Manolo Blahnik wins decades-long trademark battle in China
DLA Piper and Junzejun law firms advise on important brand protection case
Manolo Blahnik, the shoe brand made famous by its celebrity fans and regular appearances in TV drama Sex and the City, has won a legal battle in China to use its own name, paving the way for the brand’s expansion across the country.
The British company, named after its Spanish founder, said in a statement that the judgment was handed down by China's supreme people’s court last month, marking the culmination of a 22-year legal battle. Under the order, the court canceled a trademark incorporating the Manolo Blahnik name that had been owned by Chinese businessman Fang Yuzhou, who pre-emptively registered the mark in 1999.
Manolo Blahnik has taken numerous actions against Fang since 2000 to dispute the validity of the trademarks he filed related to the “Manolo Blahnik” name. However, those appeals were dismissed, with the courts ruling that the company failed to present evidence of sufficient sales in mainland China before 2000.
While the brand has been well known internationally since the 1970s, China has different intellectual property restrictions compared with countries such as the United States, which require companies to prove prior use or intent to use a trademark before it can be registered.
China is a “first to file” jurisdiction, which meant Fang’s claim to the name as the first person to trademark it in the China market in 1999 was found to be stronger under Chinese law. However, since 2019, amendments to China’s trademark legislation have been enforced, increasing the number of foreign companies that have won trademark disputes in Chinese courts.
Manolo Blahnik, which has only been available to consumers in China via third-party e-commerce platforms such as Farfetch until now, said it plans to expand its business into mainland China in the near future, though it did not disclose specific plans for market expansion.
In a LinkedIn post, Manolo Blahnik chief legal officer Georgina McManus wrote that the result is "a landmark decision and momentous victory for the business and our department."
Edward Chatterton, DLA Piper partner and co-head of the firm’s intellectual property and technology practice in Asia, was the lead lawyer representing Blahnik. He commented: “We are delighted to have been able to assist Manolo Blahnik in achieving this significant victory. This is a landmark ruling which could pave the way for other foreign companies that find themselves in similar situations. Due to improved trademark legislation in China in recent years, and a willingness from Chinese courts to protect the interests of brand owners, we expect to see more foreign companies succeed in resolving intellectual property disputes”
Chatterton was asissted by senior consultant Crystal Cai at DLA Piper, and head of legal Jack Randles and trademark officer Suzie Walton at Manolo Blahnik.The local firm that worked with DLA on the re-trial was Beijing Wanhuida Law Firm. Deacons advised Manolo Blahnik on the previous proceedings.
Fang Yuzhou was represented by Beijing Junzejun (Guangzhou) Law Firm.