After a 22 year long legal battle, Manolo Blahnik, the luxury footwear brand, finally got their trademark back in China. Manolo Blahnik was founded in 1970 by a Spanish designer named, big surprise, Manolo Blahnik. A Chinese person had registered the trademark in China in 1999.In June 2022 the Chinese Supreme People's Court ruled in favor of Manolo Blahnik.
Worldwide popularity thanks to Sex and the City
Manolo Blahnik's worldwide popularity skyrocketed due to enormous support from Carrie Bradshaw (played by Sarah Jessica Parker) buying and wearing many different pairs of the shoes in various episodes and seasons of Sex and the City.
Would it be a coincidence that sex and the city first aired in 1998 and a Chinese person with the name of Fu Yuzhou consequently conducted the bad faith trademark registration in China in 1999? And is it a coincidence that after six seasons, two movies, and a 2021 sequel called ‘And just like that…', the Chinese Supreme People's Court in June 2022 has finally ruled that the registration of ‘Manolo & Blahnik' is a bad faith registration?
The new series in 2021, combined with new bad faith trademark provisions in the Trademark law of 2019, might just have been the needed push to get the brand to win at the Supreme People's Court.
If it looks like a duck
The Supreme People's Court ruled in favor of Manolo Blahnik and invalidated the registration of Fu Yuzhou's ‘Manolo & Blahnik”. This is obviously the correct decision, as Chinese companies and individuals for too long have been rewarded with allowing them these bad faith trademark registrations and subsequent profits on leeching on the goodwill of foreign brands, whilst effectively barring these companies from entering the Chinese market.
Bad faith trademarks should in all fairness be looked at as ducks. If it looks like a duck, swims like a duck, and quacks like a duck, then it probably is a duck.
In many cases it is not rocket science. After all, it is impossible to come up for someone with a unique name for the same goods that is practically identical to the name of a person that founded an extremely popular brand in the world.
It is a very positive sign that the Supreme Court has adopted this new approach regarding bad faith trademark registrations.
First to file versus bad faith
China is a first to file country. Normally, exceptions aside, the company to file a trademark first, gets the exclusive rights to that trademark.
Fang Yuzhou had registered the trademark “Manolo & Blahnik” in 1999, probably after having heard about this brand through Sex and the City. Manolo Blahnik started legal action in China in 2000. However, the company had problems with proving their use in China before 2000.
Naturally, the UK company should have registered their trademark for China back then, and clearly was too late. However, to have a person or company profiting from that mistake through a bad faith trademark registration is just not fair.
The actions that Manolo Blahnik has taken in the past 22 years include actions against Fu Yuzhou's trademark Manolo & Blahnik at the CTMO, TRAB, intermediate court, High court, IP court, again High court and Supreme People's Court. Only the Supreme People's Court ruled in favor of the UK company. Luckily for Manolo Blahnik this is the most important institution, and this decision is final.
The UK company has profited through changes in the law, doctrine and case law from 2019. The focus is more and more to get rid of bad faith trademark applications as these applications are not good for faith in the Chinese system, nor are they positive for the ever more and more fuller trademark database. Recent big wins at the Supreme Court also include Michaels Jordan's Qiaodan (the official Chinese name for Jordan in Chinese)
Finally able to enter the Chinese market
Thanks to this ultimate win, Manolo Blahnik can finally enter the Chinese market with its popular word mark. After all, this would not be possible under a name which is registered as a trademark by someone else, as otherwise legal actions for trademark infringement, damages and destruction of goods would be a real danger. Changing the name obviously would not be desirable, as the goodwill that the name represents is one of the real reasons consumers buy the goods.
As China adopts a strict COVID-zero policy, and Chinese consumers are not traveling much overseas, the win is significant as the company can finally start selling its iconic shoes under ‘Manolo Blahnik' on the Chinese market.
Important lessons for businesses: register and fight now
In case you have not registered your trademark for China, remember to register it asap. The rule is still that of first to file: whoever registers the trademark first, gets it. Ideally, you don't want to rely on exceptions to this rule and long legal battles in order to get the trademark back later. If you have had dealt with bad faith trademark registrants from China in the past and lost, now is the time to get u and fight.
The Chinese trademark environment regarding the tackling of bad faith has improved lots, let us use the momentum and get more trademarks back.
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