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

31 January 2021

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.

About the author

Denise Mirandah

As a Director, Denise Mirandah has played a major role in the international promotion of the company, helping to share the family values of Mirandah Asia and its successful one-stop shop approach to IP with clients all over the world.

Denise has had a passion for IP from an early age and, as the daughter of Patrick and Gladys Mirandah, grew up in a household where IP was discussed regularly. She studied her Bachelor of Laws at the prestigious Cambridge University in the UK. There, she underwent rigorous academic training with the world’s most eminent legal minds, including Professor Bill Cornish, a renowned authority on IP law.

During her summer holidays, she attended Harvard University in the US to hone her drafting skills and familiarise herself with the American legal system, voluntarily working as part of Harvard’s pro bono programme in Boston.

Denise has been admitted to the Bar in Singapore since 2009, and in Brunei as of 2017.

S. Siddharth Sriram

S. Siddharth Sriram is an associate at Mirandah Law, where he assists in civil litigation matters across various disciplines, including intellectual property and commercial disputes. Sriram also works on non-contentious and corporate matters, such as reviewing and drafting contracts.