DAMODARAM SANJIVAYYA NATIONAL LAW UNIVERSITY

VISAKHAPATNAM, A.P., INDIA

EFFICACY OF THE CONVENTIONS IN RESOLVING THE INTERNATIONAL

DISPUTES

FACULTY

VISHNU KUMAR

SUBJECT

INTERNATIONAL DISPUTE SETTLEMENT

SUBMITTED BY:

ANULEKHA M.

2016060

SEMESTER VII

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 ACKNOWLEDGMENT

I would express my gratitude to VISHNU KUMAR for giving me this golden opportunity to do a
research on “Efficacy of the conventions to resolve international disputes ”. The
research has been of great significance in understanding the exhaustive aspects of the subject
matter.

I would also like to thank my friends and colleagues who extended their support at every step.

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 ABSTRACT

Topic: Efficacy of the conventions to resolve international disputes.

Growth in international transactions has multiplied the potential for cross-border intellectual
property (IP) disputes. Global challenges – such as the digital environment, climate change
issues, access to health care, the protection of traditional knowledge and traditional cultural
expressions and the preservation of biodiversity – may create new types of IP disputes.
Meanwhile, the economic downturn is providing an incentive for stakeholders to seek more
efficient and affordable means of resolving such disputes than through court litigation – making
alternative dispute resolution (ADR) an increasingly attractive option.

ADR refers to neutral mechanisms allowing parties to solve their disputes outside of court in a
private forum, with the assistance of a qualified neutral intermediary of their choice. ADR can
only be applied if all parties agree to submit their dispute to the procedure or if it is mandated by
a competent court. The benefits include time and cost efficiency, flexibility, party control,
neutrality, a single procedure, confidentiality and expertise.

The WIPO Arbitration and Mediation Center is a neutral, international and non-profit dispute
resolution provider that offers time- and cost-efficient alternative dispute resolution (ADR)
options. WIPO mediation, arbitration, expedited arbitration, and expert determination enable
private parties to efficiently settle their domestic or cross-border IP and technology disputes out
of court. The WIPO Center is also the global leader in the provision of domain name dispute
resolution services under the WIPO-designed UDRP. In this project the researcher wants to
research –How the disputes are in Intellectual property rights are settled through Alternate
dispute resolution?

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 SYNOPSIS

Objective of the Study

The objective of the study is know how by what way the disputes are solved through conventions
in international disputes.

Significance of the study

This study is expected to broaden the understanding of how disputes are settled in international
law. It helps to know the way the reports are given. This research work will facilitate further
studies by other researchers who showed an interest in understanding the concept of the
settlement of disputes in international law through conventions.

Scope of the study

The study possesses some limitations. The entire study is based on the disputes settled in
international law through by way of the conventions.

Research methodology

The research would be doctrinal in nature which refers to primary resources, as well as
secondary resources such as various commentaries, books, scholarly articles and web journals.

Research Hypotheses

Conventions are suitable for resolving the international disputes.

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 TABLE OD CONTENTS

INTRODUCTION……………………………………………………………………………….6

ALTERNATIVE DISPUTE RESOLUTION (ADR)…………………………………….……6

NEED FOR ALTERNATIVE MODE OF DISPUTE RESOLUTION IN INTELLECTUAL

PROPERTY DISPUTES……………………………………………………………………..…7
ALTERNATIVE DISPUTE RESOLUTION MEASURES FOR INTELLECTUAL
PROPERTY………………………………………………………………………………….…...9

THE WIPO ARBITRATION AND MEDIATION CENTER……………………………….11

PARIS CONVENTION………………………………………………………………………..11

THE BERNE CONVENTION…………………………………………………………………12

TRENDS IN WIPO MEDIATION AND ARBITRATION………………………………….12

ADVANTAGES OF USING ADR IN RESOLVING IP DISPUTES……………….………13

PATENT LAW AND ALTERNATIVE DISPUTE RESOLUTION………………….…….15

TRADE MARK LAW AND ALTERNATIVE DISPUTE RESOLUTION…………….…..17

USING ADR IN RESOLVING IP DISPUTESINTERNATIONAL SCENARIO …….…...18

ADR IN IP DISPUTES IN INDIA……………………………………………………………..19

SETTLEMENT TRENDS……………………………………………………………………...20

CRITCIISMS OF ADR…………………………………...……………………………………21

CONCLUSION…………………………………………………………………………………21

BIBILIOGRAPHY………………………………………………………………………….....22

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INTRODUCTION

Intellectual property (IP) is a central component of today’s knowledge economy, and its efficient
exploitation is of growing importance to successful business. Intellectual property rights are the
rights given to persons over the creations of their minds. They usually give the creator an
exclusive right over the use of his/her creation for a certain period of time. The Intellectual
Property (IP) presents that its subject matter is the result of the mind or the intellect. Like
Patents; Trademarks; Geographical Indications; Industrial Designs; Layout-Designs
(Topographies) of Integrated Circuits; Plant Variety Protection and Copyright etc 1 . IP can be
owned, bequeathed, sold or bought. The major features that distinguish it from other forms are
their intangibility and non-exhaustion. IP is the foundation of knowledge-based economy. It
pervades all sectors of economy and is increasingly becoming important for ensuring
competitiveness of the enterprises2.

