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Thomas Pattloch

Dr. Thomas Pattloch, LL.M.Eur

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Louise Popple

Louise Popple

Senior Counsel – Knowledge

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Autoren
Thomas Pattloch

Dr. Thomas Pattloch, LL.M.Eur

Partner

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Louise Popple

Louise Popple

Senior Counsel – Knowledge

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7. Oktober 2022

Newsletter Marke-Design-Wettbewerb Dezember 2022 – 5 von 6 Insights

Another cause for hope for well-known brands in China: the Manolo Blahnik case

What has happened?

  • In 1971, Spanish designer Manolo Blahnik founded his own eponymous footwear brand and developed it into a world-renowned business. The brand has many celebrity fans, appearing in the American TV series "Sex and the City" and other films and TV programmes.
  • In 1999, Yuzhou FANG and Guangzhou Zhaoyue Shoes Co., Ltd. (in which Mr. FANG has a stake) filed five applications for trade marks containing the words, “马诺罗·贝丽嘉MANOLO&BLAHNIK” for various goods. In 2000, one the marks applied for by Mr. FANG was approved for registration for footwear in class 25. The registration has been continuously renewed since then. 
  • China follows a "first to file" (rather than "first to use") principle for trade mark protection. Manolo Blahnik did not have any prior trade mark applications or registrations in China. Accordingly, all attempts by him and his company to "knock out" Mr. FANG's registration were dismissed by the courts.
  • Mr. FANG's trade mark registration prevented Manolo Blahnik from registering his name as a trade mark in class 25 in China. It also prevented his company from selling its footwear directly in China. Rather, sales into the Chinese market were made through third-party online shopping platforms.
  • The Fourth Amendment to the Trademark Law of the People's Republic of China, which came into effect in 2019, has improved protection for original trade mark owners in China, particularly giving them greater scope to attack trade marks filed in "bad faith". Internationally renowned brands have begun to gain stronger protection in China, with successes for the likes of American basketball star Michael Jordan, the French shoe brand Christian Louboutin, and the American sports shoe brand New Balance.
  • In a recent retrial of the Manolo Blahnik case, the Supreme People's Court of China over-turned the previous judgments and invalidated Mr. FANG's registration based on Manolo Blahnik's prior name rights.
  • This decision marks a further milestone for the better protection of original brands in China. The court allowed the action based on "new evidence" relating to the reputation and uniqueness of the Manolo Blahnik brand in China and the bad faith of Mr. FANG. Those battling decades-long brand "hijacking" disputes may want to consider the merits of gathering new evidence to support a further action.

Want to know more?

The contested trade mark violates Article 31 of the 2001 Trademark Law in China

Article 31 of the 2001 Trademark Law in China stipulates that a trade mark application shall not damage the existing prior rights of others and that applicants shall not preemptively register by improper means a trade mark that has been used by others and has gained a certain influence. Manolo Blahnik claimed that the prior right here was his name right. 

The law in China also stipulates that, if the relevant public believes that a trade mark refers to a natural person, they will also believe that goods bearing that trade mark have been licensed by - or have a specific connection with - that person. Where this occurs, the court will recognise that the person's name right has been damaged.  

In its judgment, the Supreme People's Court (SPC) applied these principles even though the contested trade mark was registered in 2000. Its reasoning was:

