current position in India, there is no blanket bar on arbitrability of IP disputes. Instead, arbitrability is determined on the basis of nature of claims raised. Disputes of royalty, geographical area, marketing and other terms of the license agreements, which are purely contractual, would be arbitrable. Parties in India can and should freely arbitrate such disputes. However, a dispute of validity/ownership of an IP right should be decided by the court/assigned public administration, for the dispute would result in a judgement affecting the general public’s right to use the respective asset. Moreover, out of court negotiations and settlement are also common in India, which include co-existence agreement etc.
Administrative and judicial procedures, private agreements between parties, like coexistence agreements for trademarks, conciliations and arbitrations.
Parties may opt for amicable resolutions via negotiations and talks, alternative dispute resolutions such as arbitration, or court proceedings. Arbitration and mediation are options for alternative dispute resolution in Malta, which may result in less costly mechanisms for interested parties.
Parties are free to settle its dispute outside the court through mediation or arbitration either prior to court action or during the action should the parties wish to do so.
Intellectual property disputes may be settled at any time and a commercial resolution to the dispute may be reached without the intervention of the Court. If litigation has already commenced, a party claiming relief may discontinue the proceedings and the matter will then be disposed of by an order of the Court, which is usually sought by consent from the parties.
Any settlement that is reached between the parties should be encapsulated into a formal settlement agreement. Such an agreement will normally cover issues such as: whether a licence is being granted to use the intellectual property and under what terms; whether there will be any payment made for past damages and legal costs; a dispute resolution mechanism; and confidentiality.
Parties are able to settle a dispute any time during the litigation. The parties’ settlement can take the form of a customary IP license or agreement. Private parties also frequently use binding arbitration or voluntary mediation to settle intellectual property disputes.