If you recently came across an enticing pair of Valentino shoes on Amazon and thought the price was too good to be true, you may have been right. On Thursday, luxury fashion brand Valentino and retail giant Amazon together sued a third-party online retailer for selling counterfeit shoes.
The shoes-in-suit, Valentino Garavani Rockstud shoes, “feature metallic, three-dimensional, pyramid-shaped studs on heels, ballet flats, mules, and sandals. The distinctive studs and their configuration and placement in the shoe design is unique to Valentino.” Valentino stated that this shoe is synonymous with the Valentino brand. They claimed that the defendants, the Kaitlyn Pan Group and Hao Pan, are imitators and “introduced a line of shoes that blatantly copy the iconic look and design of Valentino Garavani Rockstud shoes, infringing Valentino’s trademark and design patents.”
The defendants advertise and sell these allegedly infringing products on their website without permission from Valentino. While Valentino and Amazon have anti-infringement and counterfeit measures to combat this conduct, for a period of time, the Kaitlyn Pan Group was advertising and selling allegedly counterfeit shoes on Amazon and on their own website. Amazon said the Kaitlyn Pan Group agreed not to sell counterfeit or infringing goods when it created and operated an Amazon selling account. The defendants have allegedly violated their Business Solutions Agreement (BSA) with Amazon, which includes Amazon’s Anti-Counterfeiting Policy by advertising and selling these counterfeit items. Valentino sent defendants a cease-and-desist and informed Amazon about the defendants’ conduct.
The Valentino Garavani Rockstud shoe collection has become an iconic Valentino staple, worn by celebrities, featured in magazines, and heavily marketed. Valentino states that these shoes “have come to symbolize Valentino, its high-quality goods, and its reputation and goodwill.” Valentino claimed that the sale of counterfeit shoes jeopardizes its brand. Further Valentino states that the Kaitlyn Pan Group knowingly and willingly “advertised, marketed, distributed, offered for sale, and sold” these infringing and counterfeit shoes. Valentino bought a test shoe from Amazon and the defendants’ website, determining that both were counterfeit. The defendants also filed for trademarks similar to Valentino’s trademarks for the shoe collection. Valentino notified defendants about their infringing conduct. Valentino said at no point did it authorize or license the defendants to utilize or sell these shoes using the Valentino trademark. As a result of this alleged conduct and for violating various agreements, Amazon shut down the defendants’ account.
Valentino accused the defendants of trademark infringement as a form of unfair competition. For example, Valentino stated that consumers understand that using the Valentino trademark signifies that the products are from Valentino. However, the counterfeit products bearing these trademarks are likely to confuse or deceive consumers; in effect, having legitimate Valentino products compete with infringing and counterfeit products.
Valentino alleged patent infringement against the Kaitlyn Pan Group for knowingly and willingly advertising and selling infringing products that utilize designs covered in the design patents.
Valentino said that the defendants also engaged in unfair competition under Washington Common Law by “‘passing off’ their Infringing Products as products associated with, sponsored by, or affiliated with Valentino, through Defendants’ importation, marketing, offering for sale, and selling Infringing Products under the Valentino Trademark.” This conduct is likely to cause confusion, mistakes, and deception among consumers, according to the complaint.
Amazon claimed that the defendants have breached their contract with the online retailer which they agreed to when creating an Amazon Selling Account. They have also allegedly violated Amazon’s Conditions of Use through their alleged conduct.
The plaintiffs are represented by Davis Wright Tremaine LLP and Arent Fox LLP.