Home Handbags Mario Valentino sues Fashionphile in fight against “Valentino” trademarks

Mario Valentino sues Fashionphile in fight against “Valentino” trademarks

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Mario Valentino is taking action against Fashionphile, accusing the resale company of trademark infringement, false advertising and unfair competition in a new lawsuit. According to the lawsuit it filed in the U.S. District Court for the Southern District of New York on Friday, Mario Valentino – a midsize accessories brand that is not affiliated with the luxury brand of the same name Valentino, SpA – claims to have discovered this spring that Fashionphile offered products using Mario Valentino’s trademark “VALENTINO” in a manner that “is not authorized to promote products that have not been manufactured, purchased, or authorized by Mario Valentino (or its exclusive licensee ) in the USA”.

For some information on his trademark rights, Mario Valentino claims that he is “the first and principal owner of the VALENTINO family registrations of trademarks on leather handbags and similar products in the United States”, including his recording almost 50 years old (nope. 0951621) for “VALENTINO” to be used on “handbags and luggage”. With this registration in mind, Mario Valentino claims to have informed Fashionphile of its allegedly unauthorized use of the VALENTINO trademark in connection with the advertising/sale of Valentino, Bags and Shoes SpA – and demanded that the Carlsbad-based retailer, in California, immediately cease this alleged infringement – by means of a cease and desist letter at the end of May 2022.

“Despite follow-up cease and desist letters, and although Fashionphile continues to state that it would comply with Mario Valentino’s demands, it has not done so,” Mario Valentino claims, arguing that at the time of the filing, “nearly four hundred women’s handbags and clutches are advertised on Fashionphile’s website as ‘VALENTINO’ at prices ranging from $200 to $2,800.” In this context, Mario Valentino states allegations of trademark infringement, false association, false advertising, unfair competition, and unlawful deceptive acts and practices in violation of New York’s General Business Law against Fashionphile, and seeks an injunction, as well as damages.

Search results for “Valentino” on Fashionphile

Although at first glance it may appear to be a simple trademark case brought by a brand against a reseller who allegedly engages in infringement (à la Chanel against the real real), a closer look reveals there’s a lot more going on. In fact, more than just a legal spat with Fashionphile, Mario Valentino’s lawsuit is best characterized as an escalation of his existing – and higher – stakes. fight against Valentino, SpA (“Valentino”). After all, the bags that Mario Valentino points to in his complaint as being infringingly or otherwise inappropriately advertised are not Mario Valentino bags, but those of Valentino.

TFL readers will know that Valentino filed a complaint against Mario Valentino in California federal court in July 2019, alleging that the unaffiliated brand and its US licensee are charged with false advertising, unfair competition and design patent infringement for “actively engaging in a campaign to exchange the Valentino’s goodwill in the US handbag market.” This still-ongoing legal battle – which also includes a separate but related fight in the Italian courts – centers on a coexistence agreement that the two Valentinos have reached over 40 years ago in an effort to avoid consumer confusion and corresponding legal complications arising from their nearly identical nicknames and relatively similar offerings.

According the 1979 coexistence agreementMario Valentino – who got his start in 1952 as a shoe and leather goods company – is “allowed to use the ‘V’ Where ‘Valentino’ branding on the outside of her handbags [and marketing]but is not allowed to use the ‘V’ and “Valentino” brand together,” but it “must also use the “Mario Valentino” brand inside and on the packaging of all handbags to avoid consumer confusion.” In other words, Mario Valentino may use the name “VALENTINO” on leather goods, such as handbags, assuming it includes the full name “Mario Valentino” inside.

