The plaintiff claimed in passing off, seeking an intelocutory injunction. Mr Valentino Garavani, a fashion designer opened a salon in Rome in 1960, and built up a reputation in ladies’ high fashion under the name ‘Valentino’. His fashion shows in Rome and New York were attended by buyers from various countries including the United Kingdom. In 1966 and 1968 Mr Garavani held fashion shows in London and in 1970 clothes made from his patterns were sold in London under the ‘Valentino’ label. In 1969 Mr Garavani assigned to the plaintiffs, an Italian company based in Rome, some of the business assets which he owned including the trade mark ‘Valentino’ and the goodwill in his business in connection with it. Also he entered into a service agreement with the plaintiffs. In 1970 and 1971 Mr Garavino’s activities were given publicity in various international papers and in newspapers including The Times. By 1972 the world wide business carried on under the name ‘Valentino’ was very substantial. Valentino ties were sold in the United Kingdom in August 1972.
The plaintiffs sought an interlocutory injunction to restrain the defendant from passing off his business and goods as those of the plaintiffs by the display of the name ‘Valentino’ on his premises and otherwise. The defendant wished to establish a men’s fashion business in London. His Lordship said that there was obviously ‘a very great difference between the activities of the plaintiff outside England and their activities inside England’. He referred to the Crazy Horse Case and to Pioret and distinguished Pioret on the ground that, though like the Garavani case there was no establishment in England, Pioret made a practice of himself coming or sending over an assistant three or four times a year with dress models which he sold to English dress making firms and he gave a display attended by the then wife of the Prime Minister, Mrs Asquith, at No. 10 Downing Street which caused some resentment amongst his English competitors. His Lordship said that Pioret was a very much stronger case on the facts than the case before him as a great deal more business was done in the United Kingdom notwithstanding that there was no place of business there. Templeman J took up the point left by Pennycuick J. in the Crazy Horse Case that there must be some kind of user in the United Kingdom; but his Lordship said: ‘The question is really: What kind of user? Pure advertisement is clearly insufficient. Taking bookings was sufficient in Sheraton. Carrying out orders in this country was held to be sufficient in Pioret.’
He referred to the evidence of user in the United Kingdom in the Garavani case and said that the necessary conditions were fulfilled bearing in mind of course he was dealing with the matter at an interlocutory stage only. He also held there were sufficient persons who might become purchasers from the defendants and who would assume a connection between the defendant’s premises in Jermyn Street and the name ‘Valentino’ and the activities of the plaintiffs in respect of the ‘Valentino’ products. His Lordship concluded: ‘One knows that in practice the trade in high fashion is becoming more and more international, and it does seem to me, in general, that it would be a very great pity if the strait jacket of the Crazy Horse decision was found to constrain me from preventing Valentino from keeping the name which he has so well publicised.’
Judges:
Templeman J
Citations:
[1974] RPC 603
Jurisdiction:
England and Wales
Citing:
Cited – Alain Bernardin and Cie v Pavilion Properties Ltd ChD 1967
The owner of the Crazy Horse Saloon in Paris tried to stop a business in London under the same name. The plaintiff advertised in the UK but carried on no other activities here.
Held: An injunction was refused. The plaintiff had reputation but . .
Cited by:
Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 18 July 2022; Ref: scu.566007