Background of the case
Manolo Blahnik International Limited was established in 1970 in Chelsea, London. It has established its reputation as a luxurious footwear fashion brand through celebrity references and media appearances such as the one in TV drama "Sex and the City.” Currently the brand holds more than 300 points of sale including 20 flagship boutiques across the globe in New York City, Hong Kong, Madrid and Geneva to name a few.
In 2000, Chinese businessman Fang Yuzhou successfully secured a registration for the “Manolo & Blahnik” trademark for use on footwear in China, significantly limiting the operations of the Manolo Blahnik brand in the Chinese market despite their established presence on the global market. The same year, the British luxury footwear brand filed a lawsuit against the Chinese company and has been since engaged in a lengthy trademark fight. This first appeal has been rejected due to insufficient proof that Manolo Blahnik had any meaningful standing in the country prior to the Fang Yuzhou’s mark approval.
In the following years, Manolo Blahnik experienced multiple other of their appeals being dismissed one after another. The case seemed hopeless, until December 2020, when the court allowed Manolo Blahnik’s appeal to move forward, paving the way for a January 2022 retrial. In its final decision the court upheld the invalidation of trademarks owned Fang Yuzhou’s including the name Manolo & Blahnik based on Manolo Blahnik’s name rights. This ruling meant that after a continuous legal dispute that lasted more than 2 decades, British shoe designer Manolo Blahnik now has the right to use his name in China.
First-to-File Vs First-to-Use Jurisdictions
The struggle of Manolo Blahnik in trying to establish his brand on Chinese market and protect its name is the one familiar to many other brands that are looking to expand their business to China.
Chinese trademark system has long been subjected to criticism for its notoriously unfair terms. Trademark laws in China make it virtually impossible for international brands to claim their name if a native Chinese company has already filed and received trademark registrations for the same name as their brand, either in English or in the Chinese transliteration.
China, along with Japan and countries of the European Union, follows the principle of First-to-File when it comes to trademark registration. As the name suggests, the ownership of the trademark is determined by who filed it first. The other approach is known as First-to-Use, giving priority to the party that first started to use a trademark in connection to their goods and services and established a reputation with it. Some other countries that follow the First to Use approach include the United States, Singapore, New Zealand, Australia, India, and Canada.
First-to-File trademark approach has significant shortcomings, as it allows for proliferation of ‘trademark squatting’ - someone else registering a trademark of a popular brand with the motive to sell it for a profit later or to ride on the brand’s success. Trademark squatting can be done to sell the trademarks back to the original owners for a high price, to sell counterfeits, or to impersonate the brand in order to damage its brand reputation.
China and Trademarks: new opening for international brands?
Intellectual property theft has been a long-running source of tension between China and its trade partners, making large corporations hesitant in moving their business there. As this reflects poorly on China’s economy, in 2019 the country has finally made amendments to its trademark law, making it easier to reject trademarks that have been filed in bad faith. Just 2 years ago, the Supreme People’s Court of China ruled in favour of Michael Jordan after a long trademark battle with Chinese company Qiaodan Sports. Trademark attorneys project that such cases will become more common, as more and more brands gain confidence in standing up for themselves with new-found support from Chinese authorities that aim to provide fairer conditions for international brands.