ADR SCRIPT

GROUP MEMBERS

Arbitrator: Revathi B

Partee 1: Sabini P M (CEO ORCL)

Partee 2: Mary vincy (CEO AGES)

Counsel 1: Niya K B (In-house counsel in ORCL)

Counsel 2: Tina Francis (In-house counsel in AGES)

INTRODUCTION

Alternative Dispute Resolution

The concept of Alternative Dispute Resolution (ADR) mechanism is capable of
providing a substitute to the conventional methods of resolving disputes. ADR
offers to resolve all type of matters including civil, commercial, industrial and
family etc., where people are not being able to start any type of negotiation and
reach the settlement. Generally, ADR uses neutral third party who helps the
parties to communicate, discuss the differences and resolve the dispute. It is a
method which enables individuals and group to maintain co-operation, social
order and provides opportunity to reduce hostility.

Importance of ADR
To deal with the situation of pendency of cases in courts of India, ADR plays a
significant role in India by its diverse techniques. Alternative Dispute
Resolution mechanism provides scientifically developed techniques to Indian
judiciary which helps in reducing the burden on the courts. ADR provides
various modes of settlement including, arbitration, conciliation, mediation,
negotiation and lok Adalat. Here, negotiation means self-counselling between
the parties to resolve their dispute but it doesn’t have any statutory recognition
in India.

ADR is also founded on such fundamental rights, article 14 and 21 which deals
with equality before law and right to life and personal liberty respectively.
ADR’s motive is to provide social-economic and political justice and maintain
integrity in the society enshrined in the preamble. ADR also strive to achieve
equal justice and free legal aid provided under article 39-A relating to
Directive Principle of State Policy (DPSP).

Advantages of Alternative Dispute Resolution

 Less time consuming: people resolve their dispute in short period as

compared to courts
 Cost effective method: it saves lot of money if one undergoes in litigation
process.
 It is free from technicalities of courts; here informal ways are applied in
resolving dispute.
 People are free to express themselves without any fear of court of law.
They can reveal the true facts without disclosing it to any court.
 Efficient way: there are always chances of restoring relationship back as
parties discuss their issues together on the same platform.
 It prevents further conflict and maintains good relationship between the
parties.
 It preserves the best interest of the parties.

ARBITRATION
Arbitration is outlined as a process through which a dispute between two or
more persons is settled or resolved as to their mutual legal rights and liabilities
by referring to and decided judicially with irrevocable effect by the appliance of
law through an arbitral Tribunal rather than by the Court of law or we can say
outside of the traditional court system.

Arbitration Agreement
Arbitration mechanism can be approached only if there is arbitration agreement
between the parties. It expresses an agreement of the parties with mutual
consent (consensus ad idem) that if at any time a dispute arises with regards to
their obligations towards each other, then such a dispute shall be settled by an
arbitral Tribunal.

The Arbitration and Reconciliation Act 1966 provides that an Arbitrator can be

appointed at the choice of parties to an arbitration agreement in regards to their
dispute. 

Arbitration agreement must be in writing. The parties to a dispute can also refer
to the arbitration method for resolution purposes even after the arising of
dispute. Subject to the law of limitation, parties can refer their dispute to
arbitration any time. 

Another feature of arbitration is that the award is enforceable almost

everywhere due to the wide adoption of the 1958 New York Convention on the
Recognition and Enforcement of Foreign Arbitral Awards. Moreover, arbitral
awards prove frequently easier to enforce than court decisions from overseas.
Arbitration clause
An arbitration clause is considered as the source of the authority or jurisdiction
of the arbitrator. This clause is mainly a part of the contract which governs the
parties of the dispute. It is distinguishable from other clauses in the contract.
Although contracts are needed to be signed but there is not a compulsion for
arbitration clauses to be signed.

An Arbitration clause is considered to be binding upon the parties if they have

given their consent either express or implied to refer their disputes to
arbitration.

WIPO ARBITRATION CLAUSE

ONLINE DISPUTES RESOLUTION (ODR).

