Valentino and Mario Valentino have settled a long-running legal battle in the U.S. In a joint filing on June 14, the famed Italian fashion house and the like-named but unaffiliated leather goods brand alerted a California federal court that they are dismissing the case, having resolved Valentino’s false advertising and unfair competition-centric claims and the contributory trademark infringement, false advertising, and unfair competition counterclaims that Mario Valentino waged on its behalf. The kicker is, of course, that the dismissals come without prejudice, meaning that the parties are leaving the door open to wage similar claims again in the future in the important American market.
The closing of the parties’ stateside battle, as first reported by TFL, comes amid a high-stakes, bi-national clash that centers on the co-existence agreement that the two Valentinos quietly entered into in 1979 that places notable limits on how they can use the “Valentino” brand name on leather goods. The U.S. case got its start back in July 2019, when Valentino filed suit, alleging that Mario Valentino and its domestic licensee were “actively engaging in a campaign to trade off [on] Valentino’s goodwill in the U.S. handbag market.”
Specifically, Valentino claimed that its older but less famous rival – whose wares can be found at Saks OFF Fifth, Nordstrom Rack, etc. – was breaching their co-existence agreement by offering up lookalike handbags and making use of its “V” logo, all while “downplaying or omitting entirely the fact” that the bags were from Mario Valentino not Valentino S.p.A.
In furtherance of the 45-year-old agreement, Mario Valentino is permitted (in part) to “use and register the full name Mario Valentino or M. Valentino or Valentino or the letters MV or V exclusively on the outside, together with Mario Valentino on the inside and on the packaging [of] all goods made of leather or imitation leather or other material.” The agreement prohibits it from using “the ‘V’ and ‘Valentino’ marks together” on those same types of goods.” On the flip side, Valentino is required to use “the term ‘GARAVANI’ in addition to ‘VALENTINO’” on leather goods and in any advertising for them.
In causes of action of its own, Mario Valentino alleged that Valentino was engaging in contributory trademark infringement, false advertising, and unfair competition by way of one of its authorized retailers. According to Mario Valentino, e-commerce site FORWARD by Elyse Walker was “infringing [its] trademarks by advertising [Valentino’s] products as ‘VALENTINO BAGS’ [and] making no reference to the term ‘GARAVANI.’” (The court tossed out the contributory claims in April 2021, holding that Mario Valentino failed to show “constructive knowledge on behalf of Valentino” in connection with the contributory trademark infringement claim; “have not alleged any false advertising;” and did not “sufficiently allege [Valentino’s] ‘personal participation’ in the unfair practices identified.”)
THE BIGGER PICTURE: The multi-national clashes between Valentino and Mario Valentino over how they can respectively use the “Valentino” brand name on leather goods make for something of a messy trademark portfolio for Valentino, which derives sizable revenues from its leather goods business. Practically speaking, the limits imposed by the co-existence agreement impact how Valentino does business with regards to this all-important category of goods.
At the same time, the larger trademark scuffle and Valentino’s inability to neatly use the “Valentino” name across all of its product categories – and corresponding advertising efforts – without caveats could create complicate things from a brand valuation standpoint. It is worth noting, of course, that the limits to Valentino’s trademark usage/rights clearly have not stood in the way of interest in the 64-year-old company. After all, Valentino made headlines almost a year ago when it revealed that it entered into a binding agreement with Kering, which announced that it would take a 30 percent stake in Valentino in exchange for €1.7 billion, with an option for Kering to acquire 100 percent of the share capital of Valentino “no later than 2028.”
As for the status of the parties’ larger legal scuffle, there are currently more than ten proceedings underway in Italy (including arbitrations), with no settlements in sight.
The case is Valentino S.p.A. v. Mario Valentino S.p.A., et al., 2:19-cv-6306 (C.D.Cal.).
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