By Sujin Thomas

A LOCAL fashion distributor scored a victory over a trademark infringement claim made by Italian giant Valentino yesterday.

The case was dismissed by the Court of Appeal following a High Court judgment on June 29 in which Justice Chan Seng Onn said he did not accept that the European label had a 'monopoly' on its name.

Justice Chan said: 'If it did, then the many marks which contain the word 'Valentino' would never have been registered to begin with.'

Valentino had filed a notice of opposition in June 2004 after an application made through the Intellectual Property Office of Singapore was dismissed.

In the notice, it claimed that Singapore-based company Pacific Rim Industries had caused confusion due to similarities in their brand names, the use of the 'V' logo and in their goods.

Pacific Rim Industries distributes men's wear and accessories under the name Emilio Valentino.

Court papers also said Valentino positioned itself as an exclusive and up-market brand selling 'pure luxury items', while Emilio Valentino products were targeted primarily at lower- to middle-income consumers in Singapore.

Emilio Valentino products have been distributed in Singapore since 1999 and are sold in John Little department stores.

Court papers said Valentino - which specialised in women's clothing here - sold its products at its 'only one, singular store in Singapore'.

Valentino also claimed that Pacific Rim Industries had acted in bad faith in copying its markings.

Among the arguments, Valentino said the Singapore distributor had copied its brand name and logo from a man named Mr Emilio Valentino, who had applied to register a similar trademark in Italy in 2007.

In court papers, Pacific Rim Industries said it had been using its trademark since 1995.

Justice Chan said the names 'Emilio' and 'Valentino' are common Italian names, and that the trademark comprised 'a simple and basic design'.

He said: 'I would not rule out the plausibility that it is indeed a coincidence that the two marks are identical.'
Valentino's lawyers could not be contacted yesterday. Lawyer Samuel Seow, who represented Pacific Rim Industries, said: 'This clearly shows that big brands cannot use all means to try to stifle competition based on perceived similarities not applicable to them.'

This article was first published in The Straits Times.