The Milan court accepted the precautionary appeal brought by the company Mario Valentino against Farfetch Uk, a group that manages the e-commerce platform of the same name for luxury clothing and accessories, and Modes , a company that owns several multi-brand clothing and accessories stores and is affiliated with Farfetch, whose business model is based on relationships with fashion boutiques around the world, which can thus expand their presence and distribution on the digital channel.
The object of the dispute
The Mario Valentino is a historic Neapolitan company founded in 1952 by the designer Mario Valentino, creator in particular of footwear and bags (who died in 1991 in Naples, where he was born in 1927) and is owner of the Valentino brand for footwear, bags and leather goods. These brands are part of a coexistence agreement signed by Mario Valentino and Valentino, the maison founded by Valentino Garavani, in 1979, by virtue of which, in the sectors of footwear, bags and accessories,only Mario Valentino can use and register the name Valentino, while Valentino can use and register the full name Valentino Garavani (in the photos above, the Mario Valentino boutiques in Milan and Naples)
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The relationship with Farfetch
Mario Valentino challenged Farfetch (and Modes) for marketing Valentino shoes and bags under the Valentino brand. The Milan court pointed out that in relation to footwear, bags and leather accessories the Valentino sign is «reserved to the ownership of the applicant Mario Valentino as a result of the recordings it operated in this proceeding, titles that obviously must be considered for the rights that they themselves attribute to the owner of them and also regardless of the agreements between the applicant and Valentino “.
Farfetch’s motives rejected
As for Farfetch’s responsibility for counterfeiting, the Milan court – as it had already done in a precedent of July 2020, concerning the counterfeiting of the trademark of the yellow stitching of the Dr. Martens boots – rejected the defense raised by the English company for which the responsibility should be excluded as Farfetch would carry out a mere activity of passive hosting information provided by partner boutiques. In this regard, the court in fact objected that “the extent of the role and services provided by Farfetch UK are such as to exceed the mere figure of the passive information service provider who does not implement any control over the activities carried out through its website, given that it performs – as it literally states – the role of “agent on behalf of the Partners” (in this case on behalf of Modes) which, together with the organization of sales and additional services provided to customers, allows us to believe that indeed plays an active role in the marketing of the products themselves’.
The sentence of the court of Milan
On the basis of these premises, the Milan court therefore inhibited Farfetch and Modes from “the further use of the Valentino and Red Valentino brands in relation to footwear, bags or other leather goods” not originating from Mario Valentino, setting a penalty for the violation of the injunction and sentencing the two defendants to pay the litigation costs. The order does not appear to have been claimed. Mario Valentino was assisted by the lawyers Pier Luigi Roncaglia, Francesco Rossi and Riccardo Perotti, partner of the studio Spheriens , specialized in the protection of the intangible assets of companies (not just those of fashion).