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19 June 2020PatentsSarah Morgan

Amazon and Valentino team up in counterfeit suit

Amazon and fashion brand  Valentino have filed a joint lawsuit against New York-based Kaitlyn Pan Group for allegedly counterfeiting Valentino’s famous Garavani Rockstud shoes.

The litigation is a first for both brands—it’s Amazon’s first joint litigation with a luxury fashion brand and Valentino’s first joint litigation with an online retailer.

Filed yesterday, June 18, at the US District Court for the Western District of Washington, the suit accuses Kaitlyn Pan and New York resident Hao Pan of “blatantly” copying the “iconic look and design” of the shoes and selling them online through its own website.

The Garavani Rockstud style features a row of metallic studs, which Valentino owns a number of design patents on. The shoes were launched in 2010 and currently sell for between $425 and $1,095.

Kaitlyn Pan previously had an Amazon seller account but this was shut down in September 2019, according to a press release issued yesterday. Now, the Kaitlyn Pan online store is powered by Shopify.

“Despite multiple notices of infringement and a cease and desist order, Kaitlyn Pan continues to import, distribute, sell, and offer infringing products on https://kaitlynpanshoes.com/. Kaitlyn Pan further attempted to apply for a US trademark for its infringing Valentino Garavani Rockstud shoes, flagrantly and willfully disregarding Valentino’s IP,” said the press release.

Valentino will receive any proceeds from this suit.

Dharmesh Mehta, vice president of customer trust and partner support at Amazon, said: “The vast majority of sellers in our store are honest entrepreneurs but we do not hesitate to take aggressive action to protect customers, brands, and our store from counterfeiters. Amazon and Valentino are holding this company accountable in a court of law and we appreciate Valentino’s collaboration throughout this investigation.”

While the suit may be Amazon’s first foray into a litigation partnership with a luxury brand, it has partnered with other brands in the past.

Last June, WIPR reported that Amazon had  united with Colorado-based Nite Ize to take sellers to court. Nite Ize makes the Steelie family of products, a hands-free system that allows you to dock your phone to your dashboard using a magnetic mounting system.

And the online platform is stepping up its anti-counterfeiting efforts elsewhere. In February 2019, Amazon  launched Project Zero, a programme which it claims “empowers brands to help drive counterfeits to zero”, in the US.

Later that year, Amazon expanded the programme to Europe. In an  exclusive interview, we spoke with Amazon about the progress it had made so far.

In the joint press release issued this week, Amazon said that in 2019 it invested more than $500 million and had more than 8,000 employees protecting its store from fraud and abuse, including counterfeiting and IP infringing products.

Earlier this year, the US Trade Representative (USTR)  named several of Amazon’s international domains in its annual watchlist, citing complaints from rights owners. Amazon soon responded, accusing the US government of pursuing a “personal vendetta”.

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More on this story

Trademarks
30 April 2020   Amazon has accused the US government of pursuing a “personal vendetta”, after it was included in a list of “notorious markets” for counterfeit goods.
Trademarks
24 June 2020   Amazon has established a counterfeit crimes unit, aimed at investigating, finding, and launching legal action and criminal referrals against counterfeiters.
Trademarks
22 October 2020   Amazon has teamed up with childcare product manufacturer J.L. Childress to tackle counterfeit sellers on the e-commerce platform.