Manolo Blahnik, the renowned luxury shoe brand, endured a lengthy and challenging battle over its trademark in China. After more than two decades, the company finally secured the rights to its name in 2022. This case sheds light on China’s “first to file” trademark system, which gives priority to the party that registers a trademark first, rather than the one that uses it first. Manolo Blahnik’s lengthy legal fight serves as a reminder of the obstacles brands face in China’s trademark system.
The Trademark Issue: A “First to File” Issue
In 1999, a Chinese businessman registered the name “Manolo & Blahnik” in China, taking advantage of the country’s first-to-file system. Under this system, trademark rights go to whoever registers the name first, rather than the first to use it. As a result, Manolo Blahnik was effectively blocked from using its own name in one of the world’s largest markets.
The Long Road to Victory
Manolo Blahnik spent two decades trying to reclaim its name in China. The company filed numerous appeals with the China Trademark Office, the Trademark Review and Adjudication Board, and several courts. Despite these efforts, the brand faced continuous delays and legal hurdles. It wasn’t until 2022 that the Chinese Supreme People’s Court ruled in the brand’s favor, stating that the original trademark was registered in “bad faith,” and opening the door for Manolo Blahnik to reclaim its name.
The Importance of Understanding Trademark Systems
Manolo Blahnik’s case demonstrates the challenges of dealing with China’s “first to file” system. In countries like the United States, India, or Singapore, trademark rights are granted to the first party to use the name in commerce. In contrast, China grants exclusive rights to the first party to file a trademark, creating opportunities for trademark squatting; where individuals register a brand name solely to profit from it. Manolo Blahnik found itself in this situation, with its name held by a third party that had no intention of using it.
Legal Changes in China: A Turning Point
In 2019, China reformed its trademark laws to allow challenges against bad-faith registrations. This change played an essential role in Manolo Blahnik’s victory, as the brand was finally able to argue that the original trademark was registered in an attempt to exploit the brand’s reputation. The ruling also reflects a broader trend in China toward stronger protections for foreign trademarks.
New Opportunities for Manolo Blahnik in China
Manolo Blahnik’s victory has opened up new business opportunities in China. Previously, the brand could only sell its products through third-party retailers, limiting its ability to build a strong brand presence. Now, with the trademark dispute resolved, the brand can sell directly in China, capitalizing on the growing demand for luxury goods in the market.
Conclusion: Lessons from Manolo Blahnik’s Case
The Manolo Blahnik case illustrates the importance of acting early to protect a trademark in “first-to-file” countries like China. Brands planning to expand internationally should prioritize trademark registration to avoid costly legal battles down the line. While China’s trademark laws have improved, fashion and luxury brands must be proactive and fully understand the legal system before entering the market. Manolo Blahnik’s dispute shows that securing a trademark early is the best way to protect a brand in foreign markets.
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