Manolo Blahnik, the British luxury footwear brand, became famous thanks to its fans among celebrities and frequent appearances in the series “Sex and the City”. Founded by Spanish designer Manolo Blahnik, the brand is recognized for the elegance of its shoes, becoming a symbol of refinement in women’s fashion. However, for more than two decades, the company has been barred from operating under its own name in China due to a complex legal dispute over trademark rights.
Context of the dispute:
In 1999, a Chinese businessman, Fang Yuzhou, registered the name “Manolo Blahnik” as a trademark in China, taking advantage of the country’s “first-to-file” system. This system, which is characteristic of many jurisdictions in Asia, grants rights of use to the first applicant to register a trademark, regardless of the owner’s ownership in the international market. Thus, illegal registration was possible, and Blahnik faced a major obstacle in trying to enter the Chinese market. The company had to rely on alternative sales channels, such as third-party platforms, to market its products.
Despite the British brand’s constant efforts to reclaim its rights to the name, Chinese courts have repeatedly rejected the company’s appeals. This situation has led to a significant limitation of Manolo Blahnik’s official presence in China, a key market for the luxury industry.
2019 reform of Chinese legislation.
To better understand how it was possible to resolve this conflict, it is essential to mention the legislative changes in 2019, which had a major impact on trademark protection in China. Prior to this reform, the “first-to-file” system allowed anyone to register a trademark, even in the absence of a link to the trademark or the owner of the intellectual property rights. This led to a widespread phenomenon of “trademark squatting” or “abusive registrations”, whereby third parties registered famous trademarks in order to obtain financial benefits by selling the rights to them to the true owners.
In 2019, the Chinese authorities introduced new regulations that were directly aimed at combating this type of behavior. The reform strengthened legal measures to protect genuine trademarks, providing the possibility to combat fraudulent registrations more effectively. Among the most important changes are the prohibition of registrations of “speculative” trademarks and the clarification of the process of revocation of abusively registered trademarks. This change was essential for international companies, which faced the risk of losing the rights to their own trademarks due to illegal registrations made by third parties.
As part of the reform, the Chinese authorities have also extended the possibility to request the cancellation of fraudulently registered trademarks in administrative procedures, significantly reducing the complexity and time required to obtain a favorable resolution. Thus, companies had more effective tools to protect their brands, which had a direct impact on the Manolo Blahnik case.
Following the legislative changes in 2019, Manolo Blahnik was able to revise its legal strategy and protect its rights to the trademark “Manolo Blahnik” more effectively in China. In June 2022, after a lengthy legal process, China’s Supreme People’s Court issued a ruling in favor of the brand, ending a 22-year litigation. This ruling allowed the company to begin preparations for the official launch in the Chinese market, including by opening physical stores and expanding its online presence.
The case of Manolo Blahnik highlights the challenges faced by international companies in protecting their intellectual property rights in jurisdictions with different regulations. At the same time, this case underlines the importance of legislative reforms to combat abusive trademark registrations, as well as the need to adapt regulations to protect authentic brands. The victory in front of the Chinese courts is not only a legal triumph, but also a significant opportunity for Manolo Blahnik to strengthen his presence in one of the largest luxury markets in the world, benefiting from new regulations that better protect intellectual property.
At the same time, as brands expand their business into international markets, such as Manolo Blahnik in China, it is essential to understand the importance of adapting their brands to meet the cultural and legal requirements of each jurisdiction. This topic was covered in detail in our previous article, “Translating Trademarks for Global Expansion.”
If you are planning to register a trademark or expand into new areas of activity, the TAS Agency is ready to provide you with professional advice and assist you in the registration process with OSIM, EUIPO or WIPO. Contact us to protect and develop your brand in national and international markets. You can find us at the e-mail address: office@agentiatas.ro or by phone +40745160163.
