Stella McCartney has been handed a win in its fight for the protection of its $700+ Falabella bag. On the heels of initiating litigation in the U.S. in connection with the bag (including a suit against Steve Madden), McCartney filed suit in Milan against Italian fashion label Imax S.r.l., citing trademark and design infringement, and unfair competition.
According to London-based Stella McCartney’s complaint, Imax sold a number of styles that amounted to blatant rip-offs of its best-selling Falabella bag. The company went even further by advertising the bags in its catalogues as the “Mod. Stella McCartney” styles. McCartney launched its original version in 2009 and went on to register it in the Europe Union shortly thereafter.
Imax “alleged that the disputed bags were different from the registered designs of Stella McCartney, as they presented a dissimilar shape, were made of real leather instead of eco-leather and included a shoulder belt.” Imax further claimed that McCartney’s “designs were invalid, as their main features were already present in the market (namely, the chain belt was used in several models of Chanel and the trapezoidal shape was included in earlier registered designs).”
To this, McCartney argued that its designs are original thanks to the “trapezoidal shape, the odd chain strap following the exterior flap of the bag and the eye-catching stitching.” Moreover, McCartney told the court that the Chanel bags cited by Imax “have a rectangular shape and their chain straps were fixed either to the body of the bag or to the external closures,” thereby differing from the label’s Falabella bags.
In its recent ruling, the Court of Milan sided with McCartney. Speaking specifically to the Chanel bags asserted by Imax, the court held that McCartney’s Falabella style is unique and differs in “shape, size and ornament” from the Chanel bags.
As for Imax, the court stated that it “reproduced all the main individual features of the Falabella designs, namely, the chain handles, the trapezoidal shape and the stitching.” It is also on the hook for diluting the world-famous “Stella McCartney” trademark, due to its use of the mark in its catalogs. Still yet, the court found that Imax is liable for unfair competition, stating that a significantly lower price of the bags at issue caused a serious harm to the reputation of Stella McCartney.
Ultimately, the court ordered Imax to pay 110,000 euros ($123,000) to McCartney, an “overall damages amount that is not negligible for design infringement proceedings,” according to DLA Piper’s Elena Varese, “and could be encouraging for other right holders.”