In past the true capability of arbitration and mediation has not been utilized as the IP owners and
lawyers were more inclined towards traditional courts. But things has changed in past few years
and parties are now more inclined towards this new way of resolving their disputes. The ADR
got strength by the success of domain name dispute resolution procedures such as the Uniform
Domain Name Dispute Resolution Policy (UDRP). With this now the owners of the trademarks
can protect their marks on internet.

Intellectual property protection is available for a limited period for the intellectual property
creator who has to enforce it in an effective manner. Disputes relating to intellectual property
protection are gradually escalating, Because of the excessive delays in the judicial system, there
is a need to look for other solutions and mechanisms for sharing the burden of the judiciary. This
is particularly relevant because the aggrieved person enjoys limited rights and the only remedy
available is that which is prescribed under substantive legislations. Alternative dispute resolution
measures are gaining prominence for enforcing the protection of intellectual property. And it’s
the most effective step to solve the disputes.

1
. P. Narayanan, Law of Copyright and Industrial Design, (2007) .
2
Dr. Vikas Vashishth, Law and practice of intellectual practice in India, First Edition(2002).

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 ALTERNATIVE DISPUTE RESOLUTION (ADR)

Towards the end of the 1980s, as a result of the 1976 Pound Conference that allowed
governments to create the “multi-door courthouse” system, there was a substantial amount of
arbitration disputes, the guide illustrated. In the area of intellectual property, alternative dispute
resolution (ADR) procedures were rarely used since intellectual property “had traditionally been
regarded primarily as a means to exclude or limit others from using certain protected subject
matter, through litigation if necessary,” according to an account on the WIPO website.

Since intellectual property was beginning to become an essential part of business, businesses
started looking at less expensive, alternative methods to settle disputes, WIPO said. In
recognition of this growing ADR market, international organizations informally gathered to
settle disputes without litigation, and in 1994, WIPO created the WIPO Arbitration and
Mediation Center (AMC).

As of today, the WIPO centre has settled over 40,000 cases, in domain name disputes alone.
From its experience in ADR, the centre organized the guide, to assist “IPOs, courts and other
bodies considering the development, implementation and/or improvement of ADR programs
directed at intellectual property disputes.”

ADR has been used as a way to avoid litigation, according to the guide. The guide lists the
advantages ADR provides, and what benefits IPOs gain when institutionalizing ADR centers.
Other sections of the guide provide detailed descriptions of how ADR procedures are used in IP
disputes. The guide provides information on general trends and landscapes of ADR, different
approaches to ADR, and the three common types of ADR: mediation, expert determination, and
arbitration.3

The final chapter suggests detailed ways for courts and IPOs to begin institutionalizing ADR
formally. From raising funds to marketing, the guide provides instruction on how courts and
IPOs may create ADR centers and keep the centers operating. In the appendix, the guide

3
www.amicus.iupindia.org

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demonstrates how some IPOs have already begun to institutionalize ADR and incorporate some
ADR processes into practice.4

The ADR has received widespread acceptance in both developed and developing countries 5.
Informal methods, cost effectiveness and being less time-consuming has made ADR the first
preference among the parties. An Alternative Dispute Resolution method includes arbitration,
mediation, negotiation, and conciliation. The Arbitration and Conciliation Act, 1996 has been the
main statute in India dealing with the two cited alternate forms of dispute resolution.
Collaborative law is also added to it, since it is practiced internationally in a voluntary dispute
resolution process that does not involve the court norms. The ADR methods mainly focus on
problem solving but not on declaring winners and losers. Hence ADR is called as ‘win-win-
strategy’.

In some countries like Australia Alternative dispute resolution is also known as External Dispute
Resolution .Despite earlier resistance to ADR by both parties and their advocates, ADR has
received widespread acceptance among both the general public and the legal profession in recent
years. The rising popularity of ADR can be explained by the increasing caseload of traditional
courts, the perception that ADR imposes fewer costs than litigation, a preference for
confidentiality, and the desire of some parties to have greater control over the selection of the
individual or individuals who will decide their dispute6.

The merits of the modes of alternate dispute resolution are not only limited to speedy remedy,
but also, to the flexibility, cost effectiveness, confidentiality and business oriented results. The
Indian judiciary has effectively tried to bring mediation and settlement for intellectual property
disputes in the traditional model of litigation, through the reading of section 89 of the Civil
Procedure Code, 1908. Even where the alternative dispute resolution methods fail to be the
effective choice for the determination of disputes related to intellectual property rights, they can
be used for narrowing down the issues for contestability in a traditional model of litigation.

