Manolo Blahnik free to use own name in China after winning trademark dispute
Manolo Blahnik is now free to use his own name in China after winning a long-standing trademark dispute.
The British-based luxury footwear brand emerged as the victor in a 22-year legal wrangle, which his legal team says "sets a strong precedent for others across the industry to enforce their rights against pirate trade marks in China".
Manolo Blahnik had brought proceedings to invalidate an unlawful trade mark registration incorporating “Manolo Blahnik”, which prevented the noted Spanish designer from using his own name throughout China.
The fight to reclaim the trade mark began in 2000 and the successful conclusion of these proceedings opens the way for the brand to trade across the country for the first time.
Commenting on the judgment, Manolo Blahnik, Founder and Creative Director, said: “We are truly humbled and grateful for the support we have received in China and internationally, both from within the fashion industry and beyond. This generous assistance has been a significant contributing factor to this successful result. My sincere thanks to the Supreme People’s Court of China and all involved in this very long case, it’s a remarkable result. I cannot wait to return to visit the beauty and elegance of China.”
Kristina Blahnik, the niece of Manolo Blahnik and CEO of the brand, added: “This is a meaningful victory for my uncle, our family and our team and I want to express gratitude to the Supreme People’s Court of China for its thorough and careful consideration of our long-standing case. We have always admired the rich cultural heritage of China and its people and we look forward with excitement to joining its dynamic future by sharing Manolo’s story, creations and passions. Manolo Blahnik will continue to vigorously protect its trade marks worldwide in the interests of my uncle Manolo, our customers and our business.”
Timeline of the trademark dispute
January 1998: an individual in China files a trade mark application for “Manolo & Blahnik” covering footwear.
January 2000: the mark is approved and published.
April 2000: Manolo Blahnik files an opposition with the China Trade Mark Office (CTMO) objecting to the application on the basis of Manolo Blahnik’s name rights and unregistered trade mark rights.
August 2021: the CMTO dismisses the opposition saying the designer had failed to provide sufficient evidence to prove reputation in China prior to the filing of the filing date of the pirate mark. This was despite the fact that Manolo Blahnik had been established in London since the 1970s and had been operating, through a licensee in the US since the 1980s. It also had licenses and distributors in a number of other markets, including Hong Kong SAR, Indonesia, Japan, Italy, France and Germany prior to 1999.
October 2001: Manolo Blahnik appeals the decision with the Trademark Review and Adjudication Board (TRAB) which was dismissed in 2007 and further appealed in 2008 and 2009. These further appeals were also dismissed by the Intermediate Court and High Court.
June 2014: Manolo Blahnik sought to invalidate the pirate mark before the TRAB relying on its name rights and unregistered trade mark rights, bad faith of the trade mark pirate, and a negative influence of the pirate mark on society. This was dismissed in 2015.
2016: Manolo Blahnik appeals to the IP court and the action was dismissed in 2018. In September 2018, Manolo Blahnik appealed to the High Court where the IP Court’s judgment was maintained.
April 2020: Manolo Blahnik files an application for retrial before the Supreme People’s Court based on Manolo Blahnik’s name rights and the trade mark pirate’s bad faith.
December 2020: the Supreme Court grants leave to appeal, which is granted very infrequently.
January 2022: a retrial hearing of the case is held.
June 2022: the Supreme Court issues a final judgment upholding the invalidation based on Manolo Blahnik’s name rights.
Up to this point, Manolo Blahnik had been unable to trade using his own name in Chinese Mainland, whether directly or through third parties, preventing local customers from purchasing Manolo’s designs and creations within the market.
China's trademark framework is based on a "first to file" approach, which requires companies to register with the CTMO to obtain trade mark protection in China. This, argues Manolo Blahnik's legal team, leaves companies vulnerable to being exploited by “trade mark pirates” who register and obtain trade mark rights to brands without any good-faith intent to use the trade mark.
These trade mark pirates typically wait until a brand is ready to expand its business into China and then they attempt to sell the mark to the bona fide company for an inflated sum. However the country has recently sought to change the approach to offer brands more protection.
In 2017 the China National Intellectual Property Administration declared an intention to implement IP strategy and accelerate to building China into an "IP powerhouse". Amendments to the trade mark legislation aimed to strengthen trademark protection came into force in November 2019 and the Chinese courts have started to focus on the element of bad faith to prevent trade mark pirate activity
Manolo Blahnik Chief Legal officer Georgina McManus, said: “This is a landmark decision demonstrating the focus of the Supreme People’s Court of China on substantive justice. This has been a long and challenging journey and this outcome would not have been possible without the dedication, tenacity and support of our teams, our advisers and friends of the brand and the leadership of Jack Randles, Head of Legal.”
Manolo Blahnik's storied career
Manolo Blahnik International Limited was established in 1970 when the first boutique was acquired in Chelsea, London. Now a globally recognised brand, its headquarters remain in London with offices and partners around the world.
Manolo Blahnik is distributed in over 300 doors globally with points of sale in 30 countries encompassing Europe, North America, Asia, and Australia, and operates its own global ecommerce platform, www.manoloblahnik.com. The brand has 20 standalone boutiques including recent openings in East Hampton and a flagship boutique in Manhattan located on the iconic Madison Avenue which opened in June 2021.
In 2019 Manolo Blahnik acquired its own atelier and production facility, located in Vigevano, Pavia, Italy.
Throughout the years Blahnik’s achievements have been recognized by various bodies in many countries, most recently by the Couture Council of America and the independent luxury body Walpole, which awarded Manolo Blahnik with the "Luxury Legend" award. Blahnik was awarded a CBE by HM The Queen in 2007.
He has published numerous books, the latest being ‘The Art of Shoes’ with Rizzoli in 2017. Along with a leading women’s line which includes evening and day bags, the brand also has a successful men’s collection and recently collaborated with German comfort footwear brand Birkenstock.