Meanwhile, the deal limits how Valentino – which was founded by Valentino Garavani in 1960 and was much more known for couture than handbags when the deal was signed – can use the name “VALENTINO “. In particular, it states that for leather handbags and other similar products, Valentino “may only use its [V] and/or “VALENTINO GARAVANI”. Simply put, Valentino “should use the term ‘GARAVANI’ in addition to ‘VALENTINO’ to minimize consumer confusion between the parties. »

A Valentino ad and a Mario Valentino ad
A Valentino ad (left) & a Mario Valentino ad (right)

In response to Valentino’s claims, Mario Valentino state one’s own demands in 2020, accusing Valentino of violating the coexistence agreement through his advertising. Since 2017, Valentino has “highlighted ‘VALENTINO’ in its handbag advertising, removing and/or significantly reducing the appearance of the required term ‘GARAVANI,'” Mario Valentino said, claiming his rival violated the coexistence agreement and had committed trademark infringement.

And in an argument that hinted at the potential for claims against retailers (or resellers) of Valentino products, Mario Valentino also argued that Valentino should be held contributorily liable for the alleged infringement of at least one of its authorized dealers. According to Mario Valentino, authorized retailer Valentino FORWARD by Elyse Walker also infringed its trademarks by “advertising Valentino products as ‘VALENTINO BAGS’ but making no reference to the term ‘GARAVANI’ in its advertising”.

When the situation was last updated in July, not only was the US case still ongoing, but the parties’ fight in Italy had also not been resolved.

THE BIG PICTURE

Since Valentino and Mario Valentino seemed to coexist peacefully in the market for four decades, the deal seemed to work effectively. However, Mario Valentino’s new lawsuit against Fashionphile and his existing battle against Valentino indicate that this is no longer the case.

As for what’s driving the legal wrangle from a big picture perspective, Valentino argues in his lawsuit that the clash stemmed from Mario Valentino’s quest to “intentionally…compromise.” [its] goodwill in the handbag market” and “lead consumers to believe that Mario Valentino handbags are the same Valentino bags available at luxury retailers”. Such efforts to piggyback on the Valentino brand stem from Mario Valentino’s alleged copying of Valentino SpA’s bag designs, and its advertising, the latter being “intentionally designed to confuse consumers into believing that the handbags Mario Valentino are actually Valentino handbags sold. at a discount, and/or a diffusion line of Valentino handbags that sell at lower prices,” per Valentino.

At the same time, it’s hard not to contemplate the transformation of Mayhoola-owned Valentino – now an accessories powerhouse thanks to offerings like its Rockstud Shoes, and Roman Stud and VLogo bags – since the coexistence agreement was signed in 1970. In 2021, Valentino’s annual sales reached 1.23 billion euros, with accessories accounting for 66% of sales, compared to 32% for ready-to-wear. . As such, the breakdown of the parties’ arrangement is likely due in large part to Valentino’s strong expansion into leather goods and the like, which generates substantial revenues and margins for luxury brands, especially compared to to luxury clothing, and the limits that the coexistence agreement imposes on it from an ancillary point of view – and from a possible M&A.

Due to the size of – and Valentino’s ambitions for – its accessories business, and in light of Mario Valentino’s “senior trademark registrations for the VALENTINO brands, [which] present an obstacle to [Valentino’s] growth in the leather handbag market,” Mario Valentino argues that her alleged misuse of the “Valentino” trademark without “Garavani” is part of a larger plan “to grow her leather handbag business and reap millions of dollars in profits, so she can sell her company at a higher price to investors.”

Valentino has no shortage of trademark rights and registrations for its name and logos – from Valentino for use on eyewear, and Valentino Garavani on handbags, shoes and apparel to the V logo for use on almost all categories of products – that another party would have appropriated if it took over the Valentino brand. Nevertheless, it is difficult not to recognize that an acquirer may dispute the fact that missing a central element of the brand’s portfolio: the ability to offer leather goods and shoes alone under the VALENTINO name and the risk of litigation, as in this case, arising therefrom. (With that in mind, his case against Fashionphile could very well be a Mario Valentino strategy game in an attempt to gain leverage in the Valentino business.)

Taken together, these issues have set the stage for a long, bi-national legal battle that only seems to be gaining momentum if the lawsuit recently filed by Mario Valentino is any indication.

A Fashionphile representative was not immediately available for comment.

The case is Mario Valentino SpA v Fashionphile Group LLC1:22-cv-08984 (SDNY).