Manolo Blahnik can (finally) settle in China

After 22 years of legal proceedings to get his name back, Manolo Blahnik, the UK-based luxury shoe designer, will (finally) be able to market his products in China.

The case dates back to 1999, when a Chinese businessman registered the trademark “Manolo & Blahnik” in China before the luxury designer.

However, Chinese legislation applies the “first to file” system (first-come, first-served) to trademarks. This system allows “pirates” (companies or individuals) to obtain exploitation rights on a name, without any real intention to exercise them.

These “pirate” registrations can then be resold, usually at high prices, to foreign companies wishing to expand in China.

These scourges are relatively frequent and get worse as companies become more well-known.

→ As an example, a malicious applicant had obtained the registration of the name Tesla before Elon Musk entered the Chinese market. This registrant then attempted to sue the automaker to defend its right. The case was resolved out of court.

→ Or Hermès, which in 2012 lost a legal battle that lasted more than 15 years against a Chinese textile company that had registered and exploited a very close translation of the Hermès name in Mandarin (“Ai Ma Shi“). The Chinese authorities found that the French luxury goods company had failed to demonstrate that the clothing manufacturer had acquired the trademark illegally.

Thus, the registration of the “Manolo & Blahnik” trademark prevented the designer from using his name to market his shoes in a key luxury market.

The latter had then initiated a procedure in 2000 against this trademark, which took many years, in order to prove the existence since the 1970s of his brand, and the non-use of the brand “Manolo & Blahnik” by the pirate applicant.

After more than twenty years of proceedings, the Supreme People’s Court (the highest court in China) has cancelled the registration of the trademark “Manolo & Blahnik“, filed in 1999. Manolo Blahnik will now be able to use his name in China and offer his designs to local customers.

This decision shows the evolution of the Chinese judicial system and should encourage many companies to assert their rights against these pirate trademarks.

However, if Chinese trademark law has evolved over the last 20 years, in particular to reinforce investors’ confidence in China’s commercial legal system, it remains that the procedures are still long and very costly. It is therefore necessary to anticipate the filing of a trademark in China with a view to its exploitation in the near future, in order to leave no room for malicious applicants.

– Anaïs GREFFOZ, Intellectual Property Lawyer at Mark & Law