Online dispute resolution (ODR) is a branch of dispute resolution which uses

technology to facilitate the resolution of disputes between parties. It primarily
involves negotiation, mediation or arbitration, or a combination of all three. In
this respect it is often seen as being the online equivalent of alternative dispute
resolution (ADR). However, ODR can also augment these traditional means of
resolving disputes by applying innovative techniques and online technologies to
the process.
ODR is a wide field, which may be applied to a range of disputes; from
interpersonal disputes including consumer to consumer disputes (C2C) or
marital separation; to court disputes and interstate conflicts.  It is believed that
efficient mechanisms to resolve online disputes will impact in the development
of e-commerce. While the application of ODR is not limited to disputes arising
out of business to consumer (B2C) online transactions, it seems to be
particularly apt for these disputes, since it is logical to use the same medium
(the internet) for the resolution of e-commerce disputes when parties are
frequently located far from one another.

Problem: CASE 13-TEAM 13

A trademark for communication software had been registered by a US based

software developing company in the USA. Another manufacturing company,
Asiatic Group of Enterprises (AGES), doing business of computer hardware and
accessories based in Mumbai registered an almost identical mark of computer
hardware products in various Asian Countries. Both the companies initiated
legal proceedings concerning the registration and use of their trademarks in
various forums. With the claim of priority rights, each party had effectively
prevented the other from registering and using their trademarks where they hold
such rights. In order to facilitate the use and registration of their respective
trademarks, the parties entered into a coexistence agreement which contains a
WIPO arbitration clause. When the US company tried to register their
trademark in an Asian country, the registrar of trademarks refused to entertain
the application because of the existence of the identical trademark held by the
opposite party. The US based company requested the AGES company to permit
them to register their trademark in any Asian country. But the request was
rejected by the other party and subject matter was brought to the consideration
of the Institutional Arbitration process.

Script
WIPO ARBITRATION AND MEDIATION TRIBUNAL (INSTITUTION)

ARBITRATOR: Good morning everyone today we are virtually present here

for the complaint by ORCLS On trade mark issue.

Before we proceed allow us to briefly introduce ourselves, I am REVATHI B

IP Attorney duly accredited by WIPO ARBITRATION AND MEDIATION
TRIBUNAL as one of its Arbitrator, I am also an active member of UN. As
agreed by Arbitrator tribunal I will act as the Chairman of this arbitral
proceedings. I ask the claimants and counsels for there introduction.

Claimant: Good morning, I am Sabini p Mathew, CEO of ORCL private

limited Us based communication software company.

Respondent: Good morning, I am Mary Vincy, chairperson of AGES private

limited a Mumbai based hardware manufacturing company.

Claimant counsel: My self Niya K B, in-house counsel of ORCL

communications private limited.

Respondent counsel: I'm advocate Tina Francis, In house counsel of the

respondent company Asiatic group of enterprises (AGES) doing business of
computer hardware and accessories based in Mumbai.

ARBITRATOR : Thank you everyone, before we proceed , I would like to

stress the impartiality and independence of this arbitrational tribunal. We have
all ready stated in our disclosure reports, which I believe the parties have
already furnished with our background, my personal qualifications, financial
and other personal interests which I believe will not in any way affected our
impartiality and That we don’t have any financial, fiduciary or other interests in
the controversy or case to be decided or in the result of the proceeding or has
any personal bias which might prejudice the right of any party to a fair and
impartial award.

So may I ask if any of the party and counsel to this matter know of any potential
conflicts between the Arbitrator and any party or counsel in this matter.

Counsel 1 : no

Counsel 2: no

Arbitrator: For the information of the parties, the following are the general
rules governing the procedure of the WIPO ARBITRATION TRIBUNAL in
adjudicating cases.

CONFIDENTIALITY OF PROCEEDINGS. In accordance with Art 7 of the

WIPO ARBITRATION RULES ,the Arbitration proceedings are
CONFIDENTIAL and shall not be published except :

a. When the parties consent thereto :or

b. When necessary in case resort to court is made under the Rules of court.

If the violator is lawyer, an administrative action or proceeding may be had at

the instance of the WIPOArb tribunal , without prejudice to suspension or
disbarment action.
If the Violator is a duly licensed and registered professional, an administrative
or disciplinary action may also be instituted before the professional Regulation
Board (PRC)at the instance of the WIPO ARBITRATION TRIBUNAL

2.Arbitrators shall not be civility liable for acts done in the performance of their
official duties except in a clear of bad faith, malice or gross negligence. (Art8)

3.An Arbitrator may be challenged by a party at any time after his appointment
but before the lapse of the original 10-day period for submission of memoranda
or draft decision. However, the challenge must be based upon the following
grounds only :

a. Relationship by blood or marriage within the sixth degree of either party to

the controversy, or to counsels within the fourth degree. Computed according to
the rules of civil law:

b. Financial, fiduciary or other interest in the controversy.

c. Partiality of bias:

d. Incomplete, or professional misconduct.

