Does Manolo Blahnik decision mark a turning-point in China?

The UK-based fashion brand Manolo Blahnik has successfully invalidated a trade mark registration incorporating its name in China, following a 22-year legal battle.

The decision was widely reported this week by media including the BBC, FT, Guardian, Vogue and Jing Daily.

The trade mark registration, which was filed by a local businessman called Fang Yuzhou, has prevented Manolo Blahnik from operating in China until now.

The company had made various attempts since 2000 to invalidate the mark, without success. But it has now won its case at the Supreme People’s Court.

Manolo Blahnik now plans to expand its business into China.

Trade mark squatting

So-called trade mark squatting, where individuals register the names of famous brands either for nuisance value or in search of a payout, are frequently reported in China, which like the UK has a first-to-file trade mark system. Many international brands were slow to enter the market, and paid the price.

Manolo Blahnik is not the only company to suffer in this way. For example, New Balance has also had protracted disputes over the ownership of its brands in China, as has the athlete Michael Jordan.

Amendments to the trade mark law in 2019 regarding bad faith applications favour international brands, and may have benefited Manolo Blahnik in this case.

Impact of the case

The decision will undoubtedly be welcomed by other international brands who face similar prior registrations in China, and those planning to expand there.

However, pursuing invalidation actions against registered trade marks in overseas jurisdictions remains complicated, expensive and risky.

The best advice is always to register your rights early and as comprehensively as possible. It sounds trite but: prevention is always better than cure.

To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com

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