  • The contested trade mark is a Spanish first and last name, with no fixed alternative meaning. More specifically, the mark is a word mark, composed of the Chinese characters, “马诺罗•贝丽嘉" (a transliteration of the words Manolo&Blahnik), and the foreign language words, "MANOLO&BLAHNIK". Manolo Blahnik is a world-renowned shoe designer and Mr. FANG did not provide a reasonable explanation for adopting this name. 
  • The evidence submitted by Manolo Blahnik established that he had a certain reputation for footwear in mainland China prior to the date the contested trade mark was applied for. The Supreme Court emphasised that "to measure the popularity of a foreign natural person, we must first consider their direct influence in the mainland of China, and at the same time, through magazine promotion, tour performances, films and television programs etc, the popularity formed abroad and in Hong Kong radiating out to the mainland.” This evidence included the following: Manolo Blahnik's first shoe store, which opened in London in 1973, appeared on the front cover of the British edition of VOGUE magazine in 1974. In 1979, he opened a store in New York. From 1987 to 2001, he won several awards in the USA, the UK and Spain. Various reports in ELLE magazine published in China from 1994 to 1999 mention "Manolo Blahnik" or footwear designed by "Manolo Blahnik". Other reports mentioning "Manolo Blahnik" were also published, including in the "China Clothing Newspaper" (1997), the "Contemporary Television" magazine (1997) and "Hangzhou Daily" (1998). In Hong Kong, there were at least 50 periodicals and newspapers from 1993 to 1999 reporting on Manolo Blahnik's achievements and the opening of Manolo Blahnik's third global branch in Hong Kong. From 1997 to 1999, Manolo Blahnik's sales in Hong Kong reached more than 30 million Hong Kong dollars. Various famous actors wore Manolo Blahnik shoes in their movies and concerts. 
  • Mr. FANG and his related company have been engaged in shoe production for many years. They must have known of the popularity of Manolo Blahnik and the fame of the brand abroad and in Hong Kong. There is no reasonable explanation for why the foreign language part of the contested mark contains the name Manolo Blahnik. 
  • The high requirements for protection were met in this case: Manolo Blahnik is a world-renowned shoe designer, a name in Spanish and a non-fixed word. The foreign language part of the disputed trade mark is identical with that name. As a business operator who has been in the footwear industry for nearly 20 years, it can hardly be a coincidence that Mr. FANG registered exactly the same trade mark on “footwear; boots, etc.” in class 25.
  • The relevant public will believe that goods bearing the Manolo Blahnik trade mark have been licensed by - or have a specific connection with - him.

The SPC concluded that the registration of the contested trade mark had damaged Manolo Blahnik's name right and the registration was invalidated.

The application of the “ne bis in idem” principle

Mr. FANG tried to object to the new invalidity action based on the lapse of time since his mark was applied for and the previous court actions (which were also based on Article 31 of the 2001 Trademark Law in China). He argued that the court had already decided the relevant facts and legal issues and could not do so again (the “ne bis in idem” principle). This argument was opposed by Manolo Blahnik on the basis that new facts existed. 

Under Chinese Trademark Law, if a fact proved by new evidence constitutes a "new fact" that is substantially different from the facts/evidence in the previous case(s), it does not fall within Article 62 (of the Regulations on the Implementation of the 2014 Trademark Law), which prohibits "refiling review applications with the same facts and reasons". More particularly, Chinese trade mark law stipulates that parties may rely on:

  • Newly found evidence.
  • Evidence that could not be obtained in the previous administrative lawsuit due to objective reasons or that could not be provided in the previous administrative lawsuit within the prescribed time limit.
  • New legal grounds.

Manolo Blahnik submitted two new tranches of evidence. 

  • Chinese translations of the evidence submitted in the previous court cases. Translations had not been submitted in the previous cases and so the relevant evidence did not meet the statutory formal requirements. This was rectified in the subsequent SPC case. However, given that Manolo Blahnik could have provided Chinese translations in the original actions, the translations were not deemed to constitute "new" evidence.
  • A new tranche of evidence showing the fame and uniqueness of the Manolo Blahnik brand, including various media and magazine reports. The court considered that these contained "new facts", substantially different from the evidence submitted in the previous cases. Accordingly, the invalidation action before the SPC did not fall within the definition of “refiling review applications with the same facts and reasons” and did not violate the “ne bis in idem” principle.

What does this mean for you?

  • The decision shows that, for brand owners dealing with decade-old trade mark "hijacking" cases under the new law and policy, it may pay to gather new evidence on the reputation and uniqueness of their brand within mainland China. Evidence radiating to mainland China from Hong Kong and other countries will also be relevant.
  • Evidence relating to bad faith will also be important. Where the brand "hijacked" is a personal name and a unique and famous one at that, showing bad faith might be easier. 
  • Depending on the circumstances of each case and the evidence available, this decision might provide an opening for new bad faith type invalidation applications. 

This article was co-authored by Helen Wan, JoAnn Zhou, Akili Si.

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