In addition to what my colleague has just mentioned, this Arbitral Tribunal will
prepare a Terms of Reference at the end of this preliminary conference, if it is
necessary, which shall contain the following :

a. A summary of the parties respective claims :

b. Full statement of admitted facts and documents :

c. The issues to be resolved in question form :

d. The place where the arbitration proceedings shall be held :

e. Such other particulars necessary for the proper and speedy adjudication of the
case.

Arbitrator : let’s hear the facts

Claimant : In the year 2015 a brand new communication software WeChat

have been launched by our company in the US and the trademark for ORCL
was also registered in the United States patent & trademark Organization. By
the same year AGES also registered an almost identical trademark of computer
hardware products in some Asian countries. Both the companies came into a
conflict concerning the registration and use of their trademark in various
forums. After a prolonged period of legal proceedings and claims on priority
rights in order to facilitate the use and registration of their respective
trademarks, both the companies entered into a coexistence agreement in 2017
upon WIPO arbitration.

Claimant's counsel: As per the terms of the Coexistence agreement it was

jointly agreed by the parties that they won't be interfering in each other's
enterprises. Both companies agreed for a bona-fide concurrent use of both their
trademarks worldwide.

By the year 2020 when our company tried to register our trademark in India,
the application was refused by the registrar of trademarks because of the
existence of the identical trademark of AGES. Later our company approached
AGES with a request to permit us to register our trademark in any Asian
countries. But this request was rejected by AGES. Thereby AGES have
committed infringement of the Coexistence agreement entered by them.

Arbitrator: claimant counsel what are your claims ?

Claimant counsel: ORCL is developing in to a multinational company and we

are providing the best service to our consumers worldwide. Asian countries
being one of the largest populations and consumers of technology it is a great
market for our company. It was agreed upon the coexistence agreement that
both the companies can do business simultaneously.

we institute a claim requiring AGES to remove their opposition preventing us

from registering in the Asian countries.

Arbitrator: let’s hear the facts and claims of Respondents company AGES.

Respondents : AGES is one of the largest manufacturer of computer hardware

products in Asia. Its products are very popular and very well accepted by the
people wherever the company doing business. The company could achieve
tremendous growth in recent years and is maintaining a very good reputation in
the market. AGES is also having the ambition of expanding the business to
the markets of Europe and American continents.

Respondent counsel: Oracle Ltd US based software development company had

been registered a trademark for communication software in USPTO. We AEGS
company Asiatic group of enterprises (AGES), doing business of computer
hardware and accessories based in Mumbai registered almost identical mark of
computer hardware products in various Asian countries including India and
China. In various forums, concerning the registration and use of their
trademarks We initiated legal proceedings against Oracle With the claim of
priority rights each party prevented the other from registering and using our
trademark. In order to facilitate the use and registration of their respective
trademarks, the parties entered into a coexistence agreement which contains a
WIPO arbitration clause. When the US company tried to register their
trademark in an Asian country, the registrar of trademark refused the application
because of the existence of identical trademark held by the opposition.

Arbitrator: counsel for AGES let’s hear your counter claim.

Counter claim: We disagree with the claims and demands of the ORCL to
register their trademark in the countries were AGES is already registered cannot
be agreed. Since both the trademark have been in use for different countries and
it has never crossed each other, the introduction of trademark of ORCL to the
countries were ages is already registered will make total confusion among
public. The people will think ORCL is a sister concern of AGES due to the
similarity of trademark and any even a small occurrence will create a negative
impact which will turn the reputation of AGES.

Arbitrator: How identical are the trademark of both AGES and oracles, can
you explain your logos verbally
Claimant: Our trademark logo is a Ocean blue C with a v cut inside.

Respondent: Our trademark logo is very similar to that of ORACLE. Dark blue
capital C encircled with a blue circle.

Arbitrator: ok before we proceed, are parties possible for an amicable

settlement?

Claimant: No

Respondent: No

(ARGUMENTS)

Arbitrator: ok , then let’s move to the arguments to substantiate your claims.

