Valentino Sues Valentino – TM Co-existence, Lawsuits & More

One name but millions of goodwill taken. Two very famous Italian luxury clothing brands, one claimed to be created in the year 1967 by Valentino Garavani and another claimed to be created in the year 1952 by Mario Valentino.

Valentino Clemente Ludovico Garavani[1], was born in 1932 in the small town of Voghera, Italy. As a child, he was interested in fashion and art and left his town at a very early age to study fashion sketching in Milan. After completing his studies, he moved to Paris to study fashion at Chambre Syndicale. He won a fashion design competition hosted by International Wool Secretariat. After gaining experience, he created the color red as Valentino’s trademark. In 1967, he launched “V” as his trademark logo. Since 1969, Valentino Garavani has created a symbol for Valentino as high-end luxurious goods which served high society and the entertainment industry.

Mario Valentino, on the other hand, is a fashion designer from Naples, Italy. He launched his studio and brand in 1952 under the trademark “Valentino”. Mario’s design of a simple flat sandal with a unique yet bare decoration charmed and enchanted everyone’s heart in Rome Alta Moda Fashion Week. In 1968, the brand collaborated with famous designers like Karl Lagerfield, Gianni Versace, and Giorgio Armani. In early 1979, Mario participated in the first Milan Fashion Week. Mario Valentino created clothes with innovation for famous actresses, empresses, Italian countesses, etc. His craft defined his craftsmanship.[2]

What went wrong? Both designers seemed to have been working with dedication toward honing their craftsmanship and delivering luxurious clothes, but they branded their clothes under the same name “Valentino” which created confusion and destroyed the goodwill. In order to co-exist in the fashion world, Valentino Garavani and Mario Valentino signed a co-existence agreement in 1979 limiting each other with the usage of the symbol “V” and solely using the word “Valentino”.  Since Valentino Garavani’s brand was far more famous than Mario Valentino’s brand, Mario Valentino had to compromise and only use:​

• “Mario Valentino” ​
• “M. Valentino”​
• “MV” exclusively on the outside with “Mario Valentino” on the inside of products​
• “V” exclusively on the outside with “Mario Valentino” on the inside of products​
• Cannot use “V” and “Valentino” together​

  Valentino Garavani shall also use:​

• “Valentino” exclusively with substantially reduced size term “Garavani” on all products.

In 2019, Valentino Garavani filed a suit against Mario Garavani in Milan for breaching the almost 40-year-old co-existence agreement signed in 1979 stating ​false advertisement,​ unfair competition, ​and ​design patent infringement.

In a preliminary win for Valentino Garvani in the Court of Milan determined that Mario Valentino failed to abide by the parties’ legally binding contract of co-existence. The court explicitly prohibited Mario Valentino from using the marks in any way other than what the agreement prescribed.

 Valentino Garavani sued Mario Valentino in a similar case in the USA, for breaching the co-existence agreement. The California Federal Court is hearing the matter on the issue of the alleged breach by Mario Valentino on false advertisement, unfair competition, and design patent infringement.[3] The case is ongoing and parties hope to find a way to protect the goodwill of their brands.

This blog has been written by Mansi Agrawal during her internship with MikeLegal

References:

[1] https://www.britannica.com/biography/Valentino

[2] https://www.mariovalentino.it/en/storia.php

[3] https://www.thefashionlaw.com/valentino-mario-valentino-still-in-the-midst-of-bi-national-legal-battle/