BATTLE AGAINST BAD FAITH TRADEMARK APPLICATIONS

BATTLE AGAINST BAD FAITH TRADEMARK APPLICATIONS

China’s Supreme People’s Court (“SPC”) in this judgment, finally recognized the Spanish high-fashion shoe designer’s name right in the MANOLO BLAHNIK mark. This judgment ends the decades-long trademark dispute by invalidating the squatted mark, which had prevented Mr. Blahnik from using his personal name as the trademark for his famous shoe brand in China. 

Factual Background of the Case

Manolo Blahnik first established his high-fashion shoe brand in the 1970s. Subsequently, a lot of consumer attention was drawn to the brand when Carrie Bradshaw in popular TV series “Sex and the City” shows off several of Manolo Blahnik’s creations. In January 1999, i.e. less than a year after Sex and the City first aired in China, a businessman active in the footwear industry, Fu Yuzhou, applied for a Chinese trademark registration for the “MANOLO & BLAHNIK ⻢诺罗•⻉丽嘉” logo (“the squatted mark”). In 1999, Manolo Blahnik did not have any Chinese trademark registration, nor did the brand sell or even advertise any of its shoe creations in China.

Manolo Blahnik first opposed the squatted mark, by filing an opposition procedure, followed by a review procedure and two instances of administrative appeals, but lost all these proceedings. He mainly relied on his alleged well-known trademark of MANOLO BLAHNIK, his personal name right in MANOLO BLAHNIK and his alleged prior unregistered trademark right. However, since there was not sufficient evidence showing prior use before the filing date of the squatted mark, i.e. January 1999, or showing prior reputation obtained before that date, his claim was dismissed in those proceedings.

Subsequently, upon the successful registration of the squatted mark, Manolo Blahnik filed an invalidation proceeding, and upon obtaining an initial unfavourable result, again appealed it twice, but lost all these proceedings as well. Apart from pointing to the lack of sufficient evidence showing his prior right and reputation, the judges in both instances of administrative appeals also based their rejection on the principle of “non bis in idem” i.e. no legal action can be instituted twice for the same cause of action. Manolo Blahnik therefore applied for a retrial procedure with the Supreme Court, for his last chance to overturn the appeal judgment in the trademark invalidation case.

The highlights of the judgment

The Supreme Court finally recognized the Spanish high-fashion shoe designer’s name right in the MANOLO BLAHNIK mark, based on the following grounds:

  • The Supreme Court recognized that the newly submitted evidence such as national library search reports and various media reports should be considered as “new facts” which are substantially different from the evidence submitted in the previous proceedings, and are therefore admissible. The Supreme Court took a more flexible and pragmatic approach regarding the novelty of the evidence submitted.
  • The Supreme Court considered the evidence of use and promotion not only in China but in overseas markets also (including Hong Kong). The Supreme Court said that this evidence was also capable of indirectly impacting on the pre-existing reputation of the brand in China.
  • The Supreme Court commented that, as a player in the footwear industry for a long time, the registrant of the squatted mark should have known Manolo Blahnik, and that the registration of the squatted mark registered in Class 25 for shoes, boots and other goods cannot be a mere case of coincidence and must therefore be declared invalid.
  • Recognition of the personal name right is sufficient to invalidate the squatted mark, other grounds for invalidation not considered.

Conclusion

It needs to be highlighted that this case was very challenging, given the early filing date of the squatted mark in January 1999, i.e. before Mr Blahnik had made any use or advertising of his brand in China. Trademark owners can learn valuable lessons from this situation for future cases. Sufficient efforts and attention need to be dedicated to strategic evidence gathering and adequate case preparation, also in the initial stages of trademark disputes. This may prevent the issue of courts disregarding evidence due to formal deficiencies as well as issues with the non bis in idem principle when such evidence is submitted only afterwards, after meeting the formality requirements.

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