NEED FOR ALTERNATIVE MODE OF DISPUTE RESOLUTION IN INTELLECTUAL

PROPERTY DISPUTES
4
https://www.ip-watch.org/2018/07/31/updated-wipo-guide-alternative-dispute-resolution-tool-ip-offices/
5
www.amicus.iupindia.org
6
Kanika Sawhney, Alternate Dispute Resolution to online Dispute Resolution, 2 Amity Law Review 57(2001)

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The intellectual efforts of the creators of intellectual property are valued on the basis of the sign
of the rights affixed to ‘intellectual output’. Intellectual property protection provides a pointer to
the creator to exert his powers over third parties, who, without his permission, try to use the
fruits of his labor. The rationale for the creation of rights gets defeated if they cannot be
enforced. The owners of intellectual property have to be their own watchdogs and take recourse
to the Courts for the infringement of their rights. Indian Courts have taken a giant leap towards
the development of an intellectual property regime in India; however, the available resources
could be put to better and proper use by the Courts in India if the alternate dispute resolution is
deployed. Matters related to patent law and copyright law, which involve intersection with
science and an understanding of technology, need special adjudicating officers, who can
comprehend the interdisciplinary nature of the case at hand with sufficient ease. The limited
nature of protection given to the owner of intellectual property rights, calls for developing
mechanisms to execute immediate and swift justice.7 

While evaluating the performance shown by the Indian judiciary in cases related to intellectual
property rights, the Supreme Court of India has in the case of Shree Vardhman Rice & Gen
Mills v. Amar Singh Chawalwala8 held that “Without going into the merits of the controversy,
we are of the opinion that the matters relating to trademarks, copyrights and patents should be
finally decided expeditiously by the Trial Court instead of merely granting or refusing to grant
injunction. In the matters of trademarks, copyrights and patents, litigation is mainly fought
between the parties about the temporary injunction and that goes on for years and years and the
result is that the suit is hardly decided finally. This is not proper…In our opinion, in matters
relating to trademarks, copyright and patents, the proviso to Order XVII Rule 1(2) C.P.C. should
be strictly complied with by all the Courts, and the hearing of the suit in such matters should
proceed on a day to day basis and the final judgment should be given normally within four
months from the date of the filing of the suit.”
ALTERNATIVE DISPUTE RESOLUTION MEASURES FOR INTELLECTUAL
PROPERTY

7
https://singhania.in/alternative-dispute-resolution-ip-law-india/
8
2010 (79) ALR 357

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The solution lies in the introduction of alternative dispute resolution mechanisms, for the
redressal of grievances related to infringement of protected rights of an intellectual property
holder. Alternative dispute resolution mechanisms are less time consuming, efficient and provide
flexibility to the right holder. It is important to note that in all the commercial transactions, the
route of alternate dispute resolution has already shown its majority over the traditional modes of
litigation. Nowadays, contracts related to transfer of intellectual property mostly include the
“arbitration-mediation”clause.

This highlights the weight of arbitration in commercial intellectual property transactions. In a

landmark judgment in the case of Bawa Masala Co. vs. Bawa Masala Co. Pvt. Ltd.9 Where a
number of legal disputes were already resolved through a process of alternate dispute resolution,
the Delhi High Court passed orders for adoption of a process known as early neutral evaluation,
in an intellectual property based litigation suit. The Court in this case, under the umbrella of
section 89 of the Civil Procedure Code, 1908 mooted for the inclusion of such procedures for
amicable settlement of disputes. The Court further said that the early neutral evaluation
procedure shares the “same features as a mediation process the difference is that in case of
mediation the solutions normally emerge from the parties and the mediator makes an endeavor to
find the most acceptable solution” whereas “in case of early neutral evaluation, the evaluator acts
as a neutral person to assess the strengths and weaknesses of each of the parties.” The Court
further made a distinction between early neutral evaluation and arbitration by stating that in early
neutral evaluation “there is no testimony or oath or examination and such neutral evaluation is
not recorded.” The Court also held that early neutral evaluation is “confidential and cannot be
used by any of the parties against the other. There is no award or result filed.” This stands as a
seminal case, where, Indian Courts have tried to bring alternative dispute resolution machinery
for solving intellectual property infringement related matters. This case also highlights the
inclination, which Indian Courts have started sharing, towards involvement of alternate dispute
resolution measures in resolving of such disputes.

However, use of alternative modes of dispute resolution for determination of intellectual

property related disputes, may face some problems. Firstly, since the protection of intellectual
property is territorial in nature, the public policy consideration as set down by the Supreme Court

9
AIR 2007 Delhi 284, (2008) 149 PLR 38

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of India in the case of O.N.G.C v. Saw Pipes10, can pose a hurdle towards enforceability of
arbitral awards, if made on the mandate of intellectual property related disputes. Secondly, the
issue of validity of intellectual property points towards determination of right against everyone.
This might pose another roadblock for the use of alternative dispute resolution machinery in
intellectual property related disputes. However, the determination of infringement of intellectual
property, as it determines the rights between two parties, can certainly be adjudicated by the use
of alternative dispute resolution machinery.

WIPO-REGULATED INTELLECTUAL PROPERTY CONVENTIONS: PROBLEMS

AND PROSPECTS

The WIPO-driven international intellectual property protection regime commences its mission
with the aim of 'developing a balanced and accessible international intellectual property system,
which rewards creativity, stimulates innovation and contributes to economic development while
safeguarding the public interest. To this end, the regime carries out the global promotion and
protection of IPRs. While doing so, the administration of the Paris and Berne Unions created by
the Paris and the Berne Conventions respectively is required to secure economic development
and safeguard public interests. However, the aims of securing owners' interests and safeguarding
public interests appear contradictory to each other and hence, create conflicts between IPRs-
owning developed countries and IPRs-using developing and least developed countries.

