Mary Vitoria, QC

Mary Vitoria, Q.C. , 8 New Square, Lincoln’s Inn, WC2A 3QP

TEL: + 44 (0)20 7405 4321; FAX: + 44 (0)20 7405 9955
www.8newsquare.co.uk

Mediation experience

Mary Vitoria was accredited by CEDR in 2002 and is a CEDR Registered Mediator and CEDR Panel Member. She is an ACI Panel Member and an ADR-Chambers Panel Member and is a founder member of the IP and Media Group. She is happy to accept direct appointments to act as mediator. Her main experience and expertise in relation to mediations is in the area of intellectual property. Since May 2003 she has had experience of about 20 mediations and has acted as a privately appointed lead mediator in 13 IP mediations:

• (1) Trade mark infringement dispute involving two large companies with different spheres of business but with a potential overlap in one specific area. The dispute was settled at the mediation by the parties agreeing a demarcation agreement. (June 2003).

• (2) Major biotechnology patent licensing dispute. The mediation took place at an early stage before litigation, but no settlement was reached.(November 2003).

• (3) Design right and copyright infringement dispute involving medical equipment. (January 2004).

• (4) £250k trade mark infringement and passing off dispute concerning the importation of alleged counterfeit clothing. This settled some 6 weeks after the mediation with the continued involvement of the mediator in the settlement process. (January 2004)

• (5) £150k trade mark infringement and trade mark revocation dispute relating to business consultancies. The mediation took place only a few days before the trial and no settlement was reached. (January 2004)

• (6) £750k trade mark infringement dispute concerning the allowability of certain deductions in an account of profits. (February 2004)

• (7) £600k design right infringement dispute concerning the amount payable under an inquiry as to damages and the appropriate principles for the assessment of damages. (June 2004)

• (8) Trade mark and passing off dispute between two large companies concerning the adoption of a new trading style by the defendant. The matter did not settle fully at the mediation but the parties agreed a formula for the future resolution of their dispute, which was settled a short time later. (July 2004)

• (9) Passing off dispute between two companies each carrying on the business of management consultancy to the financial and banking sector. The parties mediated prior to the commencement of litigation. The potential claimant had offered to change its name provided it was indemnified by the potential defendant. The parties were initially far apart on the amount to be paid but this issue was successfully resolved at the mediation. (August 2004)

• (10) Professional negligence dispute involving the loss of a patent with the claim well in excess of £1 million. Liability had been admitted and the parties mediated prior to the commencement of an inquiry as to damages. The matter did not settle at the mediation but the parties made substantial progress at the mediation and the matter settled within a couple of weeks. (October 2004).

• (11) Acted as an assistant mediator in a mediation organised under the Central London County Court (CLCC) mediation scheme. The dispute was between a customer and a provider of services involving allegations of overcharging and non-provision of contracted-for services. At the end of the 3-hour mediation period, the parties agreed to an exchange of further information, a continued stay of proceedings and an indication of a further attempt at mediation. (February 2005)

• (12) Copyright dispute involving a small manufacturing company and a large chain store with a claim value of about £250k. The mediation took place before the issue of proceedings. Liability was not admitted but the mediation was conducted on the basis that the potential claimant would obtain an account of profits. The mediation concluded with an agreement concerning the amount of a monetary payment to the claimant and the matter was finally settled within a few weeks of the mediation. (March 2005)

• (13) Commercial dispute concerning moneys due between the parties under a terminated franchise agreement. The mediation was organised by CEDR under the CLCC scheme. No settlement was reached on the day of the mediation but substantial progress was made in narrowing the issues. (March 2005)

• (14) Patent revocation dispute involving permissibility of amendments to the patent. The parties agreed to mediate shortly before an appeal was due to be heard by the Court of Appeal. The mediation concluded with heads of agreement agreed between the parties and a final settlement was reached a few days later. (November 2005)

• (15) Copyright dispute concerning ownership of copyright in celebrity photographs and in the negatives. The parties had been in dispute for a very long time and decided to try mediation before resorting to litigation. The mediation concluded with binding heads of agreement. (January 2006)

Mary seeks to build a rapport with the parties to the dispute from the outset and she quickly establishes the confidence of both the parties and their lawyers. Her style is user-friendly but with robust reality-testing and, if wished, Mary is willing to provide an indication of how she would assess the outcome of the case based on the materials before her. She seeks to help the parties to assess realistically all the available options.

Feedback

• “I found your willingness to set aside the legal aspects of the case and drive the parties towards a commercial solution to be conducive to constructive discussions. Although the case did not actually settle after a day of mediation, you made sterling efforts to bring the parties together thereafter. … I much appreciate the telephone “shuttle diplomacy” which helped close the gap in the negotiations over the precise terms of the settlement agreement.” Solicitor to a party.