Claimant counsel: as per the WIPO arbitrational coexistence agreement the

respondent AGES Pvt. Ltd has already agreed to the terms of coexistence usage
of above mentioned trademark which is applicable world wide. Thus as per the
binding agreement we have all the rights to register in any of the Asian
countries. So here the hindrance of AGES beyond the terms of this agreement
hence it is a breach of the Coexistence agreement.

Respondent counsel : we disagree with the arguments of the claimant. The

trademark registration of ORACLE can't be approved due to the below reasons
1. For the past 25 years AGES have created a goodwill and reputation and
maintained it till date. A large amount of money and effort had been spent in
order to popularize these hardware accessory products trademark.

2. As per section 29 of the Indian Trade mark Act 1999, the registration of a
similar trademark would amount to the infringement of right of AGES.

3. Identical usage of trademarks would amount to create chaos and confusion to

the consumers of AGES. Consumers will mistake ORACLE as a sister concern
of AGES due to the similarity of trademarks. And even a small occurrence will
create a negative impact which will turn the reputation of AGES.

Arbitrator : Does Oracle Ltd as any counter arguments?

Claimant counsel: As AGES and ORACLE produce different products which

is AGES produce computer hardware accessories and we ORACLE produce
communication software products. Hence there will be no confusion among the
consumers on the usage of identical trademarks. And we argue that AGES is
bound to the terms of the Coexistence agreement.

(ADMISSION OF FACTS)

Arbitrator: ok, after hearing the facts concerning your claims and in the light
of speedy adjudication of cases, we shall now proceed with the admission of
facts.
Arbitrator: claimant and council for ORACLE whether your contentions are
true to your knowledge?

Claimant : yes your honour it is true to our knowledge

Claimant counsel: yes your honour all the arguments and facts are true to my
knowledge.

Arbitrator: what are the evidences and documents substantiating your claim?

Claimant counsel: we have produced the WIPO arbitration coexistence

agreement and our trademark registration owning document by USPTO and
MOA of our company explaining the products our company produce.

Arbitrator : If AGES is claiming similar claim of expansion of their trademark

and business in US, will you accept that?

Claimant counsel: yes will be binding to do so according to the terms of the

agreement and we will not cause any hindrance to their trademark registration
under USPTO.

Arbitrator: AGES Ltd do you admitted that the co existence trademark

contract submitted by ORACLE Ltd is very same contract you have signed and
agreed to?
Respondent counsel: yes your honour it is the same agreement we signed to.

Arbitrator: was the agreement signed in 2017?

Respondent: yes we have entered into the agreement in the year 2017.

Arbitrator: what are the documents and evidence supporting your claims?

Respondent: We produced our trademark registration certificate issued by

trademark registry India, and annual turn over report of AGES and product sales
report of AGES all over Asia.

Arbitrator: thank you for your stipulations and admissions now I will
summarize what have been stipulated and admitted, the parties agreed to

1. They have entered into a trademark coexistence agreement binding

through out the world for the facilitate and use of their trademarks.

2. The agreement was agreed and signed by both of the parties in 2017.

3. Both the parties have their valid trademark registration in their respective
geographical areas.
 ISSUES TO BE RESOLVED

1. Are the parties binding to the Coexistence agreement?

2. Whether the registration of trademark in India by ORACLE Ltd

would amount to trademark infringement of AGES ?

3. Whether the registration of trademark of ORCL in India would

amount to create confusion among the consumers of AGES?

PRONOUNCEMENT OF JUDGMENT/AWARD

Based on the facts admitted, contact agreement signed, and other documentary
evidences, submitted by both the parties the arbitral tribunal resolved the issues,
Trade mark coexistence describes a situation in which two different enterprises
use a similar or identical trade mark to market a product or service without
interfering with each other's businesses. Thus as per the coexistence agreement
of trademark the parties have already agreed to the use of their trademarks with
out disturbing others business. Therefore they are binding to the agreement. As
per section 29 of registration of similar trademark is infringement of the right of
prior user, but with a license of consent from the prior user would not be an
infringement. As looking in to the contentions of AGES on the issue of creating
confusion in mind of consumers can be clarified by the different of products
which is AGES is producing hardware products and ORCL are producing
software products there is very less possibilities of confusion among consumers,
thus considering this the WIPO ARBITRATION TRIBUNAL, order AGES to
provide license for use of the said trademark in India by ORCL for the next five
years and a report should be submitted by ORCL to AGES and if after five
years there exist a confusion among the consumers then the license can be
cancelled by AGES.