THE PARIS CONVENTION

The Paris Convention is the first international convention that comprises the international
protection regime for TPRs. Article 2 of the Paris Convention speaks of the 'national treatment
principle' with regard to industrial property, currently known as intellectual property. It says that
a member of the Convention must grant the same industrial property protection to nationals of
other member countries as it provides to its own nationals. 11 This provision is considered to serve
the trade interests of developing and least developed countries in spite of the fact that these
countries have a little involvement with producing and trading of IPRs goods. On the other hand,
this provision creates an immediate concern for IPRs-owning developed countries since a

10
(2003) 5 SCC 705
11
Paris Convention Article 2.

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country offering no intellectual property protection to its nationals, does have no obligation to
provide any protection for the nationals of other countries.

The Convention also guarantees the 'right of priority' to foreign nationals of member countries,
who have applied for a registration of their rights in another member country. 12 To put it another
way the 'right of priority' offers protection to 'the first to invent or create, rather than the first to
file or reproduce.' This provision goes in favour of IPRs-owning nationals of developed countries
since they are given the priority right of IPRs protection for a longer period of time. However,
this provision goes against the interests of developing and least developed countries since the
prioritized right of protection tends to monopolize the owners' IPRs regardless of places and
takes away earlier the users' comparative advantage of reverse engineering.

THE BERNE CONVENTION

To protect, in as effective and uniform a manner as possible, the rights of authors in their literary
13
and artistic works' through copyright as 'intellectual property', comes the Berne Convention.
Like the Paris Convention, the Berne Convention provides for 'national treatment principle'
requiring member countries to give the same rights to works originating from other member
countries as they give to works of their nationals. This is considered to be more efficient than the
Paris Convention since the protection of author's rights in each member country under the Berne
Convention should be unconditional and independent of the existence of such protection in the
country of origin. In addition, the Berne Convention does not offer satisfactory recognition and
protection mechanism for neighboring rights. As a result, it encourages breach of these rights in
computer software, video movies, motion pictures and so on

THE WIPO ARBITRATION AND MEDIATION CENTER

The WIPO Arbitration and Mediation Center 14(WIPO Center) was established in 1994 on a not-
for-profit basis to facilitate the time and cost-effective resolution of IP and related disputes
12
Paris Convention Article 4.
13
Berne Convention Preamble
14
www.Wipo.Int

12
through ADR. It is recognized as an international and neutral forum especially appropriate for
cross-border and cross-cultural disputes and conducts procedures under the WIPO Mediation,
Expedited Arbitration, Arbitration and Expert Determination Rules (WIPO Rules).

The WIPO Rules contain specific provisions that are particularly suitable for IP and related
disputes, such as those concerning confidentiality and technical evidence. However, their scope
is not limited to such disputes and they can be, and have been, successfully applied in other
areas. The WIPO Center makes available, in different languages, model clauses and
agreements that parties may use as a basis for submitting their disputes to WIPO.

As experience has shown, the effectiveness of ADR depends largely on the quality of the
mediator, arbitrator or expert. The WIPO Center maintains a database of over 1,500 qualified
neutrals from 70 countries with further candidates added according to case needs, and it assists in
the appointment of neutrals in each case.15

The WIPO Center works also as a resource center to raise awareness of the valuable role ADR
can play in different sectors. It provides ADR advice to interested private and public entities as
well as training in IP-related ADR through workshops and conferences. The WIPO Center
recently collaborated with the WIPO Academy in introducing an online course on Arbitration
and Mediation under the WIPO Rules. WIPO provides for the following ways for solving the
disputes.

● Mediation

An informal procedure in which a neutral person, the mediator, assists the parties in reaching a
settlement of the dispute.16

● Arbitration

A formal procedure in which the dispute is submitted to the arbitrator who make a binding
decision on the dispute. Mediation followed, in the absence of arbitration. 

● Finality and Enforceability Of Arbitral Awards

15
https://amity.edu/UserFiles/aibs/3e21Article-VIII%20(Page%2050-54).pdf
16
8. V.A. Mohta & Anoop V. Mohta, Arbitration, Concilation and Mediation 532 (2008).

13
 Generally arbitral awards are not normally subject to appeal. They can be enforced immediately
without any undue delay.

TRENDS IN WIPO MEDIATION AND ARBITRATION

The WIPO Center – having administered over 80 mediations and 110 arbitrations, the majority
of which were filed in the last four years – has observed various trends and developments in IP
dispute resolution:

41 percent of the administered procedures were mediation cases, 49 percent standard arbitration,
and 10 percent expedited arbitration.

The WIPO clauses and procedures are often found in a combined model. For example, the most
frequently used WIPO clause is that providing for “mediation, followed in the absence of a
settlement by (expedited) arbitration”. It has the advantage of giving parties the opportunity to
settle their case in a more informal forum before moving to arbitration.

