image: Versace

image: Versace

TFL EXCLUSIVE – A budding legal war is underway and at the center of it is Versace. Los Angeles-based La Moda Italiana (hereafter, “Moda Italiana”) filed suit against Versace this past week in U.S. District Court for the Southern District of New York after the Italian giant allegedly threatened to sue Moda Italiana for trademark infringement and disparaging its brand, and also engaged in “threats and harassment” for the purpose of intimidating [Moda Italiana’s] vendors from continuing to sell its products.”

As for how Versace and Moda Italiana ended up in this predicament: Moda Italiana was hired by In Moda SRL – the Milan-based distributor of Versace 1969 Abbigliamento Sportivo – to oversee the U.S. marketing “for products that In Moda SRL has licensed from Versace 1969 Abbigliamento Sportivo.”

Versace 1969 Abbigliamento Sportivo is a Milan-based company that was established in 2001 by Alessandro Versace, who – despite his surname – has no relation to or affiliation with the well-known Versace brand started by the late Gianni Versace and is now under the direction of his sister Donatella.

Considering that Versace 1969 Abbigliamento Sportivo brand name, which is often simplified to Versace 1969, makes use of the heavily trademark-protected “Versace” name – which the Gianni Versace brand has been using on garments and accessories since 1978 – it comes as little surprise that Versace has resorted to threatening legal action.

In addition to selling on e-commerce sites, Versace 1969 Abbigliamento Sportivo has taken to developing a network of brick-and-mortar stores in the U.S. More specifically, the brand announced this time last year that it would open shop in the Mall of America in Minnesota, which will join its outposts in Santa Monica and San Francisco, who currently offer womenswear that retails for between $150 and $2,000, and accessories.

Note: When you search for “Versace 19.69 stores,” the closest one for New Yorkers – according to Google – is the Versus Versace store on Greene Street. Versus Versace falls under the Gianni Versace umbrella – a fact that certainly helps to bolster Versace’s trademark infringement claims.

La Moda Italiana’s Claims

So, what exactly is Moda Italiana claiming in its suit? Primarily, it has asked the court to declare that it is not infringing Versace’s trademarks or engaging in unfair competition through its marketing and selling of the Versace 1969 Abbigliamento Sportive collection.

Additionally, Moda Italiana has set forth claims of Tortious Interference with Business Relations and Commercial Disparagement against Versace. According to Moda Italiana, Versace has been contacting Moda Italiana’s stocksists, and “stating [that Versace 1969 products] are infringing [Versace’s] legal rights and demanding use of the Versace 1969 Abbligliamento Sportivo S.R.L. [name] be discontinued.”

Moda Italiana goes on to state that Versace’s “threats and harassment” were “calculated to interfere improperly with the ability of [Moda Italiana] to continue its business and contractual relationships without interference.” As a result of “these threats and harassment, [and “perhaps others”] discontinued the marketing of products of Moda Italiana,” and thereby, caused Moda Italiana to suffer “damage both monetarily and to its business reputation.”

“Such deliberate disruption of the lawful and legitimate business of Moda Italiana, Inc.,” the complaint claims, “was done in bad faith and maliciously to disrupt the legitimate business opportunities of Moda Italiana, and its outlets for its properly branded products.”

The lawsuit at hand comes on the heel of an earlier trademark infringement suit that Gianni Versace S.p.A. and Versace USA filed in the U.S. District Court for the Northern District of California in June 2016 against Versace 1969 Abbigliamento Sportivo S.R.L., among others, alleging that the defendants were using its Versace trademark to confuse consumers into thinking that their products are affiliated with Versace’s. That case is still pending.

An Impossible Win?

As for how Versace 1969 Abbigliamento Sportivo will fare in its suit against Versace: It almost certainly will not be an easy win if we take into account the 2010 case that Gucci filed against Jennifer and Gemma Gucci – the widow and daughter of Paolo Gucci, the grandson of Gucci founder Guccio Gucci. In that case, Gucci filed suit, alleging that the relatives were infringing and diluting its trademarks by using the Gucci name on an array of products, including housewares, cosmetics, and handbags without the brand’s authorization.

In its decision, the SDNY – the same court as the one where Versace 1969 Abbigliamento Sportivo filed its suit – found that the Gucci’s had, in fact, infringed the design house’s trademarks, and ordered that they pay almost $1 million in damages. In its decision, the court held that neither Jennifer nor Gemma Gucci had any “reputation, skill or knowledge as a designer of any of the products at issue.” The court also noted that the products at issue did not include a disclaimer that they were not affiliated with the more famous Gucci brand.

That being said, the court did state that Jennifer and Gemma Gucci may use their full names in connection with future new products or services, as long as they receive prior written approval for any such proposed use from the U.S. Patent and Trademark Office, and that such uses be accompanied by a disclaimer, prominently displayed and unambiguously stating that Jennifer and/or Gemma Gucci are not affiliated or associated in any way with Gucci or its products – among other things.

With this decision in mind – and considering that Versace 1969 Abbigliamento Sportivo does not have any federally registered trademarks covering the Versace name (it has a registration and a handful of pending registrations for a “V” 1969 logo) and that none of its products nor its website include any disclaimers which make it clear that it is not affiliated with the more famous Versace brand –  it seems highly unlikely that Moda Italiana will prevail. But stay tuned.

Neither Moda Italiana nor Versace opted to comment at this time.

* The case is La Moda Italiana, Inc. v. Gianni Versace, S.p.A., 1:17-cv-06376 (SDNY).