INTA 2017: Acting Out the Benefits of Mediation

22-05-2017

Lawyers recreated an Italian family business conflict on stage at INTA to highlight the advantages that a mediation process can offer to solve a trademark dispute.

The cast included Jami Gekas (Foley & Lardner LLP, USA) and Jill Easton (Darden Restaurants, USA) representing the interests of U.S. restaurant chain Pietro’s Restaurant Inc., which wants to expand to Europe.

On the opposing side, Gonzalo Barboza (Arochi & Lindner, Spain) and Anne Gundelfinger (Swarovski AG, Liechtenstein) played the representatives of Italian ice cream chain Pietro Gelateria SpA, operating in Italy and Spain but planning to expand to the United States. To complicate matters, the ice cream shop founder, Alessandro Pietro, is the grandson of Sergio, the founder of the Pietro’s Restaurant. Both enterprises have new investors, which are fuelling the dispute.

“We don’t see any way that Pietro Gelateria can open in the United States under the Pietro’s name,” Gekas said. “There is no one in the United States who hasn’t eaten at a Pietro’s Restaurant. How can another shop open under the same name with the same color scheme?

“Tell them that we are ready to spend money on litigation,” Ms. Gekas said to the mediator, played by David Grace (Loeb & Loeb LLP, USA).

Pietro Gelateria for its part sees no way to coexist with Pietro’s Restaurant in Europe. “Our client has the oldest mark in the European Union dating back to 2011 and that gives our client prior rights in the jurisdiction,” Mr. Barboza said.

In an impasse such as this, mediation can save money, David Friedland (Friedland Vining, P.A., USA) explained to the audience. The involved parties don’t have to spend money on litigation or on discovery, he noted. And “mediation allows you to control the outcome,” he added. “You may not get the best result you want but you get a result that you control.”

The mediation process can bring solutions to the table which may otherwise not have been evaluated. As part of the back-and-forth between the mediator and each of the parties, the parties can share confidential information with the mediator, which can then be taken into account in the process without being disclosed to the opposite party.

For example, Ms. Gekas told the mediator that an investor in Pietro’s Restaurant gave the money on condition of a European expansion. Ms. Gundelfinger, on the other hand, confided to the mediator that her client did not want to sue his grandfather.

Given that Pietro’s Restaurant is well funded and that Alessandro Pietro’s partners are taking the ice cream shop chain in a direction he was no longer comfortable with, the moderator suggested that Pietro Gelateria could be sold to Pietro’s Restaurant: a solution which the parties agreed to pursue. 

INTA17, Mediation, Trademarks, Brands

WIPR