WIPO standard arbitration tends to be used in more complex cases such as patent disputes, which
generally last from 12 to 18 months. WIPO expedited arbitration is primarily used in disputes
where a lower amount is at stake, less voluminous and technical evidence is involved and where
a quick result is needed, which tends to be the case for trademark and software-related disputes.
In general, the expedited arbitration procedure takes up to six months.17

WIPO mediation and arbitration have been used in disputes covering a variety of fields,
including patent infringement and licenses, information technology transactions,
telecommunications, distribution agreements for pharmaceutical products, copyright issues,
research and development agreements, knowledge transfer, trademark co-existence agreements,
art marketing agreements, joint venture agreements, engineering disputes, life sciences, sports,
entertainment, domain name disputes and cases arising out of agreements in settlement of prior
multi-jurisdictional IP litigation. Parties have also used the Center’s services in non-IP-related
disputes, such as general contractual matters, insurance, construction and employment (at an IP
law firm).

17
https://www.wipo.int/wipo_magazine/en/2009/03/article_0008.html

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 ADVANTAGES OF USING ADR IN RESOLVING IP DISPUTES18

The advantages of ADR are increasingly recognized. They include the following:

1. A single procedure-

Court litigation in international IP disputes can involve a multitude of procedures in different

jurisdictions with a risk of inconsistent results. Through ADR, the parties can agree to resolve in
a single procedure a dispute involving a right that is protected in a number of different countries,
thereby avoiding the expense and complexity of multi-jurisdictional litigation.

2. Party autonomy –

 ADR procedures in IP disputes provide tailored processes and results, it says. Litigation is often
a fixed and inflexible procedure. The guide states that ADR provides flexibility so that disputing
parties may have more control over the ADR process.

“Parties can agree to meet at a neutral location, submit to a neutral expert of their choosing, and
abide by rules and procedures that they have modified to meet their needs,” the author notes.

3. Neutrality -

ADR acts as a neutral umpire. Neither of the party can enjoy its home litigation advantages.

4. Single Process; Jurisdictional Neutrality –

ADR procedures centralize the process in one jurisdiction, according to the guide. If parties of
different jurisdictions were to pursue the litigation route, there might be some prejudice in one or
another jurisdiction. In ADR, parties are able to participate in jurisdictional neutrality.
“Jurisdictional neutrality gives ADR processes a clear advantage over litigation for cross-border
intellectual property disputes,” it says.

5. Expertise-

The best part of this untraditional way of resolving disputes is that the parties can choose the
arbitrator who are expert in their field.
18
https://amity.edu/UserFiles/aibs/3e21Article-VIII%20(Page%2050-54).pdf

15
 6. Confidentiality-

The best and most secure way to maintain the confidentiality is to resolve the disputes through
ADRs. Being parties centric it gives immense importance to secrecy and confidentiality.

7. Time Savings  -

Occasionally in patent litigation, IP rights that exist for a limited duration expire before a case is
decided, according to the guide. In ADR, the guide explains that the process is much quicker,
especially when evidence procedures are simplified.19

8. Diverse Solutions -

The guide lays out how ADR provides a wide range of solutions for disputing parties. In
mediation, parties work to negotiate a win-win solution, where in litigation there is one winner
and one loser, it points out. In arbitration, disputing parties can set scope and limits of the
arbitration.

9. Enforceability of Awards

The United Nations Convention for the Recognition and Enforcement of Foreign Arbitral
Awards of 1958, known as the New York Convention, generally provides for the recognition of
arbitral awards on par with domestic court judgments without review on the merits. This greatly
facilitates the enforcement of awards across borders

In addition to providing benefits of ADR in IP disputes, the guide provides specific advantages
of ADR for IP offices. It states that IPOs can use ADR to reduce case backlog and improve
administrative efficiency, and adds: “the promotion of ADR processes will place IPOs in a better
position to cater to small business or individuals who may not have the resources to seek legal
recognition for their creations.”

19
www.scholarship.law.berkeley.edu

16
 EXAMPLES OF CASES HANDLED BY THE WIPO CENTER

A telecom patent license dispute

A European telecom company licensed US, European and Asian telecommunication technology-
related patents to a US company involved in wireless product development. The license
agreement contained a clause stating that any dispute arising from the agreement should be
submitted to WIPO mediation, which in the absence of settlement would be followed by WIPO
arbitration.

Four years after concluding their agreement, the licensor alleged that the licensee had violated its
patents by using the licensed technologies beyond the scope of the license. The European
telecom company initiated WIPO mediation. The Center suggested potential mediators with
specific expertise in patents and telecommunication technology, and with the mediator’s
assistance the parties were able to settle their dispute within five months.

A trademark coexistence dispute

A European company had registered a trademark for luxury goods in multiple countries. An
Asian manufacturer started to sell fashion products under a similar registered trademark and filed
a court case and administrative cancellation proceedings in two European countries, alleging
non-use by the European company of its trademark. After the court case went to appeal, the
parties settled their dispute by concluding a trademark coexistence agreement which included a
WIPO expedited arbitration clause. When the European company used its trademark at a trade
fair, the Asian company initiated WIPO expedited arbitration proceedings, claiming infringement
of the coexistence agreement.