• “Although this particular mediation did not result in a settlement of the case, Mary performed extremely well and the client was very pleased. I think Mary’s particular strength is her very strong grasp of the legal principles involved in a case and the strengths and weaknesses of each party’s position. This is helpful in forcing clients to be realistic in their expectations. At our mediation, we were also impressed by her absolute impartiality and her appreciation of her role as a “deal maker”. She also prepared very thoroughly.” Solicitor to a party.

• “I can confirm that all on our side were delighted with Mary’s appointment as the mediator, and we would have no hesitation in using her again or recommending her as a mediator to others. She successfully mediated the settlement of a dispute that had been dragging on for many months and in which the parties appeared to be a very long way apart indeed before the mediation meeting… I felt it particularly helpful in a specialist IP case such as this to have a mediator appointed who understood the technical IP issues that underpinned the case. ... I think the lesson we learned from this case, is that it is better to find a highly regarded IP specialist who is a mediator rather than a mediator who claims to have some knowledge of IP.” Solicitor to a party.

• "Mary was a superb mediator; her approach was very skilled." Solicitor to a party.
 

• Carried out an expert determination on behalf of CEDR in a copyright and moral rights dispute. (September 2004)

• Member of the WIPO Arbitration and Mediation Center’s List of Neutrals; Member of the WIPO Arbitration and Mediation Center’s Domain Name Panel

• Appointed Sole Panellist in a domain name dispute cases under the ICANN Uniform Domain Name Dispute Resolution Policy. Decision DLA2004-001, April 2004; Decision D2004-0363, July 2004; Decision D-2004-0916, January 2005; Decision D2005-0048, March 2005

• Member of the LCIA

• Acted as a member of an arbitration tribunal (LCIA) in an international multi-million dollar trade mark licensing dispute (2001-2003); currently acting as sole arbitrator in an international patent and know-how licensing dispute (LCIA).

• Instructed as an expert by the European Patent Office to advise the State Department of Intellectual Property under the Ministry of Education and Science of Ukraine in relation to the assessment of damages in intellectual property disputes. (Visit to Kiev and subsequent report: October 2004)
 

• Chambers of Mark Platts-Mills QC, 8 New Square, Lincoln’s Inn, London WC2A 3QP. A full CV is maintained on Chambers website – www.8newsquare.co.uk.

• Called to the Bar September 1975; Appointed Queens Counsel April 1997; Elected a Bencher of Lincoln’s Inn, June 2004

• Education: University of London - BSc. (Hons) Chemistry - First, Ph.D. Chemistry. University of London (External) - LL.B. Upper Second. Barrister, Lincoln’s Inn, Certificate of Honour

• Wide ranging intellectual property practice in Patents: chemicals, pharmaceuticals and mechanical devices; Copyright, Designs and Performers' Rights: engineering drawings, architects plans, databases, literary works, maps, famous cartoon and animal characters, dress design copyright, broadcasting, music copyright, rights in performances; Trade Marks and Passing Off; Confidential information: business information; chemical formulae; Data Protection advice given to retail stores, utilities, credit reference agencies, local authorities; Contracts – contracts relating to I.P. matters
 

• In April 2004, a paper on “The English Law of Passing Off” was presented at a seminar on “Ergänzender wettbewerbrectlicher Leistungsschutz” organized by the German Patentanwaltskammer at the European Patent Office, Munich. The seminar was attended by about 300 members of the Patentanwaltskammer.

• In April 2003, a paper on Alternative Dispute Resolution was presented at a two day seminar in Minsk, Belarus organised by the European Patent Office for the State Department of Intellectual Property of Belarus. The seminar was attended by members of the judiciary and of the intellectual property departments of Belarus, Georgia, Azerbaijan and Kyrgistan as well as by independent lawyers and attorneys.

• A similar presentation was given in 2002 in Kiev to the State Intellectual Property Department of the Ukraine.

'Patents and Registered Designs' in Halsbury's Laws of England 4th edition re-issue, Butterworths 1994

Encyclopaedia of United Kingdom and European Patent Law, Sweet & Maxwell, Editor 1978-1990, Chief Editor; 1990-1999

'Copyright', Atkins Court Forms, Butterworths, 1986, 1990 (with Daniel Alexander), 1996, 2001 (with Lindsay Lane), 2005

'The Modern Law of Copyright', Butterworths, 1980 (with Sir Hugh Laddie and Peter Prescott QC); 2nd edition, 1995 (with Sir Hugh Laddie and Peter Prescott QC); 3rd Edition, 2000 (with Sir Hugh Laddie, Peter Prescott QC, Adrian Speck and Lindsay Lane)

European Intellectual Property Review, Sweet and Maxwell, Co-editor, 1978-present

Fleet Street Reports, Sweet and Maxwell, Editor since January 1995

Reports of Patent, Design and Trade Mark Cases, Patent Office, Editor since April 1995

'Copyright and Design Right' in Halsbury Laws of England 4th edition, re-issue, Butterworths, 1997

Professional Negligence Law and Practice, LLP Ltd, 2000 – Chapter on Patent Agents and Trade Marks Agents (with Charlotte May)
 

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Revised: 05 May 2008

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