Why luxury brand Manolo Blahnik has waited 22 years to sell shoes in China
The dispute started when a competitor started calling itself 'Manolo & Blahnik' in 1999, a move approved by the Chinese authorities in 2000. China favours a first-to-file principle in the registering of trademarks, instead of the first-to-use which is a common practice in Western markets
Luxury shoemaker Manolo Blahnik has won a 22-year legal battle in China over a trademark dispute and will now be able to use its own name in the country.
The high-profile victory has paved the way for the brand’s expansion into the country. The shoe brand, Manolo Blahnik was made famous by its celebrity fans and regular appearances in TV drama ‘Sex and the City’.
What is the Manolo Blahnik case?
The British company, named after the company's founder and creative director, filed suit with the Chinese authorities in 2000.
The dispute started when a competitor, Fang Yuzhou, started calling itself 'Manolo & Blahnik' in 1999, a move approved by the Chinese authorities a year later.
Part of the problem, however, was that the Chinese system favours a first-come, first-served principle in the registering of trademarks.
According to news agency Reuters, Manolo Blahnik has taken numerous actions against Yuzhou since 2000 to dispute the validity of trademarks the Chinese businessman has filed related to the “Manolo Blahnik” name.
Manolo Blahnik had to provide evidence of prior reputation and prior rights to challenge Fang’s registration.
According to the Independent, recent changes to the country’s Intellectual Property laws have led to crackdowns against “bad faith filings” – paving the way for high-profile wins for both global brands and Chinese brands against pirate marks.
“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,” chief executive Kristina Blahnik, the niece of founder Manolo Blahnik, said in a statement.
Other trademark rulings
For several decades, popular brands and consumer-facing companies have struggled to enter the Chinese market due to its skewed Intellectual Property laws that favour a first-to-file principle instead of first-to-use like it is done in the Western markets.
Tesla, Pfizer, Apple, Hermès, and Supreme have all experienced similar struggles to Manolo Blahnik, The Fashion Law reported.
In 2016, basketball mega-star Michael Jordan won part of his trademark suit against a China-based sportswear company, following a years-long struggle for control over the rights to his Chinese name.
The rival company had used a Chinese rendering of the athlete's name widely known by the country's consumers to break into the market.
In the same year, Disney won a copyright dispute over a Chinese knock-off of its animated movie Cars.
What has changed?
After it was faced with several similar trademark cases, China’s trademark body decided to revise its national Trademark Law, adding a provision on 1 November, 2019, that “any bad faith trademark applications without intent to use shall be refused.”
According to Fortune, which cites management consultancy Bain & Company, the new provisions to the law allow Western brands to easily enter the Chinese luxury market, which is expected to be the largest luxury market by 2025.
With inputs from agencies