Following consultations between the parties and the Center, a European trademark specialist was
appointed as sole arbitrator. After two rounds of pleadings, the arbitrator held a one-day hearing
in Munich (Germany) and issued an award six months after the proceedings began. Finding
partial infringement of the coexistence agreement, the arbitrator granted the primary remedy
claimed and ordered the European company to refrain from such infringing behavior.

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An IT dispute

A Lebanese and a US-based start-up company entered into a license agreement on the use of
mobile phone applications which contained a dispute resolution clause referring to WIPO
mediation followed, in the absence of a settlement, by WIPO arbitration. The place of mediation
was Paris, and the language to be used English.

A dispute arose between the parties regarding the use of the application under the license.
Following the commencement of the mediation, the Center proposed several candidates and
appointed a mediator in accordance with the parties’ choice. The mediator was a French lawyer
experienced in technology cases, fluent in English and French.

The parties agreed that the mediator should lead the oral proceedings in French, and that written
communications should be in English. Given the parties’ confirmed willingness to cooperate in
the mediation and the distances and costs involved in arranging a physical meeting, the parties
agreed to hold mediation sessions entirely via telephone. Within two months of the mediator’s
appointment, a settlement agreement was concluded and formed the basis of the parties’ further
collaboration.
PATENT LAW AND ALTERNATIVE DISPUTE RESOLUTION
Law related to patent channelizes the field of technology with law. As the patent disputes involve
an understanding of technical knowledge related to the dispute in question, the biggest hurdle,
which the Indian Courts face, is with respect to streamlining the trial of the dispute in a cost
effective and prompt manner. Every dispute in the domain of patent law in India has revolved
around the nitty-gritty of interim injunctions and the appeals related to those injunctions. In fact
many countries have endorsed the inclusion of arbitration as a model for the resolution of patent
disputes. The Patent Act, 1970 particularly under section 103 of the Act makes use of arbitration
as a procedure for resolution of disputes. Closer integration of alternate dispute resolution
mechanisms in patent infringement suits could be the way forward for appropriate dispensation
of justice.20

TRADEMARKS AND ALTERNATIVE DISPUTE RESOLUTION

20
https://singhania.in/alternative-dispute-resolution-ip-law-india/

18
In India, trademark litigation covers an overwhelming landscape in the intellectual property
related litigation. The trademark litigation is an inter parties adjudication. That being the case,
the modes of alternative dispute resolution can certainly provide an appropriate recourse to the
ailing judiciary. Moreover, it is germane to note that in cases of cyber squatting, arbitration plays
an eminent role in the streamlined procedure outlined under the Uniform Domain Name Dispute
Resolution Policy, 1999 and the Indian Domain Name Dispute Resolution Policy for the
adjudication of disputes. This brings to fore the importance of arbitration and the use of other
alternate dispute resolution measures for reconciliation of the interests of the trademark owner
and the impugned party.

USING ADR IN RESOLVING IP DISPUTESINTERNATIONAL SCENARIO

United States21

ADR started as early as in 1960 to solve civil disputes. Here it basically means a system which is
unconventional and different from the traditional litigation. Mediation, arbitration and
negotiation are the part of the rule of law. Former president Abraham Lincoln once said
“Discourage Litigation, persuade your neighbor to compromise whenever you can. Point out to
them how the nominal winner is often a real loser - in fees, expenses, and waste of time”. Father
of Indian nation Mahatma Gandhi once said “I realized that the true function of a lawyer was to
unite parties, A large part of my time during the 20 years of my practice as a lawyer was
occupied in bringing about private compromise of hundreds of cases. I lost nothing thereby - not
even money, certainly not my soul”. The statement reveals the importance of dispute settlement
through compromise and by non-litigation methods.

United Kingdom

“Alternative Dispute Resolution Procedures used to Resolve Construction Disputes in the UK”
provides for the cost saving and faster mode of resolving disputes to the employers, bankers and

21
www.wipo.int.

19
other professionals. Not only it is cheap and fast but also helps in maintaining the confidentiality
between the parties.”

Indian Scenario

ADR in India was existed even before the enactment of the new act ‘the arbitration and
conciliation act 1996’. ADR was there in the old Arbitration act, 1940. The new act of 1996 was
developed to accommodate the provisions of UNCITRAL MODEL. Section 89 of the civil
procedure code, 1908 was also added and amended to include that the disputes can also be
settled outside the court with the mutual consent of the parties.

ADR IN IP DISPUTES IN INDIA

The arbitrability of substantive IP laws claims in India is not well settled. When the Arbitration
and Conciliation Act 1996 was enacted the use of arbitration in resolving IP disputes was not
anticipated. The Arbitration and Conciliation Act 1996 as well as various IP Acts 22 are silent
regarding the enforceability of arbitral awards involving the findings of IP validity or
Infringement.

