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27 July 20223 minute read

DLA Piper advises Manolo Blahnik on landmark case in China, resulting in trademark victory after 22-year battle

DLA Piper has advised Manolo Blahnik, the world-famous shoe designer and founder of the eponymous luxury brand on his successful re-trial application before China’s Supreme People’s Court (Supreme Court), following a long-running trademark dispute in China which lasted more than 20 years.

The designer has finally won the right to legally use his name in China for the very first time, following the Supreme Court’s decision to cancel a pirate trademark incorporating Manolo Blahnik’s name. The pirate mark had been owned by the Chinese businessman (Fang Yuzhou (Fang)) since 1999, when Fang pre-emptively applied to register the mark Manolo & Blahnik.

China has a first-to-file trademark system, which in the past had caused issues for a number of foreign and local companies. Even start-ups and lesser-known fashion designers have found that their marks or names are registered in China before they have had a chance to register them themselves, preventing them from using their own name or brand in Mainland China.

In 1999, Manolo Blahnik was already a world-famous designer, and although he had been active in the fashion industry since the early 1970s, he had yet to apply for a trademark registration in China. Thus started a lengthy legal battle in which Manolo Blahnik had to prove he had reputation in China before the filing date of Fang’s pirate mark.

After several dismissed appeals over the years due to lack of sufficient evidence of reputation and recognition, and the fact that Fang submitted evidence that he was actively using the trademark, Manolo Blahnik filed an application for a re-trial before the Supreme Court in April 2020. This was Manolo Blahnik’s final opportunity to defeat the pirate mark and reclaim the right to use his name in China. The winning arguments focused on Manolo Blahnik’s personal name rights and Fang’s bad faith.

The Supreme Court judgment allows the designer to sell his products in China, the world’s fastest growing luxury market, without fear of legal retaliation. It also enables the Manolo Blahnik business to better fight counterfeits being sold into and exported from China.

Edward Chatterton, DLA Piper Partner and Co-Head of the firm’s Intellectual Property and Technology (IPT) practice in Asia who led the case 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”.

DLA Piper and Beijing Wanhuida Law Firm worked on this re-trial. The DLA Piper team was led by Edward Chatterton, based in Hong Kong. Edward was supported by Crystal Cai, Senior Consultant, Shanghai, IPT. The DLA Piper and Wanhuida teams worked together to devise the overall strategy for the re-trial. Wanhuida provided legal opinions for the re-trial and represented Manolo Blahnik in the re-trial court hearing.