In particular, two ladies Sun Feiyan and Wu Xiumei, who are the owners of the above mentioned shops in Milan, which are active in the retail trade of clothing, footwear and accessories, sued Ferragamo in order to obtain the ascertainment and related declaration that the trade of shoes which bore the plaque with the bow did not constitute counterfeiting of Ferragamo’s trademark.

Ferragamo appeared before the judge disputing the validity of the opposing claims and counterclaiming that the plaintiffs were found and held liable for infringement of its Community trademarks, as well as for unfair competition. Ferragamo noted that each competitor who manufactures or markets footwear is free to use other different materials to affix various signature details such as bows and metal plates on its own products and shoes. Having said that, Ferragamo admitted that it has no monopoly on the metal pieces or plates as such, nevertheless third parties are not allowed to use signs that could create confusion with the Ferragamo oval plate, which may be linked to its reputation or affect its distinctive character, especially if, as in the present case, it is reproduced together with a bow.

In the first place, the Court of Milan pointed out that in the sector in which the defendant company Ferragamo operates, it is common for manufacturers to affix their own symbol on the products so as to make them immediately recognizable to consumers; these symbols have a distinctive function such as, for example,  the trademark “Vara” of Ferragamo (subject to Community trademark registration), the first use of which dates back to almost forty years ago, 1978 to be precise, when Ferragamo put a buckle-like piece on a model of the women’s shoe which later became famously successful and known as “Vara”.

The Judges also considered that neither the difference of the little details of the dexterity footwear (such as, in this case, the position of the plaque in relation to the bow or different wording imprinted on the metal plaque) nor the fact that these shoes were sold at a much lower price than that of Ferragamo was sufficient to exclude the counterfeiting of the Ferragamo symbol. Moreover, in relation to this last point, it was made clear that the very low price and poor quality of the footwear produced by the owners of the shops mentioned above brought a further devaluation and prejudice to the reputation and fame of Ferragamo’s brands.

The two plaintiffs, Sun Feiyan and Wu Xiumei were therefore held liable for infringement of registered Community trademarks No 101931 and No 551390, owned by Salvatore Ferragamo s. p. a. and for acts of unfair competition. Sun Feiyan and Wu Xiumei were ordered to pay, by way of compensation for damages, to the well-known Italian fashion company the sum of EUR 15,000.00 awarded on an equitable basis (where the order of the Judge to produce the accounting records should not be complied with by the same plaintiffs).

It should be clarified that the present case was not followed by LGV Avvocati.