Section 103 of the Patents Act, which is applicable in cases where the government wishes to use
a patented invention, includes a clause that permits the court to refer any issue (including
questions of patent validity) to arbitration. However, there are no recorded decisions of Indian
courts concerning the objective arbitrability of substantive IP law. The Arbitration and
Conciliation Act 1996 does not provide appropriate structure/or encouraging arbitration as a
viable option in IP disputes. Some of the short comings of the Act are:

Delay:

Owner of IP gets exclusive right to commercially exploit the product for a limited period.
Therefore there is need for a dispute resolution mechanism which resolves the IP disputes
without any delay. Arbitration is considered to be a viable option as it is speedier. In India
arbitration was introduced to reduce the burden of the courts as well as to resolve commercial
disputes faster. But in practicality arbitration failed to serve its purpose, as it takes longer time
than what was expected.
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Patent Act 1970, Trademark Act 1999, Copyright Act 1957.

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Lack of expertise:

IP disputes involve highly complex issues especially patents. Patents disputes are very
complicated because they involve difficult validity, enforceability, infringement, and damages
issues. Most judges do not have technical expertise or experience with patent law. The
submission of complex questions to judges is particularly problematic is highly technical
intellectual infringement cases.

In India, most of the arbitrators are retired judges or belong to the legal fraternity. The
institutions like ICA, ICADR etc have mostly judges or lawyers in there panel. The people from
other specialized fields such as CA, engineers etc are very few who work as arbitrators. They
should be encouraged as they can provide specialized perspective to the disputes. Therefore, the
problem of specialized arbitrators still subsists in India leading to poor quality of arbitral awards.
It can be said that if such conditions subsist arbitration of IP disputes will not be a prudent
option.

Recognition and Enforceability of Award

For arbitration to be used as an option for resolving IP disputes the award of the arbitral tribunal
should be enforceable and recognized. Many nations have enacted modern national arbitration
laws that favor the arbitral resolution of commercial disputes, and that strictly limit the reasons
for which a court may refuse to enforce even a domestically-rendered arbitral award 23 .In India,
the domestic arbitration awards are final and binding on the person between whom it is made.
However, there are grounds on which the enforcement of the arbitral awards may be refused.
Similarly, foreign awards are binding and final on the person between whom it is made.
However, there are grounds on which the enforcement of the arbitral awards may be refused.
One of the grounds is award being contrary to the “public policy.” The Act does not define
“public policy” therefore the courts have full discretion, which has led to excessive judicial
interference with arbitration process and awards. Courts intervention has led to the ambiguity.
Instead of advancing the whole object of ADR the Supreme Court decision are set back. The Act
was enacted with an objective to reduce judicial intervention which is clearly not the case.

Interim Relief:
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For intellectual property, the availability of immediate legal remedies is vital. Therefore, interim
reliefs play a very crucial role in IP disputes, they include all legal remedies that are available to
define and protect the rights of parties on the temporary basis, prior to a final arbitral decision. If
a timely remedy is not available to define and enforce the exclusivity of intellectual property,
much of the value of the property will evaporate.

SETTLEMENT TRENDS

The Price Water house Coopers (PWC) study on “International arbitration: Corporate attitudes
and practices” observed a general trend according to which parties explore settlement at different
stages of the dispute resolution process. Twenty-five percent of the study’s participants indicated
achieving a settlement before the arbitral award, while 7 percent reported settlements that were
implemented in a consent award, suggesting an approximate settlement rate of 32 percent in
international arbitration within the perimeters of the survey.

The WIPO Center observes an even higher settlement trend in relation to IP-related disputes. The
flexibility of WIPO ADR procedures allows parties to combine the different procedures and to
consider amicable settlement throughout the process.

In WIPO mediation, 71 percent of cases settled, 23 percent did not and 6 percent are pending.
Most settlements occur during the mediation phase, consistent with the parties’ intent in using
this mechanism and with the role of mediator. The mediator assists the parties to explore
workable, interest-based solutions that help them to preserve their long-term relationship.

But a number of WIPO cases also end in settlement after the termination of the mediation. By
enabling the parties to identify their interests and to better understand their dispute, mediation
can provide a basis for direct negotiation between the parties after the mediation. For example, in
a recent WIPO mediation, a European university holding several pharmaceutical patent
applications and a European pharmaceutical company used mediation in order to conclude a
license agreement. The mediator, a lawyer with years of experience in the pharmaceutical
industry, helped the parties to identify the issues and deepen their understanding of the legal
circumstances. After the mediation, the parties resumed direct negotiations and reached an
agreement.

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Interestingly, a significant proportion of WIPO arbitration cases also result in settlement: 50
percent of cases settled (including consent awards), 39 percent did not settle and an award was
issued (excluding consent awards) and 11 percent are pending. The WIPO Arbitration Rules
provide that the arbitral tribunal can suggest that the parties explore settlement whenever it
deems appropriate. If the parties so wish, the arbitral tribunal can give them a preliminary view
of the case in order to facilitate settlement discussions. Where the parties conclude a settlement
before an award is made, the arbitral tribunal can, upon the parties’ joint request, record that
settlement in the form of a consent award, which is enforceable under the New York Convention.

