Mario Valentino or Valentino Garavani, the eternal dilemma, which however hasn't been a dilemma for some time. The overlap between two historical brands of Made in Italy fashion, the first founded in the 50s by the Neapolitan designer of the same name, the second in the same period but in Rome and usually known as "Valentino" tout court, had been resolved as follows: concerns footwear, bags and leather goods, it is the historic Neapolitan maison that is the exclusive owner of the "Valentino" brand, while the famous haute couture house must necessarily use the full name of its owner, i.e. "Valentino Garavani" ( however remaining free to use “Valentino” in clothing). Precisely by virtue of this subdivision, the Court of Milan accepted the appeal presented by Mario Valentino Spa (assisted by the lawyers of the Spheriens firm) against the British e-commerce platform Farfetch Uk (and the affiliate Modes spa), for having marketed under the "Valentino" brand - and not with the "Valentino Garavani" brand - footwear and bags from Valentino Spa.
The Milanese judges therefore reiterated that in relation to footwear, bags and leather accessories, the "Valentino" sign is "reserved to the ownership of the plaintiff Mario Valentino Spa as a result of the registrations it activated in this proceeding, titles which evidently must be considered for the rights which in themselves attribute to the owner of them ed even regardless of the agreements entered into between the appellant and Valentino Spa". The English company, which among other things had already ended up in the crosshairs of the Court of Milan in 2020 for the counterfeiting of the trademark of the yellow stitching of the "Dr. Martens", had tried to defend himself by arguing that the online sales platform Farfetch would perform a mere activity of "passive hosting" of the information provided by the boutique partners. But for the judges Farfetch has a much more active role in its sales channel, to the point of "exceeding the mere figure of the passive information service provider who does not implement any control over the activities carried out through its website".
On the basis of these premises, the Court of Milan therefore prohibited Farfetch and Modes from "further use of the 'Valentino' and 'Red Valentino' trademarks in relation to footwear, bags or other leather goods" not originating from Mario Valentino, setting a penalty for violating the injunction and ordering the two defendants to pay the costs of the litigation. The ordinance, dated February 8, 2021, does not currently appear to have been the subject of a further appeal.