CRITICISMS OF ADR

Where whole world is going towards using arbitration as a viable option, there have been few
criticism and apprehension on arbitrability of IP disputes. Some of the criticisms are:

Arbitrability and Public Policy: The concept of arbitrability 24 relates to public policy
limitations upon arbitration as a method of settling disputes. Each state may decide, in
accordance with its own economic and social policy, which matters may be settled by arbitration
and which may not. In international cases, arbitrability involves the balancing of competing
policy considerations. The legislators and courts in each country must balance the importance of
reserving matters of public interest (such as human rights or criminal law issues) to the courts
against the public interest in the encouragement of arbitration in commercial
matters.Furthermore, the question of public policy might come up during the enforcement of an
award passed by the arbitral tribunal in case of disputes involving two or more nations.
Enforcement need not be given to the award by the nation in which the award is to be enforced if
the award is against the public policy of that country. The foreign award can be set aside.

Uncertainty: Where the dispute is already in existence the answers to the following crucial
questions are known to the parties to the dispute: (1) who is claiming and who is defending? (2)
What are the likely stakes? (3) For the likely controlling issues, who would have the better
chance of winning in court? (4) How long is the litigation apt to take and how disruptive will it
be to business? (5) What will be the other costs, notably counsel fees? (6) How do we think the
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 other side is assessing the dispute? Against this backdrop, the parties may decide to submit the
dispute to arbitration. They will do so if each party believes the procedure does not pose
unacceptable risks and is likely to have lower costs. However, the problem arises when deciding
whether to arbitrate all future disputes as the risk involved in going for arbitration cannot be
concretely known in advance.25 Assessing the stakes is difficult to come by in advance.
Estimating the chances of success is also problematic because at the time the agreement is
signed, validity and scope have seldom been the subjects of comprehensive study or evidentiary
development. However, questions relating to likely costs can be partially answered based on the
normal procedural savings inherent in a well-structured arbitration, as compared with litigation.
Guessing the adversary’s assessment of the dispute is wholly out of the realm of meaningful
prediction until the contours of a particular dispute emerge.

REASONS TO AVOID ADR FOR INTELLECTUAL PROPERTY DISPUTES

Frequently, the ADR of IP disputes simply is not available: ADR depends on the consent of the
parties to the dispute (whether before the dispute arises, as in an arbitration clause included in
the contract governing the transaction, or after the dispute arises, as in a written agreement to
submit an existing dispute to arbitration), and many IP disputes – particularly infringement
claims – are between parties with no pre-existing relationship and who are not inclined to agree
to submit their dispute to ADR. In other circumstances, even in the context of an existing
relationship or prospective transaction, there still may be reasons why one party or another
might not want to agree to the resolution of any IP disputes by arbitration or some other form of
ADR.

CONCLUSION

ADR especially arbitration and mediation are clearly superior to litigation for the resolution of
most IP infringement disputes. ADR is less costly, less time consuming, of higher quality, more
private, and more flexible. The benefits of resolving business disputes in arbitration rather than
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in court are widely understood. Arbitration has been a widely used dispute resolution mechanism
in international commerce for a long time. It satisfies the parties demand for an amicable,
inexpensive, expeditious way to settle their dispute, providing them with a neutral forum, a
competent tribunal of their own choice familiar with the subject-matter, and with a procedure
that preserves privacy and confidentiality. The arbitral process is designed to be efficient and
relatively quick from start to finish. The disputing parties can customize the procedures that they
consider appropriate to their circumstances; experts in the field can be designated to serve as
arbitrators; and privacy of the arbitration can be the subject of a confidentiality agreement.

Mediation is the option most likely to help more parties walk away with a faster resolution and
more capital left to invest elsewhere. More importantly, mediation, with its non adjudicative,
constructive methods will help commercial entities create new opportunities to co-exist and grow
their respective businesses, leaving an open universe of possibilities for the future without
disabling one or both parties indefinitely.26

Separate provisions should be made within the IP Act’s recommending the use of ADR for
resolution of the disputes. Moreover, recognition should be given to the interim relief granted by
the arbitral tribunal in IP disputes. The grounds for refusal of foreign award as well as domestic
awards should be interpreted strictly, with the intension of making arbitral awards final and
binding. Furthermore, the judiciary must suggest the parties to opt for the various ADR
mechanisms available for bringing their disputes to an end.

Statutory rights, which are limited in nature, solicit a different approach for their effective
enforcement. The jurisprudence related to the establishment of various quasi-judicial bodies
under different intellectual property laws, points out that these bodies were formed to share the
load and to render an expert testimony towards the determination of validity of intellectual
property. The infringement of intellectual property rights, since it pertains to an inter parties
dispute, can be very well adjudicated by using alternative dispute resolution measures. In the
course of my research on the topic I have come to the conclusion after referring relevant
materials that my hypothesis is partially proved.

BIBILIOGRAPHY:

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https://singhania.in/alternative-dispute-resolution-ip-law-india/

www.wipo.int.

www.intelproplaw.com

www.scholarship.law.berkeley.edu

www.amicus.iupindia.org

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